Good reporting

(Reporter Sara-Jayne Adams of the UK's Intellectual Asset Management and Erin-Michael Gill)

Sara-Jane Adams has pulled together a number of IP professionals for this months cover story (registration required) on fighting back against the IP backlash, especially with respect to international perceptions of IP. Interesting topic and bit of a surprising read.

Also, I recently started Twittering (http://twitter.com/gillip_com). While it is not exactly an outlet for the kind of in depth IP journalism one might find in IAM, it is a good place to park small interesting insights from time to time. Here's my latest tweet:

gillip_comNote the portfolio license option - MSFT offered all YHOO's IP at a discount b/c of search deal. Good value for both -http://bit.ly/13yQ4m

The longer point is that the IP provisions in the Yahoo search deal could seed a broader collaboration with Microsoft. Allowing MSFT to incorporate YHOO technology - even at a discount - would at least be new revenue into YHOO, and could be a valuable test drive of sorts leading to something far more significant down the road.

Anyway, if you would like to follow my feed, feel free.

Cheers,

e^(ip)

plenIPotentiary discussions at 2009 IPBC

An international working group, assembled and tasked by the UK's Intellectual Asset Management Magazine, met for the first time late last month to discuss and define the role of Chief Intellectual Property Officer for attendees of the IP Business Congress in Chicago.

The results of these discussions were shared at the IPBC and will be further developed into articles and other publications by both IAM and the session facilitators (Ron Laurie and Rob Sterne). Great overview here by Joff Wild and key point summary here by Duncan Bucknell. At the end of the conference, they held a brief roundtable and recorded a few of us answering questions related to the CIPO role.

Full CIPO working group:

Carl Horton, GE

Sherry Knowles, GSK

Ruud Peters, Philips IP & Standards
Marshall Phelps, Microsoft
Todd Dickinson, AIPLA

Peter Cicala, Shire Pharmaceuticals
Damon Matteo, PARC
John Squires, Chadboure & Parke (Goldman Sachs)
Scott Frank, AT&T
Erin-Michael Gill, OQO

Beatrix de Russé, Thomson

Bill Elkington, Rockwell Collins

Duncan Bucknell, Duncan Bucknell Company
James Malackowsi, Ocean Tomo

Bo Heiden, CIP Gothenburg
Shinjiri Ono, Yuasa & Hara
Ian Harvey, IP Institute
Anne Culotta, Halliburton
Wayne Sobon, Accenture

$25,000 Reminder

(image courtesy of Flickr)

Just a quick note: While a patent is one of the most useful incentives to invention, direct financial incentives work too. If you know any promising collegiate inventors (graduate or undergraduate), please help them submit their work to the National Inventors Hall of Fame Collegiate Invention Competition. They are giving out over $50,000 in awards with the winner receiving $25K. Application info can be found here: www.invent.org/collegiate

TeamPatent

One of the most interesting new services out there for both inventors and patent professionals is an NSF-funded start-up called TeamPatent. It is designed to enable faster and more accurate patent drafting, and looks to also have immediate uses for speeding certain patent examination tasks as well (verifying support in the spec for new claims, checking complicated claim dependencies, determining if there is inconsistent element numbering / descriptions in the drawings, etc.). The site is open for free Beta testing while they advance development.

Flash demo from their site below.

Cheers,

e^(ip)

Intellogist

Quick note: 

Much of the discussion of patent quality or patent reform, fundamentally depends on the quality of the art available to those making the determination of patentability. Ensuring that every relevant document which could potentially invalidate a given application is considered both by the applicant in making a filing determination, and the examiner in determining claim scope and patentability in an examination, is one of the most critical inputs to the patent process. 

With respect to this goal, one of the most useful new sites for patent professionals is Intellogist from Landon IP (one of the firms the USPTO uses for outside PCT searching assistance). It provides a free online repository of patent searching resources and IP software package reviews. While some content still needs to be updated, as is, it seems to be a very useful resource. 

Best,

e^(ip)

NIHOF Collegiate Inventors Competition

The National Inventors Hall of Fame has an excellent invention competition for both undergraduate and graduate student inventors. If you know of a worthy student project, please encourage them to apply.

The 2009 Collegiate Inventors Competition is now accepting applications! This prestigious program shines a spotlight on deserving researchers and innovators early in their careers in an effort to provide support and inspiration to those who have tremendous potential to make the world healthier, the economy stronger, and the planet safer.    Go towww.invent.org/collegiate for more information and to download the application.

Grand Prize $25,000

Top Undergraduate Prize $15,000

Top Graduate Prize $15,000

Up to 12 Finalists will be selected to advance to the final judging round.   Each will 1) receive an all-expense trip to the final judging round and awards ceremony 2) meet and present their work to a distinguished panel of judges and 3) receive a $2000 cash prize per team. Advisors to the Grand Prize, Top Undergraduate and Top Graduate Prize winners will also be awarded a cash prize.  The presenting sponsors of this year’s Competition are the United States Patent and Trademark Office and the Abbott Fund.

You can find an informational brochure on the 2009 CIC at: http://www.invent.org/collegiate/pdfs/09_CIC_ebrochure.pdf.  You can view video from last year's Award's ceremony at http://www.invent.org/collegiate/video/index.htm.

Questions?  Please email collegiate@invent.org or call Joyce Ward  at 800.968.4332, ext. 6951 for guidance on the advisor requirement, invention summary, the patent search or any other parts of the application. Not sure whether your project is actually an "invention", call or email collegiate@invent.org.

Don't miss this incredible opportunity. All applications must be postmarked by June 16, 2009.

e^(ip) in Alltop

We've been added to the alltop listing for patent blogs. Alltop is a great site, based on the concept by popurls, but with greater depth and variety of topics. IP strategy and management is still a very nich sub-topic, but at least this content is now in a place where it can easily scanned with the more traditional and popular IP blogs. Thanks to alltop.com for adding e^(ip). 

Cheers,

e^(ip)

Important Cases for IP Management

(pi ruler via flickr)

For this years pi-day post, I wanted to list some of the rulings which have most impacted the day to day management of IP. These cases are worth the time sitting down with outside counsel and deeply understanding. Stephen Albainy-Jenei just did a good summary over at Patent Baristas of many of these cases in the context of courts dictating patent reform. Here are a few of the most key:

eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006) (reversing Federal Circuit)

Permanent injunctions: Rejected “categorical rules” favoring or disfavoring permanent injunctive relief following a nonappealable judgment of infringement. In all cases, courts must retain equitable discretion to consider the merits of a request for permanent injunctive relief based on the traditional “four factor” test. (e^ip note: critical to understand, especially in forming policy regarding non-practicing entities)

KSR v. Teleflex, 550 U.S. 398 (2007) (reversing Federal Circuit)

Obviousness: Rejected, in part, the Federal Circuit’s “TSM test,” which conditioned obviousness on a specific finding of some motivation, teaching or suggestion to combine prior art teachings, in the particular manner claimed. The Supreme Court left intact the TSM test as a general standard for evaluating obviousness but held that TSM is not the exclusive test for establishing obviousness. Instead, the Court endorsed a flexible and expansive approach to the obviousness inquiry in lieu of any rigid or narrow formula.  By making it easier to establish obviousness, KSR makes it more difficult to obtain patent protection in the first instance, and tougher to defend against invalidity challenges post-issuance. (e^ip note: critical to understand in initial claim drafting and prior art analysis)

In re Seagate Technology, 497 F.3d 1360 (Fed. Cir. 2007)    

Willfulness standard: Abandoned long-standing Federal Circuit precedent imposing an affirmative duty of care on accused infringers, and held that willful infringement requires at least a showing of objective recklessness. (e^ip note: takeaway for setting IP policy - objectively reckless is difficult to define, but critical to avoid)

In re Bilski, 88 USPQ2d 1385 (Fed. Cir. 2008)    

Subject matter eligibility of software/business methods: Narrowed the scope of patent-eligible software/business method patents under Section 101 to methods that are either tied to a particular machine or apparatus or that transform a particular article into a different state or thing (the “machine or transformation test”).  Bilski will make it more difficult to obtain patents for such methods and tougher to defend method patents against invalidity challenges and, in the process, drag in non-software/business method inventions including pharmaceutical and biotechnology patents. (e^ip note: software case law is rapidly changing, so software specifications should be able to support a broad range of claim strategies - at least for now, claims need to conform to the Bilski standard)

In re TS Tech, Misc. No. 888 (Fed. Cir. 2008)    

Venue: Ordered transfer of venue from the Eastern District of Texas to the Southern District of Ohio. The fact that vehicles containing the allegedly infringing article are sold in the Eastern District of Texas does not provide a meaningful connection with the venue since such vehicles are sold throughout the United States. Product sales are often the sole basis for asserting venue in this district. (e^ip note: important right now in preventing litigation in popular venues for patent actions, however, may be temporary as patent holding companies become more creative) 

The IP Strategist

An IP Strategist's Perspective: A Reality Check for Entrepreneurs Who Believe they Need a Patent to Protect Their Idea

View more presentations from Jackie Hutter. (tags: ip strategy)

Just saw this on BlawgIT - whether internal or external, look for this kind of deeply invested, somewhat embedded professional to become much more common in business...

Our minds are no less inventive...

From today's inauguration speech:

"This is the journey we continue today. We remain the most prosperous, powerful nation on Earth. Our workers are no less productive than when this crisis began. Our minds are no less inventive, our goods and services no less needed than they were last week or last month or last year. Our capacity remains undiminished. But our time of standing pat, of protecting narrow interests and putting off unpleasant decisions - that time has surely passed. Starting today, we must pick ourselves up, dust ourselves off, and begin again the work of remaking America.

For everywhere we look, there is work to be done. The state of the economy calls for action, bold and swift, and we will act - not only to create new jobs, but to lay a new foundation for growth. We will build the roads and bridges, the electric grids and digital lines that feed our commerce and bind us together. We will restore science to its rightful place, and wield technology's wonders to raise health care's quality and lower its cost. We will harness the sun and the winds and the soil to fuel our cars and run our factories. And we will transform our schools and colleges and universities to meet the demands of a new age. All this we can do. And all this we will do."

e^(ip) will be popular this year?

According to the Washington Post, a trend which will be "in" for 2009 is something called Slow Blogging.

I've spent all 2008 preparing for this. 

Happy New Year everyone.