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An Exclusive Interview with Ray Niro, Mr. Patent Litigation

Raymond P. Niro is patent litigator with tremendous experience and a reputation that is larger than life. To some he is a champion of independent inventors and small business community, frequent clients of his. To others he is nearly the definition of evil. It was as a consequence of a lawsuit one of his clients brought against Intel in 2001 that the term “patent troll” was coined. He has been trial counsel in literally hundreds of intellectual property cases, and since 1996, has won verdicts and settlements for his clients totaling more than $1 billion. On March 12, 2012, he went on the record for this exclusive interview.

Patent Searching 101: A Patent Search Tutorial

Once you receive manageable results you need to read the patents and see which ones are relevant. Try various search terms to make sure you are covering all possible descriptions of the invention. Along the way, as you read the patents and identify related ones keep track of the numbers and identify the US classification that relates to the type of invention you are searching. Upon identifying several US classifications that seem to relate to your invention, return to the Advanced Search Page and do a classification search. For example, again following our example, you may notice that classification 206/545 seems relevant. As it turns out, this classification relates to special receptacles or packages with an insulating feature. See US Classes by Number & Title. Therefore, it would seem that patents within this classification are potentially highly relevant. So return to the Advanced Search Page text box and enter “CCL/206/545”. This will search for all the patents classified in 206/545, which as of the time the search was conducted resulted in 144 US patents. You can also add to a classification search to narrow. For example, if you search “CCL/206/545 and SPEC/beverage”, you get down to 50 US patents.

International Patent & Trademark Filings Set New Record in 2011

Despite difficult economic conditions worldwide, international patent filings under the WIPO-administered Patent Cooperation Treaty (PCT) set a new record in 2011 with 181,900 applications – a growth of 10.7% when compared with 2010, and the fastest growth since 2005. China, Japan and the United States accounted for 82% of the total growth, and the Chinese telecommunications company ZTE Corporation was the largest filer of PCT applications in 2011. 2011 also saw the highest number of international trademark applications ever filed under WIPO’s Madrid System for the International Registration of Marks (“Madrid system”) with 42,270 applications, or a 6.5 % increase compared to 2010.

Patent Hoteling Program Succeeding as a Business Strategy

The telework program affords employees the ability to work from home from 1 to 5 days a week, and the largest of these telework programs — the Patent Hoteling Program (PHP) — had 2,600 patent examiners participating at the end of fiscal year 2011. With so many patent examiners working from home does the “brain drain” affect the learning curve of new patent examiners who have fewer people around to help and mentor. The Inspector General’s report does not address the issue of “brain drain,” but does quite clearly demonstrate that those examiners that work from home are more productive than examiners who report to work on campus at the USPTO.

What is WIPO Doing to Combat International Patent Scams?

A conversation with Matthew Bryan, who is the Director of the PCT Legal Division at the World Intellectual Property Organization (WIPO) regarding what WIPO is doing to combat patent schemes that plague the industry. As you will see, these schemes are lucrative. In one case that Bryan tells us about, in which he was an expert witness, a court in Florida “found that in the 2 years of operating, FIPTR had received over 2.5 million dollars in payments from PCT users just in the State of Florida.” With that kind of money potential it is easy to see why the scams persist.

Big Brother Sues Israeli Reality Show for Copying

This lawsuit could set a precedent in Israeli copyright laws concerning television formats and could reveal behind-the-scenes industry secrets. The Israeli Copyright Law 2007 does not provide copyright protection for an idea, but only its expression. As for TV formats, Israeli Courts have yet to regulate this issue and have not set a binding precedent in this matter.

Making it Easier to Get a Patent

Contrary to popular belief, things are getting much better in business methods. Applications filed in 1999 had prosecution times of over 10 years (lower green arrow). These and subsequent applications jammed up the system leading to excessive delays to first office actions. Applications filed in 2004, for example, had delays to first office action of 6 years (middle red arrow). Sometime around 2010, however, things started to improve. A lot more patents started issuing and the delays to first office action dropped to around 2 years (upper red arrow). That’s not to say that it’s easy to get a patent in business methods, but at least examiners and applicants are making much better progress in reaching agreement on allowable claims in a reasonable amount of time.

More Cybersquatting on the Horizon with Launch of New gTLDs

On January 12, 2012, the Internet Corporation for Assigned Names and Numbers, more commonly known simply as ICANN, began accepting applications for new gTLDs. Until March 29, 2011, entrepreneurs, businesses, governments and communities around the world can apply to introduce and operate a generic Top-Level Domain of their own choosing. Currently there are approximately two dozen gTLDs, but as the result of ICANN’s decision to expand the number of gTLDs there could be hundreds in the not too distant future.

Prior User Rights: Rewarding Those Who Don’t Contribute

Prior user rights also implicate free rider problems with respect to a subsequent patent that an inventor obtains covering the subject matter of the secret prior user. At the point of publication the prior user no longer maintains a trade secret. At the point of issuance, the patentee and the prior user relatively co-exist with each other in the market. The patentee excludes others from the market except for the prior user. The prior user then enjoys the benefits and advantages associated with the patentee excluding others from operating in the market, while being free from liability to the patentee. In this regard, the prior user enjoys the period of time operating the technology in secret in addition to 20 years of excluding others provided by the competitor.

Reviewing a Patent Application Drafted by an Inventor

With all of this in mind, like many others I tell inventors that if they are going to do it themselves they should consider getting a patent attorney to review their application before they file. Having said that, it is unrealistic to believe that a patent attorney can review what you have done in 1 hour or less. Furthermore, it is foolish to believe that an application reviewed for 1 hour or less will result in a work product that will be as good as if it were drafted by the patent attorney in the first place. If you want to do it yourself and have a qualified, experienced patent attorney review your work you should budget at least 6 to 10 hours of their time to review everything, critique what you have done and provide feedback and guidance for you to continue to build upon.

Using U.S. Copyright Law to Get Removed from Jerk.com

Jerk.com is one of those sites on the Internet that is the poster-child for everything wrong with the Internet and the anonymous communications that are so commonplace. The Internet is the refuge for cowards that wouldn’t have the guts to approach someone and say what they really feel to their face. Shrouded in secrecy provided by the Internet anonymous cowards become emboldened to say vile things and stoop to ridiculous lows — even publishing pictures of young children and asking the Internet community to vote on whether the minor is a jerk.

Women’s History Month: PTO Women’s Symposium in Shreveport

Later in the month in Shreveport, Louisiana, the USPTO will hold its 2nd Annual Women’s Entrepreneur Symposium. This event will take place from March 25 – 26, 2012, and is co-sponsored by the USPTO, U.S. Senator Mary L. Landrieu and Cedric B. Glover, mayor of the City of Shreveport. The event will take place at the Shreveport Convention Center, and the symposium has blocked rooms at the Hilton Shreveport. Our very own Social Media Diva™, Renee Quinn, will be speaking at the symposium on the topic of building relationships. The full title of Renee’s presentation is From Inventor to Entrepreneur: Developing and Leveraging Relationships to Drive Growth.

Are Some Patent Holders More Equal Than Others?

What’s troubling is that Hewlett Packard itself, the original startup headquartered in a garage, was one of the earliest and most-respected leaders of the 20th Century high-tech revolution that had its epicenter in Silicon Valley. It was William Hewlett who gave a 13-year-old Steve Jobs spare parts for a device Jobs was building — and a summer job as well. And it was Mr. Hewlett and his executive heirs who insisted that HP conscientiously patent its breakthrough innovations and fight against those that infringed those patents. HP today earns hundreds of millions of dollars annually by licensing its patent rights to others — according to IAM magazine, “at any one time, HP has about 150 licensing transactions in process.” And as the court dockets show, it certainly isn’t shy about filing suit against infringers who refuse to take a license.

A Patent Bigfoot? The Mythical First Action Allowances DO Exist!

Top 50 Law Firms with the most first action allowances according to PatentCore data. But where are these first action allowances coming from? All over the Patent Office really. They occur with plants (1661), organic compounds (1621, 1625, 1626), batteries (1725), active solid state devices (2818), electrical generators or motors (2834), optical systems and elements (2873), optics measuring and testing (2877), vehicle fenders (3612), data processing (3661), aeronautics and astronautics (3662), internal combustion engines (3748), valves (3751, 3753) and elsewhere throughout the USPTO.

Are the Smartphone Patent Wars Giving Patents a Bad Rap?

So who is the villain in all of these wars responsible for again giving patents a bad rap? Well, the villain in not the ITC, USPTO or any U.S. government agency. Nor it is any country’s protectionist trade regime, or an “irreparably broken” U.S. or global patent system. No, the real villains here may very well be a handful of companies that willingly contributed patented technologies to various SSOs, championing their adoption and encouraging their use in a host of consumer electronics, and now claim (years later) that the very producers they encouraged to implement these standards should be barred from making, using or importing their products into the U.S. market.