Posts in Business

On November 16, innovation intelligence firm Patsnap published the results of its 2023 Global Innovation Report, which measures a range of patent metrics to determine the most innovative companies in the world. This year’s Global Innovation 100 listing represents about a quarter of the globe’s entire patent filing activity. The report also includes a Global Disruption 50 listing of actively growing and young companies, reflecting the strength of both the United States and China in emerging technology fields.

The United States Patent and Trademark Office (USPTO) issued its one millionth design patent on September 26, 2023. U.S. Patent No. D1,000,000 claims the ornamental design for a dispensing comb. This milestone comes during a particularly prolific period for design patents. In 2022 alone, the USPTO received more than 50,000 design patent applications. The Office has seen a 20% growth in design patent applications over the last five years. It is not hard to understand why inventors are seeking design patent protection at previously unseen levels. In an age of complicated technologies, design patents can protect marketable appearances of products in the same manner generally as trademarks identify source. Understanding design patent benefits underlying the recent growth in application numbers is a good lesson for businesses seeking to distinguish a brand—but keep an eye out for further developments and be prepared to adjust business and IP strategies.

On November 8, a Central California jury entered a verdict awarding $3.9 million in punitive damages against Internet financial platform ConsumerDirect. The verdict comes weeks after U.S. District Judge James Selna granted a motion for sanctions  after finding that ConsumerDirect fraudulently represented its ownership of unregistered trademarks while obtaining a preliminary injunction in U.S. district court against Array.

In today’s high-tech landscape, the ancient fable of the goose that laid the golden eggs imparts profound wisdom. The farmer in that tale weighed the decision to continue accumulating wealth slowly by selling the golden eggs that his magical goose laid (one per day) or taking a risk by killing the goose to harvest all of the gold within it at once. (Ultimately, the farmer chose the murderous path only to discover the goose did not contain any riches.) Just as the farmer faced thorny decisions in the tale, modern tech executives grapple with complex choices between immediate returns and long-term potential while also maintaining a competitive edge. In the real world, an artificial intelligence (AI) system that can generate patentable outputs (such as designs for new drugs) stands as the metaphorical “goose” while the inventions it produces are analogous to the “golden eggs.” Steadfastly guiding this delicate dance is the patent attorney with expertise in AI technology.

Words can have profound impact. The term “patent troll,” coined by an Intel litigator, has done incalculable damage. First use is attributed to Peter Detkin, who is said to have deployed it in 2001 to belittle plaintiffs in a patent case involving the chipmaker. Shortly after its appearance, Detkin emerged as what some in the tech world would consider a bad actor. He co-founded Intellectual Ventures, a company that raised $5.5 billion to acquire more than 40,000 patents and applications for sale, license or enforcement. The IP community needs to be more vigilant about preventing parties of interest and the media from controlling the IP narrative.

Startups often face many competing pressures. Two such pressures that are frequently at odds with each other are the need to adequately protect the intellectual property that will be the basis for future revenue and investment, and the need to bring such revenue and investment into the business to allow for continued technology development and commercialization. Many startups are aware of how the on-sale bar interacts with these pressures and the associated need to file patent applications on any technology prior to offering or placing it on sale. However, fewer startups are aware of the public-use bar and how activities pursued with the goal of growing their businesses may unwittingly invoke it.

California is poised to become the third state to enact a right to repair law aimed at making it easier for independent repair shops and consumers to repair electronic devices. This might sound well and good—until you think about what it actually means for IP owners. While repair advocates may not care about, or even acknowledge, the IP side of the equation, the not-so-hidden truth of the right to repair movement is that it expands repair opportunities for consumers by taking away the rights of copyright and patent owners. Indeed, the foundational premise of the repair movement is that there is something inherently wrong when an IP owner exercises its right to exclude and imposes a repair restriction. Of course, this lopsided view elevates access over incentives, and it ignores how IP law itself promotes the public good by rewarding creators and innovators for their individual efforts. But, more importantly, it’s not up to the states to second-guess Congress’s judgment.

In recent months, two U.S. government executive initiatives have reshaped the landscape concerning intellectual property and the domestic production of products resulting from federally funded research. These initiatives are poised to bring substantial changes to the dynamics of academic-industry collaborations as inventions are brought to market.

As I was participating in a recent conference of trade secret nerds (yes, we often refer to ourselves that way), I found myself thinking about the Titanic. More specifically, about the legend of the missing binoculars. It seems that on that tragic night in 1912 the lookout was unable to find a pair of binoculars that he thought had been stowed in the crow’s nest. According to the story, they were in a locked box in the quarters of the former second officer, who had been transferred to another ship just before departure (lucky guy) and apparently took the key with him.

The single best tool available to increase patent value and decrease patent costs is not directed to application drafting or patent prosecution or law firm selection. Instead, it occurs much earlier in the process. The best tool is meeting with inventors. When I was outside counsel and I received a new application to draft, the very first thing I did was set up a meeting with the inventors. As in-house counsel, when I receive a new invention submission, I do the same. It does not matter if the invention is simple, non-enabling, or incomplete. It does not matter if the inventor is familiar, experienced, or knowledgeable. It does not matter if we meet in person, by phone, or by video. For every invention, we meet.

Privacy and data security issues can scuttle a deal or at least cost the parties a lot of money. For example, in the due diligence process involving the 2017 acquisition of Yahoo by Verizon, Yahoo disclosed two serious data breaches that compromised over a billion accounts. Yahoo had previously attempted to cover this up. The deal went ahead for nearly $4.5 billion but not before Verizon knocked $350 million off the transaction price and Yahoo paid over $100 million to settle SEC fraud charges and class action lawsuits.

Legal professionals making corporate IP portfolio management decisions must have the ability to cut costs from underperforming assets while also making significant investments to protect market share. On Day 3 of IPWatchdog LIVE 2023, top legal officers for several companies currently navigating global markets offered their insights during a panel titled “The Hallmarks of a Rational IP Strategy.” While the panel discussion revealed no one-size-fits-all template for legal professionals to follow when building valuable IP portfolios, it underscored the need for IP attorneys to firmly grasp their clients’ business needs when determining which IP rights to obtain and where they should be leveraged.

Yesterday, the United States Patent and Trademark Office (USPTO) held a “public listening session” to hear from industry leaders on the topic of standard essential patents. The event was specifically related to the USPTO’s effort to obtain stakeholder input on questions regarding proposed international standards that were presented in a recent Federal Register Notice, as well as strategies identified in the White House’s National Standards Strategy for Critical and Emerging Technologies.

Generative artificial intelligence (AI) platforms are already reshaping work life for many professionals, including those in the legal industry. On Day 3 of IPWatchdog LIVE 2023, a panel discussion titled “Impact of Generative Artificial Intelligence on Law and Innovation” explored ways that in-house legal teams can advance their company’s use of generative AI to improve productivity while balancing the need to protect confidential data and intellectual property.

For corporate intellectual property practitioners, the quest to excel can be daunting and all-consuming. Indeed, IP teams and their clients face a multitude of complex internal and external challenges amidst an ever-evolving business, legal, and technology landscape. Cognizant of the considerable trust and influence bestowed upon them by the C-suite, IP teams naturally desire to perform at the highest possible level. As chief IP counsel at a global company, I constantly put myself and my team under the proverbial microscope. I reflect upon our people, strategy, and operations; assess our individual and collective performance; and seek new ways to maximize the value we deliver to our company and internal clients. In some instances, such new ways entail minor course corrections. In other instances, they encompass the pursuit of novel pathways that upend the status quo.