How the ‘Davids’ of the World Can Effectively Manage Their Companies’ Intellectual Property

By Philip Goldman
March 14, 2020

“Other than in the marketplace itself, the IP arena seems to be the only place, and certainly the only area of law, that is designed and intended for the Davids and Goliaths to do battle directly.”

Davids and Goliaths

I have often thought of the patent process as being like the car wash near my house – where you pull up to the entrance, to the point where an attendant shouts “neutral!”, and your car is then magically pulled through a defined series of stations until it comes out clean at the other end. The key difference being – the car wash takes five minutes, costs six bucks, and requires no effort. Not so with patents.

In a way, the patent system can be seen as a far more rigorous 20-year car wash – beginning from the moment you pull into the patent office by filing your first application, thereby obtaining that all important Filing Date. You are then led along an arduous path of decisions, deadlines, and stages – all with corresponding costs. No matter when and where you might actually obtain a patent along that path, assuming you do at all, you are out the door (i.e., those patents will expire) generally 20 years to the day after you first heard “neutral!”.

Those stages typically begin with the actual filing of a provisional or non-provisional application, often leading a year later to an international application, then 30 or so months later to whatever “national stage” filings you might make around the world, eventually to examination of each filed application, and hopefully to allowance (assuming you persist), together with the inevitable periodic fees (maintenance or annuities) incurred along the way, all around the world. Each of which tend to require significant effort and benefit from coordination among the inventor, attorney, management and others. And, typically, with severe risks of failing to meet deadlines that might apply.

Davids and Goliaths

While we’re into analogies, I have also often thought of individuals, corporations, and institutions that are involved in IP as falling somewhere along the spectrum between the Davids and Goliaths. Regardless of where they might find themselves, they should all realize that the system is designed for them to potentially go toe-to-toe with each other, on the basis of their respective IP and/or commercial activities. In fact, other than in the marketplace itself, the IP arena seems to be the only other place, and certainly the only area of law, that is designed and intended for the Davids and Goliaths to do battle directly.

As you might expect, in this scenario, the Goliaths tend to be those corporations and institutions (i.e., hardly ever individuals) that tend to file many applications and issue many patents. In turn, they generally have in-house teams of people and well-designed systems for handling the various stages of these processes. These teams can often include in-house IP attorneys, paralegals, administrative assistants, and docket clerks together with computerized systems and integrated databases. The Goliaths also often have pockets that are deep enough to not only engage and train these people, but to also take whatever actions they may find necessary along the way, whether in the patent office or courts or marketplace – including to persist well beyond points where the Davids may waver. That ability should not be taken lightly, considering that even a cookie-cutter lawsuit in the IP world these days can easily cost each side upwards of several million dollars. Regardless of what the relative merits, or potential benefits or risks, may be, that’s a lot of money.

The Davids, by contrast, most likely do not have similar resources in terms of in-house people or systems, and even if they have the financial resources, are typically less familiar with the processes and not as eager to use them. In this scenario, the Davids are those individuals, and generally smaller or less IP-active companies or institutions that tend to file fewer applications, and in turn, quite often have only a single employee, if that, who is designated to manage the entire process, often by serving as the gatekeeper working with outside counsel. And that person generally has no particular training or experience for doing so, if only because there are no particular qualifications that define such a person, and resources that are geared toward people in that role do not seem to exist, or if they do, are difficult to find.

Instead, the best they can do is to arm themselves with the most accurate slingshot they can find, and the company can afford, hope that they don’t encounter a Goliath (or for that matter, another David), and if they do, hope that they then have good aim, and a bit of luck. At most, and as their saving grace, the in-house IP manager has access to the resources (e.g., advice and docketing system) of their outside IP counsel – relying largely on that as their slingshot into the IP world.

Infrastructure and Culture

But it doesn’t end there. The differences between the Davids and Goliaths of the IP world apply not only to whatever progress or interactions may occur in the car wash itself, but they also tend to apply to every aspect of the corporate or institutional infrastructure and culture in which their IP exists. Most notably, this includes the entire period leading up to the car wash, beginning with employment agreements and including whatever policies and procedures they may have (if any) relating to such things as assignment and ownership, record-keeping, spotting inventions, and transactional matters such as license, collaboration, and non-disclosure agreements.

It also includes the periods both during and beyond the car wash, when their infrastructure and culture can impact such things as their ability to continually monitor their competitors’ activity (as by current awareness searches), with regard to their competitors’ IP filings and their potential infringement. In short, having an effective IP infrastructure and culture has the potential to make or break the Davids’ success – in the IP arena and in the marketplace – every bit as much as their success in the car wash itself.

Yet, it is often unlikely that the Davids of the world will be aware of this bigger picture, or if they are, that they will be able to identify, afford, or cost-effectively find, engage, and coordinate the outside resources that might be able to address them.  Especially when those outside resources are themselves likely to cover a similar and broad spectrum, in terms of their own resources and abilities – particularly with respect to anything that occurs beyond the walls of the car wash itself.

Long Felt Need

We might close by borrowing from the patent jargon that often provides a lead in to the “Summary of the Invention” section of an application, which is generally along the lines of “what is clearly needed here.” In this case, what is clearly needed are the resources by which the Davids of the world can more evenly compete with other Davids and with the Goliaths in the IP arena. And as with patents themselves, the path toward finding these resources can, at times, begin with simply recognizing the fact that a “long felt need” does indeed exist.

And by taking some comfort in the fact that David did indeed defeat Goliath, because he had both the resources and the desire to do so.

Image Source: David and Goliath
James Tissot.
Copyrighted 1904. 

The Author

Philip Goldman

Philip Goldman is a recently retired IP practitioner who remains active in pro bono IP matters, and occasional consulting or of counsel roles, primarily in transactional and tech transfer matters, through his Segue IP LLC. His initial hopes of attending veterinary school in Minnesota were repeatedly dashed, given his non-resident status. Armed with several years in undergrad and graduate school, and at the research bench, while dabbling in improv, he eventually turned to law school, with the sole focus of someday getting out and suing the vet school. Instead, 3M’s IP department found him during his first semester of evening law school, where he then spent the first third of his career learning the many facets of 3M's sophisticated IP practice, followed by the next two-thirds of his career in private practice, where he worked to apply the lessons he had learned to the realities of the outside world.

For more information or to contact Phil, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 25 Comments comments. Join the discussion.

  1. angry dude March 14, 2020 3:24 pm

    “David did indeed defeat Goliath, because he had both the resources and the desire to do so.”

    Dude,

    David did not have resources to fight Goliath

    All he had was God’s will…

    This country is going to hell because it does not have God’s blessing anymore

    “In God We Trust” … not anymore

  2. Pro Say March 14, 2020 7:06 pm

    As long as Goliath has Mayo in one hand, Alice in the other, and the PTAB in his scabbard . . . even David doesn’t stand a chance.

  3. anonymous March 14, 2020 8:07 pm

    SCOTUS: “David, you have a slingshot and a rock to compete fairly with Goliath. But our friend Alice says the idea of throwing a projectile is an abstract idea that is well known, routine, and conventional, so we’re taking your slingshot from you. Second, even though you intended to throw a rock to have an actual impact on Goliath, albeit a de minimis one, eBay says you never really had a rock unless we decide to give you a rock, so we’re taking that rock away from you, too.

    Now, David, go compete fairly with Goliath. Go forth, find another slingshot if you can, then come ask us for a rock. Goliath, proceed as you were.”

  4. Night Writer March 15, 2020 6:05 am

    Reality: KSR means that a fact finder can invalidate any claim under 103. Alice means that a fact finder can invalidate any claim under 101.

    The battle is always to try to get the fact finder think there is some merit in your claims. You have to think of yourself going before a king or queen. There is no law as the law has been made purposely flexible to accommodate any feeling on the part of the fact finder.

  5. Greg J Owoc March 15, 2020 8:31 am

    Angry Dude is right in that David had God’s’ will. He had more, though– David had well-honed skills, an unstoppable.faith that what is righteous would prevail, and most importantly, an indomitable courage— all “energized” by an Omnipotent God Who smiled on him to defeat the proud giant. One more thing:: David wasn’t presumptuous– He took five stones, as Goliath had four brothers! In other words, he was prepared for potentially more IPRs.

  6. MaxDrei March 15, 2020 9:44 am

    NW at #4 writes that it was ever so. You need a good story to lay before the finder of fact, why it is right and proper to grant, maintain or uphold your exclusive right to displace others out of the quiet enjoyment of their business activity, to restrain their trade, to enjoin them from making using or selling their product in competition with yours. I agree with him.

    Now, NW, tell us how important it is, and was ever, to tell in your patent specification a persuasive story of technological problem addressed, and solved in a non-routine way, clever enough to justify the restraint of trade. Tell us that such drafting is the first step in patent litigation, and ever was. Tell us what a false economy it is, to entrust your drafting to a Johnny-come-lately, non-specialist, inexperienced and cost-paring drafting factory.

  7. Concerned March 15, 2020 10:47 am

    Greg @5:

    Well stated. It has been my belief that God put me on Earth for the exact purpose of what my patent application is trying to accomplish.

    People, who know my personal circumstances, suggest my life’s story and journey could be the makings of a movie. My story did make it into someone’s book.

    My journey started by being hired for a job I was not even looking to obtain. I received a cold call on a Monday night, I was driven to the interview the next morning and started working the next day, 36 hours after the phone call in a government job during the middle of a pay period! Can the Governor even orchestrate the same for a classified civil service position?

    It is my belief that I will overcome the incredible odds of the patent environment, with the odds stacked against the inventor. It appears to be God’s will, my footsteps are ordered.

    It was about 3 years after I hired my patent attorney that God’s ironic humor hit me. The last name of my patent attorney? Miracle!

    There is a higher authority in control other than SCOTUS, PTAB, etc.

    My company is going full speed ahead, with or without the pending patent, to help people with disabilities and their caregivers to include the States. God will work out the details.

  8. Anon March 15, 2020 11:28 am

    Sigh.

    …a persuasive story of technological problem addressed

    Yet again (this is beyond ‘old’) the US Sovereign has chosen differently than a ‘technological’ basis.

  9. Greg J Owoc March 15, 2020 1:49 pm

    To: Concerned
    Inspirational and ennobling is your story. Your best blessings are ahead. Do all that is in your power to do, then give the rest to Him. He will open doors!

  10. Mr.259 March 15, 2020 4:25 pm

    Goliath was over matched by David, slow, nearly blind and laden with armor. David was an agile shepherd who defended the flock with his sling. He was an expert hunter. In this battle Goliath had no chance. David had the blessing of his King Saul and God. This is not the individual inventors story.

    We, the individual inventor have a sling (the patent-we designed and toiled over) and the rock (our attorney, may the be contingency fee), but not the blessings of our king (the government). When we walk down into the valley, Goliath (FAANG and others) can see, is well armed, has government laden armor.

    Like David we can stay nimble, make sure our sling is in good order and have plenty of rocks. But Goliath has the blessing of the King. We have the sling.

  11. Benny March 15, 2020 4:49 pm

    None of the comments here address the substance of the article – which is sensible in advocating an IP policy for all players. But as everyone references Goliath, I suggest you pick up your bible (you all filched a copy of Gideons from a hotel room, right?) and re-read the story.
    Goliath is not recorded as ever hurting anyone. He only teased.

  12. Anon March 15, 2020 8:47 pm

    Goliath is not recorded as ever hurting anyone. He only teased.

    You are aware that Goliath was a Philistine warrior, right?

    It’s posts like these with needless errors on your part that ever more emphasize your anti-patent pro-Efficient Infringer bias, Benny.

  13. angry dude March 15, 2020 8:53 pm

    This whole David-Goliath analogy is wrong for so many of us who filed US patent applications long before Ebay and obtained patents shortly before or right after Ebay.

    Please go find another story in your bible – the story has to be like this:

    A king promises david all kinds of protections (in writing) if david voluntarily gives up all of his firearms, and after david is left with nothing but a sling, unleashes goliath on poor little dude

    My story is: fool me once – shame on you, fool me twice – shame on me
    Or even shorter: “Never ever trust your government !”

  14. Benny March 16, 2020 1:04 am

    Anon,
    The only bias I can see here is an anti-Benny bias on your part. Nothing in my comment suggests bias against patents or sympathy with infringers – it is just your imagination on overdrive. As to Goliath – in my younger years I too wore a uniform and carried a gun, but I never hurt anyone. Re-read the biblical story and the interpretations – the Philistines used Goliath to taunt the Israelites and scare them, but he didn’t fight them.

  15. Concerned March 16, 2020 5:08 am

    Benny:

    It was you that stated I should not get my patent and in the same sentence admitted your opinion was probably outside the patent law.

    I assume you are an attorney with an ethical oath to uphold the law. Accordingly, I conclude there is anti-patent bias to some degree if you are willing to make statements inconsistent with law.

  16. Anon March 16, 2020 6:07 am

    Concerned,

    I am pretty sure that Benny has admitted that he is not an attorney.

    If I recall correctly, Benny has a technical role for a tech company based in Israel.

    Whether or not Benny IS a mouthpiece directly for Efficient Infringers versus whether or not Benny’s positions are nigh constantly in line with those of the Efficient Infringers has been a game already played out in past comments on this blog.

    Benny, you attempt TOO much with wanting to read only the literal words of how Goliath was a challenge point for the Philistine army and now you want to label what is only common sense to be some sort of “anti-Benny bias” is ludicrous.

    Would you really think that had the Israelites produced a normal warrior as a champion to the Philistine goading, that the Philistines would turn around and say “shucks, we were only teasing”…?

    What you see is not “anti-Benny bias.”
    What you see is anti-stu pidity ‘bias.’

  17. Anon March 16, 2020 6:27 am

    As to “he didn’t fight them,” are you insinuating that Goliath perished due to some treachery on David’s part? … that somehow it was not a ‘fight’ wherein David’s stone found its mark, and Goliath fell on his face, whereupon David removed Goliath’s head?

    Your penchant for desiring a LACK of critical reasoning is on fine display.

  18. Benny March 16, 2020 7:36 am

    Anon, according to dome scholars, the story of Goliath is not literal truth but twisted to emphasize Saul’s military weakness. Of you read the next chapter, you will find a counter claim stating that a warrior called Elhanan slew Goliath. Bit enough of Sunday school.
    First, thanks for filling in the folk on my background, albeit somewhat inaccuratly. . You got the bit about not being an attorney right. I m not anti-patent per se – I am listed inventor on several US and EU patents. I am ired by the incompetence of the USPTO and their continuous stream of poorly examined, unworthy patents which do nothing to foster innovation – being either obvious or non-novel – but just get in the way of everyone else.

  19. angry dude March 16, 2020 9:58 am

    Benny IS “efficient infringer” himself albeit a tiny one (compared to FAANG entities)

    Foreign infringer to add, so he doesn’t have any say in US patent debate regardless of whether his company holds US patents or not

  20. Anon March 16, 2020 10:03 am

    Benny,

    Your thanking me (and addition to) the story of Goliath absolutely misses the point that your characterization of “just teasing” is ludicrous.

    That you don’t ‘get’ this point — AND your continued portrayal of ‘not being anti-patent, just being against ‘bad’ patents’ is EXACTLY the mantra of Efficient Infringers. Of course, the nature of ‘bad patent’ to the Efficient Infringers is ANY patent other than one’s own patents.

    As much as you are indiscriminate in your understanding of the Philistine Warrior Goliath (badly missing the point), your OVERALL commentary also badly misses the points at hand on a near continuous basis.

    THIS is why you get ‘tagged’ as being nothing more than an Efficient Infringer mouthpiece (whether or not you ARE such a mouthpiece, or merely repeat their rhetoric).

  21. Night Writer March 17, 2020 7:06 am

    @20 anon and Benny

    Benny your opinion could be valuable, but obviously push things too far. Try to stick to what you know about technology and management. You don’t understand law. The more you stick to facts that you know, the more interesting your posts are. The more you talk about the law and present fallacious arguments, the less interesting your posts are.

    You could be a valuable voice, if you stuck to facts that you know.

  22. Anon March 17, 2020 12:23 pm

    Night Writer @ 21,

    I have often stated what you advise here as ‘having a foot in’ a certain world.

    This is also very true on many of the Slashdot/TechDirt types of sites. You have an (otherwise) intelligent person who has no real clue as to how law works pontificating on how they feel law should work (and those feelings are very often merely the Lemming Kool-Aid that they have imbibed).

    The opposite of that is those of us who HAVE experience in both worlds. Many registered patents like me have real world experience in both worlds — we have a foot in each of the worlds of fact and law.

    This is also reflected in past comments of mine in regards to the fact that anyone can have an opinion on anything, but having an informed opinion is a huge difference. Benny simply refuses to be informed on matters that do not hew to his pre-ordained belief system. As such, he continues to post in ways that people single him out as being merely an Efficient Infringer mouthpiece. I like less that he is an actual mouthpiece (that is, someone who is actually paid to proselytize a certain position), and is more merely of the Lemming type with a set of feelings and an ardent desire NOT to have an informed opinion.

  23. angry dude March 17, 2020 1:53 pm

    Anon @22

    Dude,

    May I surmise that you do not have a foot in US patent litigation as it is nowadays ?
    Otherwise you would be considerably more angry (unless you represented big Efficient infringers…)

  24. Mr.259 March 17, 2020 3:04 pm

    angry dude @23

    We are all angry (individual inventors and small business entities) with how the patent landscape has steadily moved against us, at least since Bilski vs Kappos. How, in your words, did the court system get so rigged? Answer is easy, the inventor was winning an occasional patent litigation and actually collecting settlements. That could not allow to stand. And, it didn’t.

    Just being angry on a blog doesn’t get anything resolved or changed. FAANG, their lobbyists, and attorneys are just laughing and all the complaining here. As you know, anything we say or our opinions can be used against us in patent litigation.

    The question is how can change happen? There may be answers or methods but those could never be discussed here. I’m trying to stay in until all my options are exhausted. Remember, as I’ve mentioned prior, some of my earliest patents priority dates go back to 1998.

    So, stay angry.

  25. Night Writer March 18, 2020 8:46 am

    @24 Mr. 259

    That is very well said. And I think most people don’t get that this is driven by K Street and money paying people to weaken the patent system. I worked at a law firm in DC where some of the other attorneys worked for the big corporations trying to weaken the patent system.

    And there is lots of evidence of the lobbying, etc. For example, there was an article in the NY Times about Google paying “professors” to write journal articles with Google abstracts and getting them published in law “journal” publications. There was an article about Google and other SV companies approving Obama’s pick for the USPTO, etc.

    You can bet that the money influence goes much further and deeper. I’d bet that the universities are hiring anti-patent (and IP) “professors” for patent law based on getting millions from SV.

    Etc. Just look at the largest donors to Congress people on the committees that decide these issues.

    Etc. It is not conspiracies theories. There are plenty of verifiable facts that show the influence touches every part of the patent and IP world.

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