It seems pretty clear that under the direction of David Kappos the United States Patent and Trademark Office is pursuing an “all of the above” strategy to cutting into the backlog and ultimately reducing the pendency of patent applications.  It is easy to criticize any one of the initiatives that the USPTO is pursuing, but that would be to miss the forest for the trees.  The reality is that unless and until Congress steps up to the plate and does something, which seems extraordinarily unlikely, the Patent Office will be left to attempt to piecemeal together solutions.  So while no one solution can or will solve all of the problems plaguing the patent system, if cascading solutions are employed at least some applicants can be helped and at least some applications can be accelerated.  Of course, the name of the game today is job creation, so I propose a creative way to accelerate patent applications out of order upon proper showing that jobs will be created, and focus my suggestions on those companies that are most likely to create jobs; namely those 5 years or younger and with 99 or fewer employees.

Earlier today Dale Halling, of Halling IP and State of Innovation Blog, brought to my attention an article on the IAM Magazine Blog from a few weeks ago. Joff Wild of IAM blogged about a study conducted by IPVision, Inc., which focused on analyzing the intellectual property positions of over 9,000 US venture capital backed technology companies. The study was conducted with the assistance of faculty at the MIT Sloan School of Management, and not surprisingly determined that there is a strong correlation between intellectual property assets, particularly strong patent portfolios, and success. In fact, the IPVision study shows that VC-backed technology “[w]inners are many times more likely to hold intellectual property than losers.” Further proof that those who due to ideological reasons forgo pursuing a patent portfolio are dooming themselves, and their investors, to an unnecessary uphill struggle right from the start.

Fig. 1 of US Patent No. 2,322,210, titled simply "Battery" and issued to Adams

After over 32 years of practice, I’ve found that patent application drafting is more “art,” than science.  One item I’ve particularly enjoyed is describing why the invention is significant or a “big deal.”  I call this telling the “story of the invention.”

I’m sure some patent litigators will blanch at what I’m suggesting about telling the “story” behind the invention in a patent application because of all the supposed “admissions” that will be made.  But most patent litigators haven’t had to endure the frustration we patent prosecutors experience when try to get a “silk purse patent” based on a “sow’s ear description” because there’s no “story” told in the patent application about why the invention is patentable.  Also, drafting a “litigation-proof” patent application (if one exists) is meaningless if you can’t get that patent application allowed because the “story” told doesn’t sell the patentability of the invention.  It can be quite helpful to effectively, but safely tell the “story” of the invention in a patent application.

The litigated cases are often full of interesting “invention stories” which became significant in reaching the conclusion that the invention was patentable.  One great example is United States v. Adams, 383 U.S. 39 (1966) which is one of the few instances, at least in recent memory, where the United States Supreme Court affirmed the patentability of the claimed invention.

Over the last week Scott Adams, the creator of Dilbert, has been out doing himself in a series of laugh out loud funny cartoons. I realize that as a patent attorney my sense of humor is, well… challenged, at least in the view of many who are not in the patent field. That being the case I figured I would share a few of these cartoons with an audience that I figured would be able to appreciate the humor. What is even better is that Dilbert cartoons can be embedded into a blog or website for free, so no copyright infringement was engaged in during the creation or publication of this post.  Which is always nice!

As you can see from the first cartoon in the series, the creator of a project has left the company and his unfinished project is being passed on to the hapless Dilbert.  Scott Adams, through Dilbert, teaches us not only that no one should ever trust Dilbert, but also about the importance of documenting your invention.  I then take this opportunity to also opinion about the impending first to invent changes to US patent laws.   What fun!

February 27, 2010

Earlier this week, on Tuesday, February 16, 2010, TiVo, Inc. (NASDAQ: TIVO) was granted US Patent No. 7,665,111, titled Data storage management and scheduling system.  This patent is indicative of what I suspect will become a growing problem in the years to come, which is a resurgence in so-called submarine patents.  This patent matured from a patent application filed on October 20, 1999, which means it was pending at the United States Patent and Trademark Office for over 10 years.  Amazingly, according to the Patent Office no patent term extension is owed.  Exactly how can a patent remain pending for over 10 years and not be entitled to an extension in the term?  I really don’t know to be perfectly honest, but it seems that this patent will apply to pretty much any and all DVRs currently on the market, so even if there is no patent term extension granted it could produce a choke-hold on the industry through October 20, 2019, which should create a tidy sum of royalty payments for TiVo, at least over the near term.  Of course, it will also spark a rush to innovate around the TiVo patent, thereby causing innovation to march forward, much to the chagrin of anti-patent advocates who are already proclaiming this patent to be evidence that patents harm innovation.   In any event, a patent that issues after 10+ years suggests problems, even if the intended march of innovation is encouraged, which will of course be the case.

This is an article that I have been wanting to write since at least June 2009, and on a snowy and cold day in Northern Virginia, where folks are snow bound due to closed roads caused by high drifts, what better day to write about the 7 deadly sins, right? OK, there is really no connection to snow and the 7 deadly sins, at least in so far as I can tell, but as I search for a topic to write about I came upon this note to myself, which simply says “7 deadly sins relate to motives.” It was in Houston in June 2009 that this revelation (pun intended) came as a result of dinner and a few drinks with John White. John and I were on the road to teach the PLI Patent Bar Review Course and enjoying an Italian dinner with some red wine. As we often do, our conversation ranged from politics, to law, to patents, to innovation and beyond. Somewhere along the way we started talking about software and the anti-patent crowd, and then the conversation got really interesting.

Those who are readers of IPWatchdog.com on a regular basis are familiar with the jousting that goes on in the comments between myself and a core group of patent believers and those who are, shall we say skeptical of the value of patents and would prefer that patents simply not exist, or at least not exist in certain areas, such as software. Without getting into that debate directly here and now allow me to observe that if you are an independent inventor, start-up or small business one successful way to responsibly move forward is to pattern yourself on successful companies. There is no mileage in following the lead of a company in decline, so lessons can be learned by observing successful companies and weaving together a strategy that will lead to market success. Perhaps no other company today so aggressively pursues patents on core technologies and products than Apple, and they enjoy enormous success. So why not take a page from the Apple playbook? Innovate, patent, commercialize and dominate.

Apple, Inc., the tech giant that has revolutionized how we listen to music and the functionality of a cell phone, is now seeking to expand its extremely popular iPod and iPhone products into greener pastures. Specifically, in a US Patent Application No. 20100013309, which published earlier today, Apple is seeking a patent on a solar powered electronic device, such as an iPod or iPhone.

Every week Apple obtains patents and every week more pending patent applications are published where Apple is the assignee (i.e., owner). Apple aggressively pursues patent protection because quite frankly patents make good business sense. There is a reason that the iPod and iPhone dominate the market, and other alleged substitutes lag far behind. It is because Apple has a well developed and ever expanding patent portfolio that protects these core products and prevents competitors from getting too close.