Sunday, March 30, 2008

One Example of When Taking a License Makes Sense

Licensing technology from other sources makes sense in several situations, even when the licensee does not practice the technology.

Remember that patents are merely business tools, and they are useful when they give your business an advantage over a competitor.  Taking a license, even when your company may not currently infringe, may be appropriate in some cases.

In one situation, having a license may give your company access to patent rights that you may actively use against a competitor.  Such a license may give you an exclusive license or an option to convert to an exclusive license.  In many cases, an exclusive license may enable someone to exercise the patent rights within a specific territory, such as a state or other designated area.

The exclusive license may enable you to send cease and desist letters and obtain injunctions against a competitor that may infringe the licensed patents.  The license may also enable you to write sublicenses to competitors and obtain royalty payments for the use of the licensed patents.  The sublicense may act as a tax, making the competitor less profitable and your company more profitable.

Such a license may be obtained whether or not your company infringes the technology.  The license may be another weapon in your arsenal that may give you an advantage over a competitor.  By exercising the patent rights against a competitor, you can bring the competitor to the bargaining table and obtain royalties against the competitor’s ongoing operations, for example.

The key here is to consider getting a license when you believe a competitor may use the technology.

Tuesday, February 12, 2008

A Letter To Someone Considering Starting a Solo Practice

Over the last few weeks, I have had the opportunity to talk to several new attorneys who are looking for work or who may be considering going solo.  Here are a few thoughts that I have on the subject.

First, remember that this is business.  It is not an opportunity to “play office”.  It is not an opportunity to get over on The Man.  You have to have something of value when you come to the table.  In order to be compensated, you must be able to supply something that has a value.  This may be your expertise, your experience, your grunt labor, or your creativity.  In many cases, your business value may be a combination of one or more of these factors.

Understand what that value is.  Try to quantify it and try to explain it at least to yourself.  Know where your value is so that you can know how to advertise, know how to price your services, and, very importantly, know when to walk away from bad business.

Second, while it may look like a solo practitioner is ‘successful’, don’t assume that it was easy.  There are plenty of sleepless nights and nervous days when the work dries up and the savings dwindle, and many late nights drinking pots of coffee when the work finally arrives.

There is a reason why a vast majority of attorneys are in a firm.

Third, look at the long term value of each action you take.  This translates into how you invest your resources and how you interact with others.  Remember that this business is very slow.

Look at the long term value of each interaction with other people, and treat people exactly how you want to be treated.  This business, like many others, is predicated on relationships.  By investing a few minutes having a conversation with someone, you never know how it may turn into something useful down the line.

Patent work, at least in my experience, has a very long gestation period.  Some of my current clients took two to three years before I was able to start working for them.  For example, I had a very refreshing and memorable conversation with one gentleman at a tradeshow in 2000, and he called in 2006 with some work for me.  Taking a very long term view of business development is essential for success, however, it can be difficult to weather long droughts. 

The best remedy for weathering the drought is to keep expenses very low.  Have very little debt, live well within your means, and manage your expenses.  You don’t have to be miserable, but a paid-for five year old vehicle gets you to the same place at the same time as a brand new $85K luxury sedan.

Every person who goes solo has their own personal reasons for doing so.  For me, it fits my work style, and it allows me the flexibility to address certain client needs or go after opportunities that would be impossible in a small firm, let alone a large firm.  I like the ability to do creative market development, to be able to keep clients exceptionally happy, and to seek out unique opportunities.

For those of you thinking of taking the plunge, solo is not for everybody.  However, it can work if you are ready for it and are willing to put the effort into it.  It is hard to underestimate the effort, but it is also hard to underestimate the real and potential benefits as well.

Tuesday, January 15, 2008

The Best Part of This Job

The best part of this job, by far and away, is the opportunity to work with extremely talented and enthusiastic inventors.  In general, patent law is fun because the patent agent/attorney generally deals with happy, optimistic, and creative people.  I often tell people that patent law is unique in that I only deal with happy people.  There is no nastiness, fighting, heated arguments, or bad feelings.  I suppose that may not be true when dealing with some examiners at the USPTO, but my experience is that a vast majority of the examiners are civil, intelligent, competent, and want to find a good solution.

Over the course of a year, I may have personal contact with maybe a hundred or more inventors.  In many cases, these people are solid engineers, scientists, or developers who have identified a problem and solved the problem in an elegant manner.  These inventors are the bread and butter of my day to day job, and they are always pleasant and responsive and working with them is a joy.

There are a couple of those inventors who have this intangible ‘thing’ about them that makes them special, and really gets me excited to work with them.  These inventors are absolute experts in their field and whose excitement and giddiness about their technology is infectious.  These inventors have an intuitive understanding of their technology that transcends the typical engineer or scientist.

This year, I distinctly remember a handful of inventors who were not just able to explain their invention, but there was this intangible and deep understanding that was way more than the conventional person.  It was like their understanding was far more than book learning: it was a true expertise.

I had the pleasure of meeting such an inventor last month, and his enthusiasm was contagious.  During the course of the meeting, he was grabbing sample parts off his bookshelf to explain various things, scribbling on a whiteboard, and, before I knew it, two hours had elapsed.  I left that meeting excited to be part of something cool and knowing that I could bring my ideas, enthusiasm, background, and technical expertise to the table. 

I get the pleasure of working with the best and brightest people in many different companies and with many good ideas.  And the job is even more special when I get to work with one of the shining stars within that group.

Thursday, October 04, 2007

Subtle Effects of New Patent Rules – Changes to Inventor Recognition Programs

The new patent rules will cause many ripple effects throughout the practice of patent law.  One thing that should be considered is how inventor recognition programs play into the new rules.

Background

As part of the new rules, an applicant must disclose to the Patent Office any group of patent applications that are filed within a two month window where the applications are commonly owned and at least one inventor is in common.  Every time an inventor is listed on two patent applications, a trigger causes the inventor’s employer to file a bunch of declarations against interest.

One of the best ways to eliminate this burden is to eliminate filing two or more patent applications with common inventors within the two month period.

The Patent Office discourages applicants from spacing out their applications to avoid this rule, as it can be seen as inequitable conduct.

However, there is a tendency to add people to a list of inventors in many corporations.  In my own experience as an inventor, I have seen managers add inventors to a patent application because they viewed patents as more of a recognition and reward system than as a legal document with specific legal requirements.

The mechanism by which inventors are recognized and rewarded within a company may play into who is listed as an inventor.  In many companies, in an effort to include as many inventors as possible, the companies may pay each inventor a reward regardless of the number of inventors.  Quite frankly, this leads to having many patent applications that include long lists of inventors.

These long lists of inventors play havoc with overlapping applications under the new rules.

Recommended System

I recommend reviewing patent recognition systems so that the systems properly reward the true inventors but eliminate those inventors who may be questionable.

In the reward system where a fixed amount of money is paid to each inventor, there is a tendency to include questionable or marginal inventors.

In a reward system where a fixed amount of money is divided between all the inventors, there is a tendency to exclude questionable or marginal inventors.

My recommended reward system may set a fixed amount of money, say $2000 or $5000 for the total reward.  The money would be divided amongst the inventors based on their participation.  The person who writes the invention disclosure should receive a count, each participant in a disclosure meeting with the patent attorney should receive a count, each substantive reviewer should receive a count, and each inventor who signs the application should receive a count.  The money will be divided up between inventors based on their counts.

In this system, a person who writes the disclosure, attends the meeting, and reviews the application may receive 4 counts when they sign the application.  Another inventor may participate in the meeting and sign the application for 2 counts.  A third may only sign the application and receive 1 count.

The total number of counts is 7, so the first inventor would receive 4/7 of the total money, the second 2/7, and the third 1/7.

Such a system encourages each person to actively participate in all phases of the patent preparation process, which usually takes up valuable work time.

Some tweaks may include giving the disclosure writer 2 or more counts for writing the disclosure, since inventors tend to be notoriously slow to write a good description of their idea.

The other subtle feature of this system is that inventors will have a vested interest in limiting the number of inventors, and invention disclosures will tend to have one or two inventors listed, rather than twelve or more.

Tuesday, September 04, 2007

Patent Strategies in Light of the New Rules

The latest rules from the US Patent and Trademark Office are quite sweeping.  The new rules have several facets.  On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE).  On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.

Another twist is that the Examination Support Document may be forced where two applications are filed nearly simultaneously.  The PTO may assume that they cover the same patentable material and force an Examination Support Document unless you can prove that the applications do not cover the same material.

(As a side note, I have spoken to several patent attorneys/agents about the new rules and I have not yet found one who would even agree to write an ESD, no matter what the cost.  The reasoning is similar to why I will not file accelerated examinations.)

Each of the various requirements put on the applicant presents several problems, including the specter of patent invalidity and possibly inequitable conduct if the various support documents and petitions are not properly done.

In some situations, I used to espouse a kitchen sink approach to patent prosecution, where you load up a patent application with as many ideas as possible, get an early filing date, and file many continuation applications as possible.  This strategy can blanket an area of technology very effectively and makes the best use of early disclosure.  The strategy also could be used to tailor claims to an infringer so that lengthy and costly court battles may be averted entirely.

In view of the new rules, I think another strategy may be better suited.

This strategy is very targeted and narrow, and looks to find specific areas that may be infringed in the future, but does not include any more than it needs.

The targeted strategy is driven from the need to avoid overlapping applications and avoid the potential that a continuation application may need to be filed.

The steps are as follows:

1.  Define a very specific strategy for patent coverage over the entire scope of the technology you wish to cover.  The strategy must be driven by the current and potential business needs of the client, as well as the possible turns a technology may take.

2.  Draft a complete set of claims for each targeted area.  Each element of the claims should be carefully and thoughtfully considered for the language, the scope of coverage, any way the claims may be construed or misconstrued, how an infringer may infringe, and for how it differentiates from the known prior art.

3.  Only after the claims are completed, analyze the claims with the inventor and the business manager, reviewing the areas described in step 2.

4.  Draft a specification that addresses each and every claim and every feature of every claim, and avoid any additional material if at all possible.  Each feature must be described completely, but avoid adding other ideas that may be patentably distinct and that you may wished were a stand-alone patent.

One interesting twist to the new rules is to attempt wherever possible to force a restriction by including patentably distinct sets of claims.  Each divisional application is a separate family of applications for the purposes of continuation applications and RCEs.

The new rules may tend to force less disclosure and much more tailored specifications that may stand or fall on the first couple Office actions, rather than specifications with all sorts of material that may keep an application alive through several continuations.  This may lead applicants to perform good searches based on the claim set of step 2 prior to drafting the specification of step 4.

The net result is a shift from large, comprehensive patents that may disclose a broad range of concepts to those which are very narrow and even skeletal.  Instead of ‘promoting the progress’ by encouraging as much disclosure as early as possible, I think the new rules encourage the exact opposite.

This discussion is by nature very broad and sweeping, but based on the strategies that the new rules seem to favor.  I am sure that many situations may cause other strategies to be used within the new rules, and I will discuss them as they come up.

Tuesday, August 07, 2007

Patent Prosecution from the Client Perspective – You Do Not Know It When You See It

When I was a practicing engineer at a big company, several of my invention disclosures found their way to patent attorneys.  I was fortunate enough to work with a good one and a bad one, although at the time I could not distinguish between the two. 

In both cases, the attorneys did an interview over the phone with me and both attorneys appeared interested in my idea and seemed to listen attentively to everything I said about the invention.

Having only been through the patent process a couple previous times as an inventor, I considered it a great honor to get a patent and the recognition for my ideas.

The first attorney wrote in painstaking detail every minute feature of my product, including just about every screw in the design.  The patent application went on for pages and was the most painful thing I had ever read in my life.  I could not figure out what the attorney was trying to do, but I read every word of it and had no guidance or basis for commenting on what he wrote.

The first attorney was adamant that I read the document and comment on it, but I could not edit 25 pages of cryptic, badly written run-on sentences used in long paragraphs that spanned pages.  After forcing myself to read it, I just figured that this was what patents were supposed to be.

The second attorney explained the invention in broad strokes, summarizing the concept well, and then showed several examples of how the invention worked.  His application was easy to read and very concise.  I could skim through his document and pick up what he was writing almost immediately.

It was not until I read the second one that I realized how awful the first one really was.  From my current perspective today having written several hundred patent applications, I am ashamed for that first patent attorney and his poor clients.

There are a few things to note from my little story.  First is that the inventors often have a terrible frame of reference for what the patent application should be and how to evaluate the patent and the attorney.  From my innocent and ignorant perspective, the first attorney came across well and really buttered me up during the interview.  I even got to go to his office to sign the papers and was referred to as ‘the inventor’, which was pretty cool at the time.  I walked away from the experience thinking pretty highly of the attorney, even though he was, in my current opinion, bordering on utterly incompetent.

In other words, lots of schmoozing can cover up a tremendous amount of incompetence.

This can have effects in both directions: a bad personal interaction may lead to a bad perception even though the work product is beyond reproach, while a good personal interaction may cover up even the worst work product.

Another thing to note is that how gullible a new inventor may be.  It is easy for the inventor to be enamored with the glorious thought of getting a patent, but take whatever is given as gospel.  Because the inventor has no reasonable frame of reference, the inventor must go on what he knows, which is the personal interaction.  That does explain the success of many invention submission companies.

As a practicing attorney, I incorporate these lessons by doing a couple things.  First, I always treat my inventors well.  After all, they are my livelihood even when the business decisions are made by someone else.  The second is to try to give them a frame of reference for what to expect and how to judge a patent application.  Obviously, the first time they read a patent application they cannot compare it to anything else, but I try to define some standards by which they can judge it.

By knowing what the inventor is going through, I can hopefully provide as much value as possible to the client, whether they can appreciate it immediately or not.

Thursday, May 17, 2007

Patentably Defined

I try to avoid discussing other blogs in my blog, mostly because I like to focus on writing content.  However, I ran across Patentably Defined, a blog written by patent prosecutor Michael Kondoudis.  Mike’s deep understanding of patent prosecution comes out in practical, easy to implement tidbits.

This is the kind of blog that is immensely helpful but takes an enormous effort to write well and to keep up.

I just happened to do a response to an office action this week and used a couple ideas from Mike.  It is worth the read.

Friday, May 11, 2007

To Those of You Who Are Considering Going Solo:

I have recently survived my third year of solo practice and am looking forward to more.  For me, being solo suits my temperament and goals.  For some of you, it may be the right choice and for others not.

Your success or failure as a solo practice will be determined not by the quality of your work, since many clients are sadly unable to discern high quality from bad, but on your ability to find and retain clients.  Your personal interaction with potential and existing clients is the most important aspect of your success or failure as a solo.  Clients can tell if you understand and are addressing their particular issues, but they cannot tell if claim 14 had an improperly formed Markush group in the patent application they just reviewed.

I started my solo practice in my second semester of my first year in law school, and still managed to graduate in 2.5 years.  However, I had been a full time patent agent for several years as well as 13 years experience as an engineer.  I had one corporate client who graciously sent one case every month for several months and got me over the hump.  The rest was shear hard work but mostly dumb luck.

There are many ways to find clients: speaking engagements, getting involved with local inventor’s groups, advertising, but nothing is as effective as personal recommendations.  Getting recommendations is a chicken and egg problem, in that you cannot get work without a recommendation, and you cannot get a recommendation without work.  That is where you need to begin to get your name out there through whatever means available.

Also, I had the benefit of many accomplished practitioners (some of whom I met through this blog as well as an adjunct professor at school) who were able to answer questions, debate issues, and first tried to talk me out of going solo and then encouraged me after I did so.  Without that network, I would have felt much more alone and unprepared.

Going solo is great, but the first couple years of it is absolutely brutal.  Get used to worrying if the phone will ever ring or if you will get any work to do next week.  Have an enormous credit line or cash reserve and the guts to dip into it.  Eat a lot of Raman noodles and peanut butter.  Hand out a ton of business cards.  Figure out creative ways to meet potential clients, and spend the time, money, and effort to do it.  Other practitioners told me that it took them three years to build the practice to the point where their solo practice generated equivalent income to their previous job, and that is my experience as well.  Going solo is a huge task, with many ups and downs.  Get ready for the emotional and financial rollercoaster.

Whatever choices you make along the way, think about them from a business standpoint.  Your solo practice is a business, and nothing more.  Does this investment in time, money, or effort help my business immediately as well as long term?  Does it make me more efficient?  Are their risks associated with it?  How do I mitigate those risks?  It is easy to make emotional decisions about purchases, but the bottom line is: does this action help me make money, and is it the best way to spend my limited resources?  As long as you avoid too many ‘emotionally’ based decisions, you should be fine. 

While many of us, myself included, have long dreamed and fantasized about going solo, in the end, it is just a business.  Each purchase, each interaction with a potential client, each choice about how your time is spent should answer the question: does this make good business sense?

One very important thing to realize is that the business cycle of legal work, at least in IP, is tremendously long.  The gestation period for a client may be months or years before they engage you.  Once engaged, the prosecution of a patent may take three to five years, and the enforcement period may be twenty years.

The lesson is that business decisions for a solo should have two time frames: a short time frame that focuses on cash flow, but also a very long time frame that looks at growing and supporting the business over the long haul.  It is important to plant both types of seeds on a regular basis.  Don’t neglect one for the other.

In law school, there is very little said about the business of law and how to run a practice.  This means that it only takes a little business sense to be ahead of the curve.  Running a business is inherently risky and there is a possibility that you will struggle or even fail.  But with the risk comes reward, both financially and with those other, intangible things that drive us. 

Friday, May 04, 2007

Would the Outcome of Microsoft v. ATT Been Different if a Beauregard Claim Had Been Used?

There are many reviewers and pundits who have discussed the recent Supreme Court case of Microsoft v. ATT, which dealt with a patent that Microsoft admitted to contributory infringement.  This meant that Microsoft’s software enabled someone else to infringe, but that Microsoft itself did not directly infringe.  The question was whether or not Microsoft was to be liable for infringement outside the US because Microsoft sent master copies of infringing software overseas for copying and foreign distribution and whether that action amounted to infringement. 

The court decided that Microsoft was not liable because Microsoft did not export the copies of Windows installed on the foreign made computers.  Instead, Microsoft supplied a master from which copies were made.

This is a very, very fine distinction.

Microsoft was an admitted contributory infringer, not a direct infringer.  Direct infringement is usually a clear cut issue, but contributory infringement is a matter of degree.  The farther away a contributory infringer is from the infringement, the less potential culpability.

Looking at the litigated patent (RE 32,580) from a patent practitioner’s standpoint, there is something glaringly missing in the patent itself: a Beauregard claim.  Beauregard claims were not litigated and declared legal until 1995 and the Reissued patent 32,580 in the Microsoft v. ATT case was issued in 1988, meaning that Beauregard claims were not available to the drafters and prosecutors of the patent at issue in this case.

A Beauregard claim is used in a computer implemented method claim to claim the physical medium.  Pure software that can perform a method does not infringe a patented method, but is infringing only when the software is executed.  Thus, a software manufacturer can only be held liable for contributory infringement.

The Beauregard claim makes the software itself patented and a software developer a direct infringer rather than a contributory infringer.

Here is an example of a Beauregard claim (claim 2):

1.  A method comprising:
performing step 1; and
performing step 2.

2.  A computer readable medium comprising computer executable instructions adapted to perform the method of claim 1.

Had the drafter of the ATT patent been able to include a Beauregard claim, Microsoft would have been a direct infringer rather than a contributory infringer and would have been liable for whatever millions of dollars are at stake here.  One additional claim would have brought millions of dollars into the coffers of the patent holder.

Wednesday, May 02, 2007

Prohibited Words in a Patent – “Prior Art”

One of the Prohibited Words is the phrase “prior art”.  There is no reason whatsoever for the words “prior art” to appear in any patent application.  Making any characterization of prior art is opening an avenue for attacking an issued patent and may unnecessarily complicate patent prosecution.

When someone cites “prior art” in a patent, they are making some characterization or drawing a comparison to what they think the prior art may be.  In order to attack the patent, it may be possible to show that the prior art was actually something different or could be characterized in a completely different manner.  This could lead to rendering the patent invalid through inequitable conduct, or at least show the patent in a bad light in front of a (non-technical) judge and jury who are hearing the case. 

Characterizing prior art may complicate prosecution because an Examiner may take exception to your assertion that the prior art is one thing while the Examiner may characterize the same text as another thing.

Why open the door for an argument about the prior art?  It benefits no one at all, especially the client (who presumably has to pay for the agent/attorney to write a longwinded description of the prior art, in addition to paying for the extra prosecution and litigation problems down the road).

A well drafted patent application should always talk about the invention in a positive, constructive light, and never compare the invention to what has been done before.  It may be tempting to compare the invention to the prior art, especially when it seems easier than doing a proper description.

For example, our mousetrap invention may be described as “just like prior art mousetraps except with a photoeye sensor and mechanism for activating a snap mechanism”.  Drawing a comparison to prior art serves no real benefit.  A better description could be “a mousetrap that may use a photoeye sensor and a mechanism for activating a snap mechanism”.

Inventors and their agents/attorneys have a statutory requirement to disclose any prior art to the Patent Office.  Not disclosing relevant prior art can render a patent invalid.  The proper format for disclosing prior art to the Patent Office is through an Information Disclosure Statement.  In an IDS, the Patent Office is made known that the prior art exists and is left to draw their own conclusions from the prior art.  The Examiner may characterize the prior art in an Office action, and it would be proper to argue the characterization in a response, if necessary.  But it serves no purpose to try to anticipate the Examiner’s characterization and argument, write a counterargument, and include it in the body of the patent application, which I have seen may practitioners do.

I don’t know if using any of the Prohibited Words rises to the level of legal malpractice, but overuse or sloppy use of terminology does indicate a low level of proficiency in patent drafting.  My very first patent application, written without the help of a patent attorney or agent, was replete with the Prohibited Words.

Tuesday, May 01, 2007

Prohibited Words in a Patent – “Invention”

This post is part of a series talking about the Prohibited Words.  The other posts are here.

Another one of Prohibited Words is the word “invention”.  Nowhere in any patent specification should the word “invention” be used.  Nowhere.  The invention is described in the claims and the claims alone.  The specification supports and explains the invention, as well as describes the invention so that someone of ordinary skill in the art can practice the invention.

The problem with using the word “invention” is that, by definition, we do not know what the “invention” really is until the application is examined and allowed by a Patent Examiner.  The claims may morph and change during prosecution.  For example, we may think that the invention is a new mousetrap when we draft the application, but after examination, the Examiner may allow claims for an improved latch mechanism.

If the allowed patent application is well drafted, the improved latch mechanism may be used for an improved mousetrap, as well as a tripping device for circuit breakers or whatever else.

The fact of the matter is that we do not know what the invention is at the time of drafting.  Often, we think we know what we want it to be, but as business conditions change, new technology is developed, and we examine the prior art, our own perceptions of what we want the invention to be may change.

The problem with using the word “invention” is that by defining the “invention” in any form, we are potentially limiting the actual claimed invention inadvertently.  With the weird ways courts are interpreting the specification, an inadvertent mention of the invention may improperly limit the invention, especially when the scope of “the invention” changes dramatically during prosecution.

Monday, April 30, 2007

Prohibited Words in a Patent – “Must”

I have a list of words that are just plain prohibited in a patent application.  I know that other people may use these Prohibited Words, but I have tried to rid them from my lexicon.  Some of this may reek of slimy lawyer lingo, but it all has legitimate and practical reasons.  This is a first post of several talking about the Prohibited Words.

The first group of Prohibited Words includes those that make definitive and absolute requirement of something in the written description.  These are words and phrases like “must”, “have to”, “should”, “ought to”, “necessary”, “requires”, or any other similar words or phrases.  In every situation, the proper term is “may”, “could”, “potentially”, or a similar phrase.  I also try to avoid words like “never” and “always” as well.

When describing how something works, it is very easy to say that something (a machine, process, circuit, compound, etc.) must include certain elements.  The problem with such statements is that they inherently limit the invention to those elements.

A recent litigated case involving a Colorado inventor hinged on the fact that the patent drafter stated “the benefit is…” rather than “a benefit is…” or “a potential benefit is …”.  The entire case hinged on the fact that the court read the phrase to mean that the claimed invention must have the limitation.  Literally millions of dollars were on the line because of an inadvertent error during patent drafting.

Many times, we think we don’t care if the invention is limited to specific elements because we cannot even imagine a version of the invention without those elements.  However, that is very myopic.

Most inventors are myopic at some level, which is completely natural.  They see the world and their invention from a certain vantage point.  Some inventors are better than others at seeing the limitations of their invention or envisioning how other people may transform or build on their invention.  The problem is that inventors are horrible at foretelling how technologies and the market will change with respect to their invention. 

Remember that an issued patent may be in force for 20 years after drafting.  Who knows what kind of new technology or new product on the market will make certain portions of the invention more or less important.  Can you say with absolute certainty that there are absolutely no possible embodiments of your invention that does not have absolute positively have to have a specific element?  The answer is always no.  Thus, we allow for the possibility that our novel mousetrap may or may not have a latch mechanism in the description, even if we have the limitation in the claims.

Wednesday, April 25, 2007

Getting Patents Cheaply

It is not uncommon to receive a phone call from an inventor who wishes to write their own patent in order to save money but wishes me to help them in some way.  Usually, the inventor asks me to read or edit their patent application and help them file it.

This type of situation is one in which neither the inventor nor attorney can possibly get what is best for either of them.  It is a road to disaster.

The inventor wants a patent to protect an invention, ostensibly to use the patent for a commercial purpose: to license or to build a business around a product or service.

The patent agent or attorney wishes to provide a service at a reasonable price.  Included in the price for the service is, among other things, liability for problems that may occur in the future.  For each action the patent agent or attorney undertakes, they also undertake a risk of being sued for any mistakes or issues that come up after the fact.

This liability is something that the inventor implicitly demands.  By asking an attorney to read over a document and declare it good, the inventor assumes that any problems were caught and, if any problems arise, the inventor is covered.

Let’s look as the business proposition from the attorney’s point of view.  First, since the inventor wants to draft an entire patent application, there is a presumption that there would be a reduced fee for the attorney.  Second, the attorney is asked to take on the full liability for any problems.

Third, the likelihood of a problem increases incredibly in this situation.  The problems that may be encountered during drafting are often failing to include enough language to disclose a pertinent feature, inadvertently or improperly using one of the forbidden words of patent drafting, including references to prior art of any form, or any of a host of other issues.

I think in some cases, inventors may have encountered patent attorneys who act as mere scriveners who dutifully write down whatever the inventor says and adds little else.  In many cases, the inventors may be intimidated with the prospects of the filing process for the invention and may be afraid that they may forget something simple or make some kind of administrative error.  However, the inventor views what the patent attorney did as adding little technical or legal value.

The single biggest roadblock when attempting this type of engagement is that the inventor unwittingly does not disclose the invention.  When I draft a patent application, I spend the appropriate amount of time in a structured interview with the inventor to fully ferret out the intricacies and details of the invention, which enables me to draft claims appropriate to the scope of the invention and write a specification that properly supports the invention.  Instead of that, the inventor sends a document that is woefully inadequate and wants me to put the proverbial lipstick on the pig to make it ‘legal’, whatever that means.

When I am asked by an inventor to assume complete liability for drafting their patent application, I will happily do that when I get to use my process for which I will take full responsibility.  However, when I have to read, edit, and rewrite the inventor’s work, especially when I cannot use my tried and true process, it takes me considerably longer and the product quality is unfailingly poorer, leading to a higher liability.  Thus, if I were to take on such a project, I would charge accordingly, and the inventor may be disappointed to find out that the charges may be two or three times the cost of just having me write the application myself.

Wednesday, April 04, 2007

Patent Reward Systems – Its Not About The Money

Patent reward systems are put in place by many companies to give employees an incentive to disclose their inventions and go through the patent process.  Bosses like the idea because it gives them a way to recognize employees, especially those creative people who toil in obscurity in a lab.  Employees like it because it is a true recognition for their contribution to the company.  And they get paid.

A typical program may pay anywhere from nothing to $500 for merely submitting an invention disclosure, up to $1000 when an invention is submitted to the Patent Office as a patent application, and anywhere from $1000 to $5000 when the patent issues.

I have been on both sides of these programs.  As an inventor and engineer at several companies, I have written many, many invention disclosures, some of which have turned into patents.  As a patent attorney, I work with some inventors at larger companies who have submitted the disclosures.  I bring a different perspective to this discussion.

From the company’s side of things, the company’s biggest problem is always getting inventors to write down the initial disclosure.  Without the disclosure, the process does not go forward and other people in the company cannot participate in protecting the idea.

After the idea is written down, it may be further documented, safeguarded, turned into a patent, or at least documented that the idea existing within the company and the company owns it.

From the inventor’s point of view, a patent reward system leads to arguably one of the highest honors an engineer or inventor may have: their name on a patent and the patent on their resume.  Inventors who go through this process, especially those doing it for the first few times, have invested an enormous amount of emotional and psychological energy.  This energy and investment is far more than non-engineers can appreciate, since getting a patent can be the Holy Grail of engineering success.

A tip of this enormous emotional iceberg may be seen in little but very heated squabbles about who should be on the patent, who should be listed first, how much credit should be shared across engineering departments, and other assorted problems.  Many times, an inventor who feels like his or her idea was not fully appreciated will quietly start looking for another job or take some other passive aggressive measure.  Those resentments will be harbored for years.

Patent reward systems may bring out enormous emotional energy from some very creative people, often the people on whom the future of a company can be built.  Patent reward systems that are not fair or are badly organized or poorly run can build up a lot of anger in the company’s most creative people.  Creative people who are very angry can be very dangerous.

Remember that creative people will game the system.  A patent reward system is not some run of the mill program by human resources to keep employees happy.  It is a highly competitive program for the most important and valuable employees a company has.  No matter how brilliant and smooth talking the CEO might be, without a goofy engineer with a pocket protector coming out with great ideas, the CEO would have nothing.

A good patent program should get the right people to do the right things and encourage them to continue.  Regardless of how much the program pays or the details of how the program works, the single most important thing is to give the inventors the respect and encouragement that they crave.  It is far more important for the inventors to have the emotional and psychological needs met in the patent reward program than the financial needs.  They know they will get paid when they are hired for their next job anyway.

Wednesday, February 28, 2007

Attorney Mypoia In Proposed USPTO Rule Changes

In today’s Federal Register, the USPTO has reopened the discussion on whether or not patent agents may prepare and file assignments for their clients.

The USPTO has long allowed patent agents to file patent assignments, considering the assignment “incident to the preparation and prosecution of patent applications
before the Patent Office”.  Now, the USPTO is considering removing the language under the argument that assignments are a form of contracts, which is governed under state law.

This has a profound and negative effect on patent attorneys as well, as any assignment filed for an out of state client would also fall into this trap.

My sense is that patent attorneys, especially those who see patent agents as a threat to their livelihood, would commend this new rule change so that they would have some albeit miniscule argument as to why a patent attorney is better than a patent agent.  Having had a solo practice both as a patent agent and a patent attorney, I have had to make both sales pitches to potential clients.

Regardless of being a patent agent or patent attorney, this ruling adversely affects ALL practitioners.  No longer will a patent attorney nor an agent be able to send a simple assignment form to an out of state client and file the document with the USPTO.  Either practitioner would have to send the client to a local attorney (who may poach the client) or force the client to file his or her own assignment with the USPTO.

Does the client benefit in this ruling?  Probably not, since the client has incurred additional expense without adding any value.  Does the attorney gain an advantage over a patent agent?  Maybe a slight advantage for in-state clients, but the patent agent probably has the advantage over an attorney for out of state clients, since the client would expect to seek a local attorney for other types of legal help.

In the end, the client takes the beating.  If these rule changes are enacted, an out of state client must go find a local attorney who is most likely not a patent attorney, who must get up to speed on the case, attempt to understand patent law, and take the time and effort to properly file an assignment with the USPTO.  Rather than getting a free or very low cost service (I file assignments for free with any patent application that I write), a client may pay $500 to $1000 for the same service from someone unfamiliar with the client, their case, and the law surrounding their case.

I hope that myopic and monopolistic attorneys and bar groups do not support this change to the rules, thinking that they gain an advantage over their patent agent counterparts, because they wind up only cutting their own throats at the same time.

ABOUT THE AUTHOR

Russ Krajec is a registered patent attorney, engineer and inventor with over 20 United States patents. He practices in beautiful Colorado, serving the patent needs of clients all across the country.

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