Happy Pi Day

New USPTO-PPAC Members

Wanted to post a quick update on the USPTO Patent Public Advisory Committee - they announced the three nominees yesterday.

I have heard of all of the nominees – but one stands out.

Professor Kieff is one of the most insightful academics in IP today. I would put him up there with Markus Reitzig at London Business School, Bronwyn Hall at Berkeley, and Lee Fleming at HBS.

There are other academics who are more popular for their research – Mark Lemley at Stanford obviously - but in terms of putting out careful, original research that has resonated and impacted the practical development and management of IP, these researchers stand out. (Note: Professor Crouch is by far the most popular academic in IP, but not [yet] for his research, more for his comprehensive communications of that which is newsworthy to the industry.)

To see Professor Kieff, (and professor Hall as well) enjoy this video. And if I have egregiously left off anyone of note, please e-mail me or leave a comment. If I get enough interest/feedback – I'll make a top ten.

Cheers,

Erin-Michael

Patriots jinx themselves with 19-0 trademark application

In light of the Superbowl result last night, it is now reasonable to believe that if the football gods exist, they believe in karma.

http://www.nypost.com/seven/02012008/news/regionalnews/pat_ently_smug__snooty_587194.htm

Honesty with inventors - setting expectations

Some background on inventor-attorney/agent interactions

Inventor: Can we patent this?
Patent Person: 1) Definitely - I can get narrow claims on anything 2) Probably - but let me do a quick search and get back to you 3) No, the art is dead on, you stole this idea, disclosed it three years ago, sold it two years ago, and it was an obvious variant of everything ever known by everyone ever. Never bring me such worthless ideas again. Peasant.
Inventor: How much will it cost?
PP: 1) More than this idea is worth, 2) Thousands and thousands of dollars 3) It depends
Inv: How long will it take?
PP: 1) Longer than the useful life of this idea 2) Three years, plus or minus 3) It depends
Inv: What's the process?
PP: 1) What is this alleged process you speak of? 2) We'll go back and forth a few times with drafts and refinements until we're happy with the disclosure 3) We'll go back and forth a few times with drafts and refinements until you run out of money.

So it turns out that a big part of optimizing patent preparation, and having good answers for inventors, is having a good process for getting ideas into the office. By helping inventors do the pre-work, IP managers can make patent drafting far less painful for the attorney's, and less expensive for the applicant.

Below is a process IP managers can use to give to inventors and set expectations. There is another process that gets the claims sketched first, but it is far more complicated and would take far more than the time I have given myself to do this post. It is also possible, if the IP manager is admitted to practice before the PTO, for them to just draft the case. However, with lots of disclosures coming in, it is far more efficient to distribute the work. In any case, here's a detailed process:

• Receive invention disclosure
• Do a quick search from the invention disclosure
• Meet with inventors to discuss invention
• Meet with IP committee to fund application filing
• Together with inventor, draft examples & drawings
• Re-search art from examples
• Review art and edit examples
• Follow-up with inventors, together sketch claims from examples
• Draft claims
• Send Invention Disclosure, Claims, Examples, Drawings, and Art to law firm for application drafting
• Hold invention and filing strategy meeting with drafting attorney, ip manager and inventor
• Drafting attorney creates application first draft, which is sent to the IP manager for review
• Inventor and IP manager review case, make edits
• Attorney produces final draft
• Inventor and IP manager review case, make (hopefully few) edits, return draft to drafting attorney
• Application filed

Just about every step in this process can be optimized by an IP manager.

If you are overwhelmed by invention disclosures right now, make a spreadsheet with these categories as headers, then go through each disclosure and put them in one of the above categories. At least then you will know what needs to be done next.

Hope this is useful.

Happy New Year Everyone

Just wanted to apologize for my tardiness in blogging lately and hope that everyone is back in full swing from the holidays.

Reflecting on the last few months of blogging, what is most amazing is how much time it takes to do this. I started working on this as a service to the IP community, and hope a few of my posts have had some useful perspectives - especially for smaller companies.

This year I look forward to posting on how to IP can enhances sales, marketing, HR, operations, finance, strategy and the technical functions. I will also post about improvements to the patent system as a whole from time to time.

So thanks for reading, and if there is anything specific within the above you would like discussed, please let me know either in the comments below or at emgill (at) gmail (dot) com.

Cheers, and again, happy new year.