New PTO rules package

Being the IP manager for OQO is quite an experience.

 

There are many inventors here who collaborate deeply and often, seeding incredible ideas and developing IP faster than I have ever before experienced. Of course, for me this becomes a bit of a problem in light of 37 CFR 1.78(f) in the USPTO new rules package.

 

It may be that the listing of commonly owned applications and patents will be the most important rule change in terms of the day to day management of patent applications.

 

The clerical listing of cases should be a trivial filing. However, avoiding the rebuttable presumption under 37 CFR 1.78(f)(2)(i) is going to take real creativity and diligence for compliance. The essence of this rule is that when a company files a new application within a couple months of another case having one or more inventors in common, that case is assumed to contain a claim that is not patentably distinct from claims in the other case when the earlier application contains written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the later application.

 

That is going to be very difficult to check for every filing. When filing cases on a new combination of elements, a new method of making those elements, additional patentable implementations using those elements, and all of those cases have long specifications, it makes the pre-filing analysis, complicated at least.

 

There should be a way to semi-automate the checking process by being more rigid in spec and claim drafting regarding defining claim elements, separately recording in the docketing system what elements are detailed in a given spec, then cross checking those elements with applications filed within two months of the filing date.

 

This will require a lot of time, coordination, and diligence, especially when dealing with more than one firm.   

 

View new form at Patently-O...

Design Patents and Patent Reform

My sister was a design examiner at the USPTO for a year, before leaving to become a vegan cooking author and chef. The design group at the PTO has always been different to the utility examiners. When I was a PTO utility examiner, the design examiners I knew were usually architects and other visual design experts. Supposedly on the whole they are "more normal" have "interpersonal skills" and "dress well" - whatever that means.

 

Anyway, enforcement is a very real challenge for design patents. Today Patently-O had a good summary of design patents recently protecting a US automobile manufacturer.

 

The interesting thing here is apparently after the ITC ruling, the losing party immediately joined the patent reform movement.

View article at Patently-O

IP and Private Equity

Diving deep into a companies IP is a great way to contextualize possible strategic acquisitions. Private equity firms shopping a portfolio company can use patent data to show how one company may technologically compliment another.

 

From the New York Times - it's good to see PE investment is still looking strong:

 

"The buyout business may be in a holding pattern these days, but that apparently isn't worrying pension fund managers too much. According to a survey by Citigroup, nearly three-fourths of pension managers plan to increase the funds they earmark for private equity investments in the next three years."

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Business Strategy IS Intellectual Property Strategy

Great post on holistically managing IP: view article...

Vonage loses patent infringement suit

Operating company protects core business with patents, no negative KSR effects in sight:

[A] jury in Kansas City, Kan. decided that Vonage is guilty of infringing on VoIP-related patents held by SprintNextel. The jury held that Vonage should pay SprintNextel $69.5 million in damages, as well as a 5 percent royalty on future revenue. Vonage had claimed it didn't violate these patents, and these patents are invalid. This can't be good news for Vonage, or its investors. At 2 p.m. EDT, Vonage's per-share price was a lowest-ever $1.81.

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Innovation incentives: Win Your Own Startup

Love this idea: Some entrepreneurs say the toughest part of building their startup is finding capital. Bang Ventures, a New York-based investment firm, wants to alleviate that problem for three lucky entrepreneurs. You Be the VC is an open call to entrepreneurs with brilliant tech ideas. Applicants must create a profile and fill out an application to be considered. Then, judges will narrow the entries down to the top 20 finalists, who will create a video pitch to be voted on by the public, American Idol style. The winners will spend next summer in Cambridge, Massachusetts, working with a team of expert consultants, advisors and programmers to build their dream startup company.

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Patentee Win Rates After KSR

From the 271 blog: "LegalMetric has released a new study on patent owner win rates since the Supreme Court's decision in KSR, and found that patent owner win rates at first increased but then fell substantially below their long-term averages." With the perception of a new obviousness "standard" cascading down to courts, one would hope these numbers represent a one time weeding out of patent holders asserting claims well beyond their intended scope. This sky is likely not falling for patent holders. Just yet anyway.

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IPM?

What does an IP Manager (Director, VP, CIPO) actually do?

Dig. Economic. Moats.

That is, we obsess about how to protect a companies value. We are often deep in the technical, marketing, and legal details of a product or company; leading organizations and processes to sustain competitive advantage and long term profits.

Good article here about investing in moats.

Interesting from Patent Hawk

"KSR has created a favorable forum: inter partes reexamination requests, i.e., someone other than the patent holder butting in, were once shunned for the risk of bullet-proofing a patent, but now are soaring as a low-cost bet to smother patents in the cradle, before they walk into the courtroom. The recent kill rate is at 88%. … Litigation estoppel applies to as far as any ground that could have been raised. That includes any prior art that should have been discovered. But the upward trend indicates that previous worries have been assuaged by the anti-patent fervor that seems to have gripped the nation."

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Discount Shopping for IP

If Ocean Tomo is the Christies of IP shopping, this may be the Wal-Mart.

The Beard Group has issued a (relatively) new service called "The Intellectual Property Prospector" which identifies US and Foreign companies of any size filing for bankruptcy or reporting other financial difficulty and profiles their ownership of intellectual property. ... View Intellectual Property Prospector web page (link)

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From Patently-O, appeal time benchmarking

From Professor Crouch

... On average it took just under 18 months (542 days) from the filing of the appeal brief until a decision was reached by the BPAI. The mean hides a wide range of delay: From a minimum of 9 1/2 months to a maximum of 44 months. (Standard Deviation 255) {emphasis added}. ... As with essentially every other area of patent law, we can expect that BPAI timing and results will vary by technology area. {EMG comment: critical point, generalizations mean little if predictions and improvements can't be made}

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A patent improvement | Economist.com

Another good article from the economist: A patent improvement Economist.com


It is always interesting to see how the media picks up on patent issues. Key takeaway for most readers; examiners need to have the best art in front of them, new technology is important to making this happen, and the major patent offices of the world are testing or planning to test a community approach to vetting references.

The most interesting note here is the problem the USPTO is trying to solve. What made the Google founders billionaires is understanding how to organize an incredible amount of disaggregated information such that the most relevant results are in the top 10-20 hits.

The key question now is how we do that for every public technical document, every part of every good ever offered for sale, and everything in every library, journal, or code base ever published in any language in the history of the world?

The answer probably involves the US classification codes, however it seems another x-prize may be appropriate...

Technical Incentives

Interesting article from the economist: Space Eyes on the prize Economist.com

Being in patents, it is interesting how various fields can be incentivized to innovate (e.g. open source software, "pure" sciences, etc.).

As an astronomy undergrad, I thought having a manned, lunar observatory would be the greatest development in data collection since Tycho Brahe. However, the unsolved key question was how to incentivize such a massive development. At the time, the only way I believed this could happen was through sub-licensing the radio spectrum reserved for astronomers to wireless carriers. Years later, faculty in Cornell's Astronomy department - and operators of the Arecibo Observatory - assured me this method of funding development would never happen, as the science community would never give up their facilities for such a risky undertaking.

What was not clear at that time, was that there would be any for-profit organization that would benefit from a lunar infrastructure. Amazing development - glad to see the prize model encouraging innovation.

Interesting stats: Patent Cases, as Percent of all Civil Cases: 1997 vs. 2007

Great statistics on where patent litigation has been initiated lately.

IP Software Resources

One of the most important aspects of efficiently running an IP organization is selecting great technology.

Here is a great place to start: IP Menu - Intellectual Property Software Resources

Everyone's cooler than me

A bit off-topic: It turns out I own more dress shirts than t-shirts (none of which are ironic), have never been employee number five or less, and can't build a green laser from scratch.

Coming to OQO in SF from DuPont in Virginia - I seem to have taken the red pill.

Excellent.

Good HR practice at a start-up

blog.pmarca.com: The Pmarca Guide to Startups, part 8: Hiring, managing, promoting, and firing executives

Don't forget to check your domain names

Patent Law Blog (Patently-O): http://patnetlyo.com - Typosquatter