In order to become a patent practitioner one must take and pass a federal examination administered by the United States Patent and Trademark Office. What sometimes gets missed by some individuals is that you do not need to graduate law school in order to take the patent bar examination. Anyone with a technical degree is qualified to sit for the Exam, and those without the requisite technical degree can still qualify to take the patent exam if they have enough science credits in college courses; the number of required credits ranging between 24 to 40 depending on the category B path for which you qualify. See Does My Degree Qualify Me to Take the Patent Bar?
Those who successfully pass the patent registration examination and who also successfully clear the background character and fitness check are able to represent individuals and companies who seek to obtain a patent. If you are an attorney admitted to practice when you pass you become a patent attorney, if you are not already an attorney you become a patent agent. If you are a patent agent and then subsequently become an attorney you essentially trade in your “agent’s license” and become a patent attorney. This is the path that many in law school pursue, giving them the ability to put on their resume when looking for jobs the fact that they are already a patent agent. Still others in the science field who have no plans to go to law school become patent agents and can enjoy a good career working for a law firm or on their own helping inventors.
The ink is hardly dry on the Supreme Court decision in Stanford v. Roche and already those who oppose patent reform are concocting one of the most ridiculous arguments I have ever seen to oppose first to file provisions. There are some, including at least one Member of Congress, that have started saying that the Supreme Court’s decision in Stanford v. Roche makes it clear that the first to file provisions of patent reform are unconstitutional. Just sit right back and allow me to explain to you exactly why that is perhaps the most specious argument I have ever heard.
Let me begin with attempting to explain how presumably intelligent people erroneously conclude that the Supreme Court earlier today held first to file unconstitutional. The argument goes like this: Chief Justice Roberts wrote, “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.” This was repeated several times and in slightly different ways throughout the decision. So those misconstruing the case twist this beyond all reasonable logic to conclude: “patent rights have to belong to the inventor, so those who file first cannot receive the patent ahead of the person who invented first.” Oh my goodness! Is this the level of debate in Congress? No where in the decision is that said! It is no wonder our leaders have failed us so miserably.
This morning the United States Supreme Court issued its decision in Stanford v. Roche, a decision that has been much anticipated in the technology transfer world. Technology transfer is the front line for the interfacing of University research and private sector commercialization, so it is no great wonder that this case captured the attention of academia and the private sector alike. At issue in the case was whether the Bayh-Dole Act automatically vested ownership of patent rights in Universities when the underlying research was federally funded.
Chief Justice Roberts delivered the opinion in a 7-2 decision.
It is not at all an exaggeration to say that Bayh-Dole is one of the most successful pieces of domestic legislation ever enacted into law. The Bayh-Dole Act, which was enacted on December 12, 1980, was revolutionary in its outside-the-box thinking, creating an entirely new way to conceptualize the innovation to marketplace cycle. It has lead to the creation of 7,000 new businesses based on the research conducted at U.S. Universities. Prior to the enactment of Bayh-Dole there was virtually no federally funded University technology licensed to the private sector, no new businesses and virtually no revolutionary University innovations making it to the public. Bayh-Dole set out to remedy this situation, and as a direct result of the passage of Bayh-Dole countless technologies have been commercialized, including many life saving cures and treatments for a variety of diseases and afflictions. In fact, the Economist in 2002 called Bayh-Dole the most inspired and successful legislation over the previous half-century. Nevertheless, the question remained, at least until this morning, whether ownership of patent rights immediately vested in the University as the result of federal funding.
You have entered the innovation market taking your first steps. You had an idea, which matured to become definite enough to be characterized as an invention. Now what do you do? Many inventors will find a patent attorney or patent agent that they will work with, and still others will try and represent themselves. Representing yourself can be a dangerous undertaking because drafting a patent application and engaging in patent prosecution (i.e., working the patent examiner to identify patentable subject matter) can be a lot more difficult than it otherwise seems. There are many pitfalls and archaic rules to navigate. But even if you are going to choose to work with a patent attorney or patent agent you should do whatever you can to understand the tasks associated with obtaining a patent. The more informed you are as an inventor the better the resulting patent. The more you know the better the information you can provide to your patent attorney or patent agent, which only makes for a better, stronger, more detailed and broader patent once issued.
One big mistake I see inventors make frequently relates to understanding the full scope of their invention. This is not to suggest that inventors do not understand their invention, quite to the contrary. In my experience when an inventor has an invention (and not just an idea) the inventor will know what they have done in great detail. Sometimes there is a challenge to convey everything to the patent attorney or patent agent, but the inventor has that information it just needs to be liberated from the inventor and put on paper.
What’s in a name? Well likely far more than most businesses realize. Your business name is how people will identify with your goods and services, so you want to have one identity that is all your own. Simple enough really, at least in concept, but making a mistake at the selection stage will prove costly.
Back in the day, not so many years ago actually, attorneys would recommend that businesses conduct a trademark search before selecting a name. Then as the Internet became more a part of our business and personal lives you had to make sure that you could obtain an appropriate domain name to host your website. Now we are at the point where merely selecting a good name that gives you the opportunity for a good domain name is not enough. You really need to make sure that you can control not only the domain name associated with the business name you choose, but also the Twitter, Facebook and LinkedIn account names associated with your business name.
Unfortunately for small businesses and start-up companies, some patent owners are becoming far more litigious. Once upon a time small businesses might be able to fly under the radar screen even if they were infringing because the cost associated with going after such folks was prohibitive. But welcome to the brave new world of the patent troll, where certain nefarious bad-acting patent owners seek to enforce dubious patent rights against those who are engaged in a business vaguely related, but who are almost certainly not infringing. These bad actors, who seek to extract licensing payments with threatening letters or lawsuits if necessary, know that because it can be expensive to fight most will simply fold and pay what amounts to extortion. See Extortion Patent Style.
Despite the gathering storm, some businesses would prefer to pretend that patent infringement is not a problem for them and they won’t be sued. The graph below shows that since 1980 the number of patent lawsuits filed has only gone up, with a record number (3,301) being filed in 2010. Add the frequency of the “dime a dozen” threatening letters sent by those seeking to extract licensing payments to the number of lawsuits filed and you can readily see that patent infringement litigation, and the associated threats thereof, are a growth industry.
A few weeks ago, I took an afternoon Internet off-the-main-road cruise with the hope that a few unplanned detours would cure my midday highway hypnosis. The following item at Bloomberg.com caught my eye: Land Rover, NFL, Citadel: Intellectual Property.
Seeing those organizations lumped together piqued my interest: What could each have happening in the Intellectual Property domain that was significant enough to be blurb worthy?
Silly me. While the NFL and Citadel items were ho-hum (a clothing company nailed for selling unauthorized Steeler’s merchandise; Citadel Broadcasting using a copyrighted photo on its webpage), some of the other items made me feel sorry for people in the olden days (like me), who once had just had soap operas and gossip rags for entertainment.
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