On October 10, 1999, IPWatchdog.com first went live on the Internet. It has been an honor and privilege to get to know so many wonderful people in our industry over the last 15 years, to talk to many industry leaders on the record, and to in some small way continue to push the debate forward. Thanks to our readers and contributors we have been recognized as as one of the top 100 legal blogs by the American Bar Association for 5 years in a row. For 3 of the last 4 years (2010, 2012, 2013) we were recognized as the top intellectual property law blog according to the ABA. In January 2014 we were also honored to be inducted into the ABA Blawg Hall of Fame. CLICK HERE to read more.
Posted: Monday, Sep 29, 2014 @ 9:00 am | Written by Gene Quinn | 28 comments
One of the frequent claims made by those in the anti-software patent community relates to Twitter and the clearly erroneous belief that patents are not important to the company. Indeed, recently when I wrote Fairy Tales and Other Irrational Beliefs About Patents the claim arose in the comments suggesting that Twitter is proof that patents are unnecessary to succeed. Quite to the contrary. If you actually concern yourself with facts, Twitter is a perfect case study to demonstrate just how important patents, particularly software patents, are to a start-up company that has aspirations of going public.
Doubt me? Perhaps you will believe Twitter themselves. In repeated filings with the Securities and Exchange Commission since October 2013, Twitter has explained over and over again just how important their patented technology is to the company. They have also repeatedly explained that unlike other companies and competitors, even with nearly 1,000 patents, their own patent portfolio is extremely small by comparison. This poses real concerns for Twitter, which is why they warn the SEC and investors of the ramifications of such a small patent portfolio with every new filing.
Let’s begin our tale about Twitter at the start. Twitter, founded on March 21, 2006, was initially believed to be of the opinion that patents didn’t matter. Behind the scenes and unknown to many, Twitter was actively filing patents very early on in the development of the company. This is hardly shocking news given that Twitter’s initial round of funding dated back to 2007 and the near universal reality that high-tech investors not only love patents, but they demand patents. Investors love patents because if the company does not succeed at least some valuable patent assets will remain, which can be sold to recoup losses.
Posted: Monday, Sep 29, 2014 @ 8:00 am | Written by Gene Quinn | 1 Comment »
On Friday, October 3, 2014, I will be in Toledo, Ohio at the University of Toledo College of Law. I taught years ago as a Visiting Professor at the College of Law, have many friends still at the University, and my son is currently studying to become an electrical engineer at the University of Toledo College of Engineering, so I expect over the next several years I will find a variety of excuses to visit Toledo.
My excuse this time is to attend a program titled Doing Business in China: A Legal and Commercial Review on Friday, October 3 from 8:30 a.m. to 5:15 p.m. at the University of Toledo College of Law in the McQuade Law Auditorium at 1825 W. Rocket Drive, Toledo, Ohio. Registration will begin at 8:00 a.m. The cost to attend is $35.00, which includes a lunch. Vegetarian meals are available upon request.
The University of Toledo College of Law, Regional Growth Partnership, and the Confucius Institute at The University of Toledo are the lead sponsors for Doing Business in China, which is the first part of two programs. During 2014 the Confucius Institute will spearheaded this program to educate local business people and attorneys on the realities of doing business in China by bringing together a distinguished panel of academics, attorneys in private, public, and corporate in-house practice as well as senior business people to discussed the realties, the myths, and the risks of doing business in China. Next year, in 2015, the focus will shift and will be on the concerns of Chinese attorneys, business people, and their advisors relating to doing business or investing in the United States.
Posted: Sunday, Sep 28, 2014 @ 8:00 am | Written by Joseph Allen | 5 comments
Editorial Note: This month’s column from Joe Allen comes from his plenary address to the Eastern regional meeting of the Association of University Technology Managers, which took place in Baltimore, Maryland, on September 18, 2014. CLICK HERE to view his PowerPoint presentation, which includes facts and figures that support the positions taken in this article.
They say when speaking that you should repeat your message at least three times. Here’s the first: Bayh-Dole has succeeded beyond anyone’s wildest imagination. It was not created to benefit universities but the American taxpayer. You are the stewards of a public trust and have an obligation to defend and protect the law in the same way as the Founders of AUTM protected it for you.
Research universities are now recognized drivers of our economy and your discoveries improve lives around the world, but that wasn’t always the case. The reason is the Bayh-Dole Act which gives certainty and predictability to the ownership and management of publicly funded inventions so they can move from the lab into the marketplace.
Last week I was speaking in Brazil which adopted a technology transfer law to spur university-industry partnerships. Unlike Bayh-Dole theirs is full of uncertainty which is undermining its impact. I explained that having clearly stated rules is an essential ingredient for success because companies are undertaking a tremendous risk when turning university technologies into useful products. The time and expense of development is borne by the business—not the government or the university. Companies cannot justify this effort when the bureaucracy inserts itself between a university and its industry partner. That was the situation in the US before enactment of Bayh-Dole and it caused the benefits from billions of dollars of taxpayer supported research to go right down the drain.
Posted: Saturday, Sep 27, 2014 @ 8:00 am | Written by Gene Quinn | No Comments »
Should inventors be going solo and trying to protect their own inventions? No, at least not if you can afford to hire a patent attorney. Going solo through this patent maze would be similar to trying to remove your own appendix. If you can get to a hospital you should not be removing your own appendix! It is that simple. But there will always be inventors who will proceed on their own. Sometimes this is due to hubris, but frequently it is out of necessity.
There is nothing wrong with representing yourself if the choice is between DIY or not moving forward, but for those who will go it alone it is imperative that they become as familiar as possible with the rules, regulations and best practices. It is for these do-it-yourselfers who proceed out of necessity, but with their eyes open, that I write this and other similar articles.
One very common mistake inventors will make is that they will want to only describe their invention in the most general terms possible. Why would you want to be specific, they ask, because if you are too specific it will be easy for people to get around your patent. It is true that an unnecessarily specific discussion of the invention in a patent application can make it easy for competitors to copy your invention without infringing your patent, but if you file an application that only generally, or vaguely, describes the invention that is even worse.
Posted: Friday, Sep 26, 2014 @ 9:00 am | Written by Gene Quinn | 61 comments
We are at a point in time where the overwhelming sentiment is against the patent system. Rather than celebrating innovators the public, and our leaders, vilify anyone who has the audacity to seek patent protection. The simple reality is that without a strong patent system investment in innovation will cease. This truth should be self evident to anyone with half a brain, but sadly it is not. There are many truly ignorant individuals who actually believe that investment in research and development will continue even if the day an innovation reaches the market it can be copied without recourse by competitors. What a fairy tale!
As Dr. Kirstina Lybecker has explained: “Incentives are essential to innovation due to the expense of research and development activities, and the public-goods nature of the resulting knowledge.” Indeed, there is no business person in the world who would ever invest the hundreds of millions or billions of dollars necessary to bring ground-breaking innovations to market without the expectation of the competitive advantage provided by a strong patent. In the real world investors seek a reasonable return on investment given the risk, which is quite substantial in the high-tech, innovative world. To ignore this reality one must be firmly planted in fantasy and not the real world.
Posted: Friday, Sep 26, 2014 @ 8:00 am | Written by Efrat Kasznik | 26 comments
The Supreme Court’s Alice decision has introduced a dimension of uncertainty associated with the validity of many of the software patents held by operating companies today. There seems to be a consensus among some of the leading academic and judiciary experts supporting that conclusion, as seen in recent comments made by Stanford Law School’s Prof. Mark Lemley, as well as in recent comments by former Federal Circuit Chief Judge Michel. From a valuation and financial reporting perspective, there needs to be a serious examination of the post-Alice landscape implications on the value of patents as corporate assets. The results of such examination may lead to further action – which could range anywhere from additional disclosure requirements by regulators, all the way to actual corporate asset write-offs. This article highlights some of the key issues that need to be addressed by companies and regulators.
Posted: Thursday, Sep 25, 2014 @ 3:35 pm | Written by U.S.P.T.O. | No Comments »
Korean Intellectual Property Office (KIPO) Commissioner Young-min Kim (left) and U.S. Patent and Trademark Office (USPTO) Deputy Director Michelle K. Lee (right) today signed a Memorandum of Understanding that brings KIPO fully into the Cooperative Patent Classification system developed by the USPTO and the European Patent Office (EPO).
WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) today announced a major expansion of cooperation in classification activities between the USPTO and KIPO. The agreement,signed by the heads of the two offices during a bilateral meeting in Geneva, Switzerland, is designed to improve the patent granting process through streamlined access to patent documentation. Through this cooperation, KIPO will greatly expand the number of documents included in the Cooperative Patent Classification (CPC) system by fully classifying its patent applications and utility models.
“Today’s historic announcement further illustrates the usefulness of the Cooperative Patent Classification system and demonstrates the excellent bilateral relationship and spirit of cooperation between the USPTO and KIPO,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “We hope other offices, particularly IP5 offices, will follow KIPO’s lead in increasing global intellectual property protection for innovators around the world.”
Posted: Thursday, Sep 25, 2014 @ 9:00 am | Written by Gene Quinn | 1 Comment »
Yesterday the Partnership for American Innovation (PAI), which is comprised of Apple, DuPont, Ford, GE, IBM, Microsoft and Pfizer, submitted comments responsive to a request for public information published in the Federal Register back on July 29, 2014, titled Strategy for American Innovation. Some may recall that in February 2011, President Obama released a Strategy for American Innovation, which described the importance of innovation as a driver of U.S. economic growth and prosperity, and the critical role the government plays in supporting the innovation ecosystem. The Office of Science Technology Policy and the National Economic Council are now tasked with updating the document to create a revised Strategy for American Innovation.
One can hope that this group of venerable American innovators will be able to get through to decision makers who will be responsible for charting the new innovation and intellectual property strategy. Notably missing from the PAI, however, is Google, who will certainly have different views.
Google is known to be one of the primary advocates of watering down, if not outright destroying, the U.S. patent system. This is interesting because Google is a top 10 patenting company according to data from the United States Patent and Trademark Office for 2013. They have also spend tens of billions of dollars acquiring patent portfolios that now due to their lobbying efforts are practically worthless. Regardless of Google’s schizophrenic approach to patents, the arm of Google that seems to loathe patents and the U.S. patent system has particular influence in Washington, DC. Both current and former Google executives are known to have the ear of the White House, which is largely to blame for the substantial anti-patent sentiment flowing from the White House. Unfortunately, all of this suggests that whatever the new strategy for innovation will be it will be one that incorporates significant anti-patent positions support by Google.
Posted: Thursday, Sep 25, 2014 @ 8:00 am | Written by Eric Guttag | 21 comments
Chief Justice Warren Burger (L) authored Diamond v. Chakrabarty, while then Justice William Rehnquist (R) authored Diamond v. Diehr.
For those in the patent law world who may have been hiding under a rock, we have been flooded recently with lower court rulings on patent-eligibility under 35 U.S.C. § 101 after Alice Corp. v. CLS Bank International. Like a tsunami, these lower court rulings are uniformly sweeping away any patent in its wake as being directed to merely an “abstract idea” that doesn’t provide “something more.” Those quoted words are taken from Our Judicial Mount Olympus’ two-part test in Alice which is derived largely in part from the so-called “framework” of Mayo Collaborative Services v. Prometheus Laboratories, Inc. for separating patent-ineligible “claims to laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” See Ignorance Is Not Bliss: Alice Corp. v. CLS Bank International*
Briefly, the two-part Alice test says: (1) “determine whether the claims at issue are directed to one of those patent-ineligible concepts”; and (2) “search for the ‘inventive concept’ —i.e., “an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” In every court case I’ve read so far, all of those lower court rulings have dogmatically (and restrictively) applied this two-part Alice test to rule the patent claims on systems and/or methods (all involving so-called “business methods”) to be patent-ineligible under 35 U.S.C. § 101. In fact, I’ve only seen one reported PTAB decision (U.S. Bancorp. v. Solutran, Inc.) where patent claims on systems and/or methods involving these so-called “business methods” passed muster under this two-part Alice test.
Posted: Wednesday, Sep 24, 2014 @ 1:53 pm | Written by Monica Talley | 4 comments
While much attention has been focused on ICANN’s new gTLD program and the transfer of IANA function to ICANN, a new domain structure positioned outside ICANN’s purview is being developed with the possibility to significantly impact brands and businesses.
The ‘.bit’ domain, a new decentralized domain structure, has secured a small but loyal following, and could one day change the way brands operate online. .bit registrations are not associated with a name, address, or phone number, but are linked to a cryptographic identity, preserving anonymity. Unlike customary domains – such as ‘.com’ – ‘.bit’ cannot be accessed from traditional web browsers or registered using traditional currency. Instead, individuals attempting to gain access to these domains must first download specialized software that allows access to the sites using Windows browsers, and pay for the registration with a crypto currency called Namecoin.