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Picking Strategic Partners: How and Why

In business and the corporate world, it’s all about who know. When bringing an invention idea to fruition, it’s all about whom you partner with. There are tangible, financial benefits to finding partners who offer services vital to your new company’s survival. These services may come from a designer, prototyper, patent lawyer or manufacturer. In other words, they bring to the table more than the deep pockets of a venture capitalist or angel investor.

Drafting a Licensing Agreement, A Patentee Perspective

You might want to consider some type of up front guaranteed payment to ensure that you get at least something. This may seem overly pessimistic, but it is the job of any attorney negotiating or drafting a license to assume that things will go wrong. The agreement can never contemplate everything, but with respect to payment you need protection. What if the licensee is paying you a defined percentage of sales but then decides to offer your product for free, or as an add-on to a sale, as is common in direct TV marketing? If your product is used as a “come on” and given away for free even 100% of $0 is still $0. That is why some type of minimum payment can be quite beneficial.

FTC Proposal for Regulating IP Will Harm Consumers

We conclude that the FTC has not identified sufficient evidence to raise serious doubt about the current efficiencies of the IP marketplace. Indeed, the available empirical evidence suggests that these existing rules and practices work well. The interests of consumers are well represented by standard setting organizations and competition among technology implementers who at the end of the day must make goods and services that people wish to purchase.

Predicting the Future: When Will U.S. Patent 9,000,000 Issue?

The United States Patent and Trademark Office is poised to issue U.S. Patent No. 8,000,000, which will likely happen on Tuesday, August 16, 2011. This got me to thinking — when exactly can we expect U.S. Patent 9,000,000 to issue? Then my mind wandered to Office pools and I heard the immortal words of Fred Flintstone: “Bet, bet, bet, bet, bet….” So I thought it might be a little fun to engage in some speculation. I pick Tuesday, May 24, 2016.

U.S. Patent Office Closing in on Patent No. 8,000,000

Yesterday the United States Patent and Trademark Office profiled U.S. Patent No. 1,000,000, which was issued on August 8, 1911. Under the current numbering system for patents, U.S. Patent No. 1 was issued on July 13, 1836 to John Ruggles of Thomaston, Maine for his invention related to the locomotive steam engine. Therefore, it took just over 75 years to issue 1,000,000 United States patents. Today the U.S. Patent and Trademark Office is poised to soon issue patent number 8,000,000, perhaps as soon as next week. Just over 5 years since U.S. Patent No. 7,000,000 issued.

Patent Attorney and Blogger Named President of Patent Calls

Patent Calls, Inc., a provider of technology-based patent analysis services and solutions, last week announced the appointment of patent attorney Patrick Anderson as President. Those who are familiar with the patent blogosphere might recognized Anderson’s name from his popular Gametime IP blog and his active Twitter account. Anderson is also contributing editor of the Patent Calls’ blog, Patent Connections.

Making Small Business Look Bigger

There are many ways to enhance your small business, making it look bigger, at relatively inexpensive costs. Everyone has to start somewhere, but think about things from the customer’s perspective. Think about a time when you were searching for businesses that you wanted to work with for personal use. Did you choose the smallest entity you could find, one that did not have a website or even have a business card to give you? Probably not! Chances are you decided to look a little further to find someone you felt was more “experienced” in their field. If that’s something you’ve done, then chances are your small business may loose customers for the same reason. Starting a new business can be a very expensive venture. Following are some fairly inexpensive suggestions that you can execute in order to make your small business look more like an established corporate entity.

USPTO to Hold California Independent Inventors Conference

If you are a serious inventor you need to go to this Conference. Last year there were inventors who came to the USPTO campus for the two-day event from all over the East Coast, and those that I talked to thought it was well worth their time and money. Where else are you going to be able to meet Senior USPTO officials and talk to them one-on-one? There will be patent examiners and trademark examining attorneys present to answer your questions. Local intellectual property attorneys will give their time to participate in teaching sessions, as well as giving free consultations to attendees to answer questions. Even if you have to travel to California and stay in a hotel for a couple nights you will get far more out of the Conference than you will spend. I understand money is tight, but serious inventors, whether they are newbies or old pros, will gain a tremendous amount of valuable information and personal connections by attending the Conference.

Indicia of Extortion – Federal Circuit Slams Patent Troll

It was also determined that the underlying patent litigation was brought for no other reason than to extract nuisance payments despite the fact that there was no infringement. Specifically, the district court determined that Eon-Net filed the lawsuit against Flagstar had “indicia of extortion” because it was part of Eon-Net’s history of filing nearly identical patent infringement complaints against a plethora of diverse defendants, where Eon-Net followed each filing with a demand for a quick settlement at a price far lower than the cost to defend the litigation.

Patent Reform Back to Senate After Labor Day

Cloture is the only procedure by which the Senate can vote to place a time limit on consideration of a bill or other matter, and thereby overcome a filibuster. Under the cloture rule (Rule XXII), the Senate may limit consideration of a pending matter to 30 additional hours, but only by vote of three-fifths of the full Senate, normally 60 votes. Without 60 votes cloture fails and debate continues. Unfortunately for those who would like to see patent reform derailed, the fact that there was unanimous consent in the Senate for a cloture vote almost certainly suggests that there will be at least 60 votes to end debate on H.R. 1249, which will bring it to a vote, likely sometime later in the week of September 6.

Patent Litigation Statistics: 1980 – 2010

In trying to determine whether patent litigation is out of control it is worth looking at the numbers of patent cases terminated and how they are terminated. What becomes clear is that there is no statistically relevant increase in the number of trails over the last 30 years even with a significant increase in the number of cases commenced. The following charts show that while actual trials remains largely constant over the last 30 years there has been growth in the number of patent litigations terminated without any court action, as well as increase in cases terminated with court action and before pre-trial and the number of cases terminated between pre-trial and trial.

An Overview of the U.S. Patent Process

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

As Predicted, Federal Circuit Rules Isolated DNA Patentable

After much anticipation, the United States Court of Appeals for the Federal Circuit earlier today issued a decision in Association for Molecular Pathology v. Myriad Genetics. The decision on first glance will seem to be a split decision, particularly by Federal Circuit standards. The majority opinion was written by Judge Lourie, Judge Moore wrote a concurring opinion and Judge Bryson concurred in part and dissented in part. Having said that, the outcome largely seems to be what was predicted by the patent community. On the major substantive issue — are isolated DNA molecules patent eligible subject matter — the Federal Circuit reversed the decision of the district court and ruled that isolated DNA molecules do constituted patent eligible subject matter. The Federal Circuit also ruled that methods relating to the screening for potential cancer therapeutics are, likewise, patent eligible subject matter. All three Judges also found the “comparing” and “analyzing” claims to be ineligible for patent protection because they were not transformative, and thus were merely abstract mental steps.

Groupon Sued for Patent Infringement

SellerBid, Inc. brought the patent infringement lawsuit (see complaint) demanding a jury trial, against Groupon and others on July 20, 2011. Somewhat surprisingly, the lawsuit was filed in the United States District Court for the Eastern District of Virginia. The Eastern District of Virginia is famously known by attorneys everywhere as “the Rocket Docket,” thanks to how fast cases go from filing to trial. Expect the defendants to seek to remove the case and the Eastern District of Virginia to be sympathetic to the defendants if there is any reason to suspect that SellerBid was merely attempting to manufacture jurisdiction and venue.

The Problem with Patent Trolls

To me a patent troll is not just someone who has acquired a patent for purpose of licensing or bringing a lawsuit, but rather one who is engaging in some kind of unfair business practice. The telltale sign of a patent troll is one who is abusing the patent right in order to shake down a defendant for payment. This type of behavior is typically exhibited by non-practicing entities who are not innovators, but rather acquire patent rights. However, the act of bringing specious claims to provoke a settlement would, in my opinion, be just as bad if brought by an innovator.