A Google search of the term “patent strategy” in quotes conducted on May 11, 2012, returned no fewer than 188,000 references.  A similar search of the terms ‘patent strategy’ without quotes returned 81,000,000 references.  Indeed, anyone who reads press releases or financial news can tell you that companies, both big and small, repeatedly talk of developing a patent strategy for the twenty-first century that will enable them to compete in the global market place and take advantage of existing synergies and ongoing alliances in a manner that will create shareholder value and bring new technologies to market.

What a mouthful! Blah… blah… blah!  Existing synergies and ongoing alliances?  That seems to be code for “we don’t have a clue but want to make it sound like we are doing something to keep our investors/shareholders happy.”  And if I hear any more about moving forward through the twenty-first century I think I will be sick to my stomach.  For crying out loud, strategies for the twenty-first century are only about a decade (or more) late!  Further, anyone who thinks that their company will be dominant, let alone relevant, by the end of the twenty-first century obviously hasn’t learned anything from history.  Virtually none of the dominant tech companies remain dominant for more than a generation.  There are, of course, notable exceptions.  IBM and Apple are two very notable exceptions to the rule.

Pilot program will allow consideration of an IDS after payment of the issue fee without a RCE

Washington - The United States Patent and Trademark Office (USPTO) today announced the start of the Quick Path Information Disclosure Statement (QPIDS) pilot program as part of its on-going efforts towards compact prosecution and pendency reduction. The program reduces the number of Requests for Continued Examination (RCEs) filed for consideration of an IDS after the issue fee is paid.

“The one point on which all voices of the IP community agree is that the most important thing USPTO can do to help is to get their new inventions to the marketplace faster and more efficiently, in turn enabling them to create new jobs and opportunity,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos. “The Quick Path IDS pilot is another example of USPTO’s commitment to eliminating delays and increasing efficiency for our stakeholders.”

For many companies the best course of action is to file an International Application under the Patent Cooperation Treaty (sometimes referred to as a PCT application) and pursue patent protection around the world with the filing of a single, uniform patent application.  The PCT process is favored by many companies because of the long processing time.  The international stage of the PCT application can last for up to 30 months, which puts off when you have to make a decision about where to pursue rights.  This is particularly helpful if the innovation is early stage or encompasses basic scientific research that will need to be translated into a commercially useful innovation, or scaled in order to be feasible. In these scenarios so much can go wrong from scientific breakthrough to commercially useful invention that it does not make sense to spend vast sums of money early in the process when the invention may still fail to prove itself.

Typically there are a logical set of countries where maximum market opportunity exists for any innovation and you are likely to want to pursue protection in those countries where the economy is well adapted to provide the most economic potential for exploitation. With some innovations there are many countries that are capable of supporting a market for high-tech innovations, which sometimes causes people to want to apply for patents in a variety of jurisdictions.

Information on the world’s specialized intellectual property courts can now be found in one place. The Study on Specialized Intellectual Property Courts, a joint effort published by the International Intellectual Property Institute (IIPI) and United States Patent and Trademark Office (USPTO), is the first study to catalog the world’s specialized intellectual property court regimes. Not surprisingly, the study concludes that governments around the world should adopt some form of specialized IPR court to handle intellectual property cases.  Specialized IPR courts were found to enhance efficiency, lead to more timely resolution and foster more consistent rulings and outcomes.  Such courts are also an important signal to individuals and industry that a country takes intellectual property enforcement seriously, which we in the industry know is a precursor to economic development and outside investment.

In order to assist researchers in their efforts to compare countries’ respective regimes, the International Intellectual Property Institute is hosting an interactive map of the study’s results on its website.

Bruce Lehman, Chairman and President of the International Intellectual Property Institute and former Assistant Secretary of Commerce and Director of the USPTO, praised the study’s publication saying: “Effective rule of law is essential to the stability of the global intellectual property rights system. This study provides countries considering implementing specialized court regimes with the accumulated knowledge of the world’s most effective intellectual property institutions.”

One of the reasons that those knowledgeable about patent law get agitated when anti-patent forces criticize the patent system is because despite what they want to think it is not easy to obtain a patent.  This should be self evident really if you stop and think about it.  When was the last time in your own life that something valuable was easy to obtain?  Has anything valuable ever just been handed over to you or fallen into your lap?  Assuming that you were not born with a silver spoon in your mouth the answer is no.  So why then are so many people willing to accept the utter nonsense of those who detest patents?  Curious when you stop and think about it.

It is the time of the year where John White and I gear up for our summer Patent Bar Review Tour, criss-crossing the country teaching the PLI Patent Bar Review Course all over the United States. Next week we will be at PLI headquarters on Seventh Avenue in New York City, followed by courses in Houston (June 6-10), San Francisco (June 19-23), Boston (July 11-15) and Chicago (August 7-11).  If you cannot make it out to a live course you can always do the home-study version of the course which is delivered via the World Wide Web.

Of course, as we are gearing up for a busy summer so are those who are peddling what really can only be characterized as fake, counterfeit versions of the PLI Patent Bar Review Course.  PLI has been the top patent bar review course for years, so it is not surprising on some levels that there are those fraudulently using the PLI name to sell knock off courses that are simply not what they purport to be.  So buyer beware!  If the price seems extraordinarily low it is because it is not a legitimate course.  Also, the only way to acquire the latest version of the PLI patent bar review course is to purchase the course directly from PLI.

Some will no doubt wonder how I am so sure that there are fake, counterfeit courses on eBay.  Good question.  Take a look at this eBay posting.  Whoever bought this course for $499.95 just wasted $499.95.  Although the ad says that it is the latest version of the PLI course that is fully updated that is simply not true.  It is a lie!

Are you a patent attorney or patent agent setting up your own firm?  Are you presently at a firm but considering splitting off and going it on your own?  There are a great many things that you need to consider and have in order, from a docketing system that will let you sleep easy to malpractice insurance to engaging clients and firing clients to how to handle un-earned client funds held in trust.  Here are just a few thoughts.

1. Patent Docketing System

Every attorney who has been practicing for any length of time can tell you that it is essential for you to have a patent docketing system of one kind or another. In fact, having a high quality patent docketing system will allow you to sleep much easier and minimize those episodes where all of the sudden something pops into your mind and you break out into a cold sweat wondering whether something fell through the cracks. A patent docketing system is where you (or preferably your staff) will enter due dates and other deadlines so that that nothing falls through those aforementioned cracks.

A decision with the right outcome but for the wrong reasons can confound jurisprudence nearly as much as a decision that is entirely wrong.

In our field an example is provided by the opinion of  Justice Douglas in Funk Brothers Seed v Kalo Inoculant, 333 US 127 (1948) which has recently been exhumed following decades of obscurity. The invention in that case concerned an inoculant for leguminous plants containing mutually non-inhibitive strains of Rhizobium bacteria. Modern readers would find it a surprising proposition that identifying such strains and enabling a farmer to conduct a single treatment of his fields when formerly six separate treatments were needed did not amount to invention. The rat which Justice Douglas smelled existed but was mischaracterised. As set out in the concurring opinion of Justice Frankfurter it was not enough to conceive of the idea that non-interfering strains might exist: it was necessary to go further and identify particular operable strains of bacteria (this was, of course, well before deposit systems for bacteria and other living species were established). The proper ground of non-enforceability was non-enablement, not obviousness.