Really, there is no contest.
The IP Section of the Colorado Bar Association, in conjunction with Silicon Flatirons hosted a debate between representatives from the Obama and McCain campaigns today in Denver. Jonathan Alter, a columnist and editor for Newsweek moderated the discussion between attorneys Ed Reines and Ray Gifford representing the McCain campaign and professors Christopher Sprigman and Arti Rai representing the Obama campaign.
Licensing technology from other sources makes sense in several situations, even when the licensee does not practice the technology.
Remember that patents are merely business tools, and they are useful when they give your business an advantage over a competitor. Taking a license, even when your company may not currently infringe, may be appropriate in some cases.
The latest rules from the US Patent and Trademark Office are quite sweeping. The new rules have several facets. On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE). On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.
I try to avoid discussing other blogs in my blog, mostly because I like to focus on writing content. However, I ran across Patentably Defined, a blog written by patent prosecutor Michael Kondoudis. Mike’s deep understanding of patent prosecution comes out in practical, easy to implement tidbits.
There are many reviewers and pundits who have discussed the recent Supreme Court case of Microsoft v. ATT, which dealt with a patent that Microsoft admitted to contributory infringement. This meant that Microsoft’s software enabled someone else to infringe, but that Microsoft itself did not directly infringe. The question was whether or not Microsoft was to be liable for infringement outside the US because Microsoft sent master copies of infringing software overseas for copying and foreign distribution and whether that action amounted to infringement.
The court decided that Microsoft was not liable because Microsoft did not export the copies of Windows installed on the foreign made computers. Instead, Microsoft supplied a master from which copies were made.
This is a very, very fine distinction.
It is not uncommon to receive a phone call from an inventor who wishes to write their own patent in order to save money but wishes me to help them in some way. Usually, the inventor asks me to read or edit their patent application and help them file it.
This type of situation is one in which neither the inventor nor attorney can possibly get what is best for either of them. It is a road to disaster.
One of my clients likes to describe patents as hyenas. A lone hyena can be easily frightened away, but a pack of hyenas can be very aggressive.
With one patent, a competitor or potential infringer has one thing to analyze, dissect, and find a way around. It may cost a little bit of money to analyze, but it is certainly a doable proposition.
With a dozen patents, the competitor’s workload is substantially increased to the point (hopefully) that it is cost prohibitive for the competitor to find work-arounds for every one of the dozen patents.
There are times when an inventor can be very myopic. There was one inventor several years ago who insisted on very specific definitions of his invention and would not permit any variation from his vision of the invention. The inventor would not consider any expansive definitions or alternatives to his idea. He was so fixated on his little view of the invention that he could not see how it could possibly be expanded.
As I work with a client to understand an invention and begin writing an application, I spend a considerable amount of time and effort to come up with different embodiments and alternatives for the concept. Since my background includes many years as a practicing engineer, patent holder, and entrepreneur, I have a unique vantage point to expand the scope of coverage for a patent application.
The USPTO has a new Accelerated Examination Program that promises an issued patent within 12 months. This program has a couple essential elements. The first element is that the applicant must perform a thorough search prior to applying for the patent. The second element is that the applicant can only have three independent claims.
There are many strategies and situations where slowing down the patent from issuing is an enormous benefit to the client. Personally, I take a very proactive approach to making the patent issue as late as possible where this is needed, such as filing a provisional application. I could not bear the thought of writing a sloppy patent application or intentionally filing claims are ambiguous or need a lot of work to clean up. I think it is reprehensible to intentionally and needlessly drag out prosecution by filing endless responses to Office actions, because it lines the pockets of the attorney without benefiting the client. I do think there are legitimate, low cost mechanisms that can extend the prosecution time to help the client get the most protection for the money spent.
