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Attorney Marketing and Brand Building 101

Posted: Wednesday, Mar 30, 2011 @ 12:20 am | Written by Renee C. Quinn | 1 Comment »

I write often about brand building, marketing and social media for start-up companies and businesses of every size, shape and industry.   However, today I focus on the basics of marketing and brand building for attorneys. Whether you are an individual attorney or part of a rather large firm, it is imperative to remember that when preparing your marketing strategy you are not simply trying to sell your services, but are, in fact, building your own brand.

Brand building seems like a rather easy task for companies that offer tangible products, but as attorneys, all you have to sell is your time, so things can be a little bit different.  You need to also factor in that in many, if not most, instances clients feel they are represented by an individual.  Sure, the firm identity is important, but the relationship is with the individual.  Thus, for attorneys it is especially important to always keep in mind that You Are Your Brand!  As with any industry, you cannot simply create some ads, a website and some social media profile pages and expect people to come to you. Rather, clear goals need to be outlined and a strategy for reaching those goals should be mapped out.





Patent Reform: Expanded Prior Users Rights is a Bad Idea

Posted: Monday, Mar 28, 2011 @ 9:23 pm | Written by Gene Quinn | 15 comments

On March 3, 2011, the amendment to remove the first to file provisions from the Senate patent reform bill — S. 23 — went down to a lopsided defeat by a vote of 87 – 13.  This was known as the Feinstein Amendment because it was Senator Diane Feinstein (D-CA) that was the primary opponent of first to file in the Senate.  A day earlier, on March 2, 2011, Senator Feinstein made the best argument anyone could make regarding why first to invent should be kept and first to file should be jettisoned from the bill.  The Patent Docs have her remarks for your review.

In one particular part of Senator Feinstein’s remarks on the floor of the Senate on March 2, 2011, she said:

Many first to file countries allow more extensive use of prior art to defeat a patent application, and provide for greater prior user rights than this bill would provide.

And right she was, at least until the House of Representatives got into the act.  The House patent reform bill, which was leaked to virtually everyone who wanted a copy, began circulating late in the afternoon on Thursday, March 24, 2011.  The Senate and House bills are largely identical with the exception of prior user rights.  The House bill would make us much like those many other first to file countries Senator Feinstein talked about on the floor of the Senate.  Is she clairvoyant or did she know a game was afoot?





Protecting Your Intellectual Property in China

Posted: Monday, Mar 28, 2011 @ 7:46 pm | Written by Gene Quinn | 5 comments

PTO Headquarters, Alexandria, VA, the next stop on the China Road Show tour.

The United States Patent and Trademark Office is hosting a free two-day seminar titled: “China’s Impact on Intellectual Property: Protecting Your Intellectual Property in China and the Global Marketplace.”   The seminar will be conducted April 6 – 7, 2011, at the USPTO Headquarters in Alexandria, Virginia, and is a part of the USPTO China Road Show series.  The China Road Show is a series of two-day China IP events that the USPTO is hosting across the country to help educate businesses about the realities of piracy and counterfeiting—which cost the American economy approximately $250 billion annually.

During the two-day seminar intellectual property experts from the private sector in the U.S. and China, as well as experts from the United States Government, will provide comprehensive information on protecting and enforcing intellectual property rights in China.  The program will include presentations on protecting and enforcing trademarks and patents in China, case studies illustrating these principles in practice, and real world stories and practical tips from companies on the front-line of IP rights protection and enforcement in China.  The program also will feature a presentation on global intellectual property strategy for the small business.





Patent Reform in the House. Demagoguing of First to File?

Posted: Sunday, Mar 27, 2011 @ 5:25 pm | Written by Gene Quinn | 74 comments

On Wednesday, March 30, 2011, the House of Representatives Subcommittee on Intellectual Property, Competition and the Internet will hold a hearing on H.R. ____, the “America Invents Act,” which will take place at 1:30 p.m. in the Rayburn House Office Building. Much to the disappointment of many who have been challenging patent reform, we are now closer than we have been at any time over the last 5 or 6 years to amending U.S. patent laws. The House patent reform bill is exceptionally close to the Senate bill S. 23, with only one major difference that is sure to spur great debate, but the remaining thorny issue — the change from “first to invent” to “first to file” remains intact in the House version of patent reform.

The one major difference between the Senate and House bills is that the House would like to embrace an across the board prior user right defense, which is not in the Senate bill.  That is something to keep an eye out for and which I will write about in the near future.  But those advocating that the U.S. continue to keep first to invent went down to an overwhelming defeat in the Senate — 87 to 13 on the Feinstein Amendment.  They are, nevertheless, expected to come back and fight hard to undue the first to file provisions





Intellectual Property Insurance: What Attorneys Need to Know

Posted: Sunday, Mar 27, 2011 @ 7:05 am | Written by Maureen Veterano | 7 comments

Intellectual Property (IP) attorneys are held to very high standards as experts in their respective disciplines. As trusted advisers, IP attorneys have a responsibility to provide their clients with the best representation possible. The reality is that most attorneys are simply unaware that they may not be representing their clients to the best of their ability. Sure, they may be able to prosecute a patent like a champ, or write an ironclad freedom to operate opinion; but, they are not wholly serving their client’s needs by ensuring they have the means necessary to financially protect their IP should it become involved in litigation.  Fortunately, there is a product available to serve the IP attorney and their client in the event of IP litigation, Intellectual Property Insurance. IP insurance can ensure that the money is there to pay legal fees to fight to the end on the merits of the case.  IP insurance can make the difference in the outcome of the case.





Close but Not Identical, House Unveils Patent Reform Bill

Posted: Friday, Mar 25, 2011 @ 1:20 pm | Written by Gene Quinn | 5 comments

Speaker Boehner (L) swears in Congressman Smith (R), House Judiciary Chair, a key player in patent reform.

Late in the afternoon on Thursday, March 24, 2011, the purported patent reform bill from the House of Representatives began circulating.  The House patent reform bill is largely identical to the Senate version – S. 23.  There are some differences, one rather major difference, but the Senate first to file provisions remain intact.  The House bill would still grant the Patent Office the right to use all of the funds collected, as did S. 23.  The House bill also would grant the United States Patent and Trademark Office fee setting authority, as did S. 23, but then curiously goes on to set the fees that the USPTO charges.  It seems unclear why on one hand you would set the fees and in another section of the bill say that the USPTO can vary any fees defined.

Aside from the minor differences in language that are largely differences without a distinction, the one big thing that the House bill would do is extend the prior user rights defense under 35 U.S.C. 273 to patent infringement to all patents and not just business method patents.  Look for a big fight on that one.  The other differences of consequence seem to be that the House of Representatives really likes the thought of adding language authorizing automatic stays of pending litigation, which the Senate does not include.  Additionally, the House bill does not adopt the Senate’s language altering the residency requirement for Federal Circuit Judges.





Google Patents the Google Doodle

Posted: Friday, Mar 25, 2011 @ 10:05 am | Written by Gene Quinn | 10 comments

A colorized portion of Fig. 5 from the patent, showing the Founders celebrating the 4th of July in 2000.

Earlier this week Google received U.S. Patent No. 7,912,915, titled “Systems and methods for enticing users to access a web site.” The patent covers what is known as a “Google Doodle,” which is a decorative changes made to the Google logo to celebrate holidays, anniversaries, and the lives of famous artists and scientists. If you click on the Google Doodle on the Google website you are taken to Google search results related to the event being celebrated.

Having fun with the corporate logo by redesigning to celebrate an occasion was largely unheard of, but since the first Google Doodle launched in 1998 it has become a part of the branding of Google, with many looking forward to the next release of a new Google Doodle.  The patent application, which issued as a patent on March 22, 2011, was originally filed back in 2001.  Due to Patent Office delay Google was awarded a whopping 2,618 days of patent term extension.





Amici Support i4i at Supreme Court in Microsoft Patent Case

Posted: Thursday, Mar 24, 2011 @ 3:59 pm | Written by Gene Quinn | 4 comments

UPDATED: 6:35pm

Last week the amicus briefs were due in support of i4i in their dispute with Microsoft, which is now at the United States Supreme Court. In what can only be characterized as a huge development, the United States has decided to participate openly on behalf of i4i and has argued that the presumption of validity must remain the same as it exists now. There were a number of interesting amici filings, portions of which appear below to create something of a readers-digest version of the amici in support of i4i.  The five that I highlight here are the U.S. government brief (which is excellent), the venture capital brief and BIO brief (both which eloquently discuss the negative impact there would be on investment if Microsoft’s position is adopted), the brief filed by Dr. Triantafyllos Tafas (of claims and continuations rule fame) and the brief of Ron Katznelson (making an economic argument based on asymmetry of risks).

What becomes clear in reading these briefs (and the excerpts below) is that despite what you might have heard to the contrary the Supreme Court has already previously addressed this issue and has done so in support of a standard appreciably higher than the mere preponderance supported by Microsoft. The argument of those in support of Microsoft has been that at least some Circuit Courts of Appeal had a lower presumption of validity prior to when the Federal Circuit announced the clear and convincing standard of proof and thereby settled patent law. While that may be true it seems abundantly clear that law setting a preponderance standard was directly in conflict with the clear and unambiguous Supreme Court precedent directly on point. In fact, there is even Supreme Court precedent directly on point saying that more than a mere preponderance is necessary even when the prior art has not been previously considered. So perhaps i4i and the amici, including the U.S. government by and through the Solicitor General and the USPTO General Counsel Bernie Knight can convince the Supreme Court not to overrule its own prior decisions and keep an appropriately high standard.





Federal Circuit Orders Transfers Verizon out of Eastern Texas

Posted: Wednesday, Mar 23, 2011 @ 3:25 pm | Written by Gene Quinn | Comments Off

Earlier today the United States Court of Appeals for the Federal Circuit granted the petition for writ of mandamus filed by Verizon, AT&T and Qwest Communications. See In re Verizon. The dispute arose initially when Red River Fiber Optic Corporation filed a patent infringement lawsuit asserting that the defendants’ end-to-end fiber optic transmission systems infringe U.S. Patent No. 5,555,478, entitled “Fiber optic information transmission system.” According to Red River it is “a Texas corporation that exists to improve the state of technology by licensing…”

Red River, a company incorporated in Texas, brought the lawsuit in the Eastern District of Texas, which is a good strategy for plaintiffs since they rarely, if ever, transfer cases, push for cases to settle or resolve them in a timely manner prior to trial. The trouble for Red River, among many other things, was the lack of a coherent geographical identity. At first they explained that their principle place of business was in Oklahoma, but had recently been recently relocated to Marshall, Texas, in what seems an obvious attempt to create the Eastern District as a proper venue for the litigation. However, in the papers they filed at the Federal Circuit they explained: “If this Court concludes that Red River’s Marshall-based location and documents are not entitled to any weight, it should also conclude that Red River, for transfer purposes, is located in Oklahoma.” I can only imagine what the judges must have thought, but is sure seems to me as if Red River and its attorneys were too cute by at least half.





Good, Bad & Ugly: Truth About Provisional Patent Applications

Posted: Tuesday, Mar 22, 2011 @ 9:24 pm | Written by Gene Quinn | 23 comments

As patent reform moves forward with the first to file provisions still intact we can expect to hear from many corners that the thing that inventors and businesses need to do is file provisional patent applications.  I am a big fan of provisional patent applications, and they can be a very useful tool, but only when they are done right.  When a provisional patent application is done poorly you not only don’t get any benefit, the filing potentially demonstrates that as of that moment you were not in possession of an invention.  Poorly done provisional patent applications are almost certainly useless for their intended purpose, but can be used against the inventor later as a weapon to demonstrate there was no invention, or at least that the invention has not ripened past the idea stage at the critical moment the invention was memorialized at the filing date.  Therefore, it is critically important to understand what is required in a provisional patent application and not to fall prey to those who knowingly or unknowingly prey on unsophisticated inventors.