Many people have asked me how to best mitigate IP risks associated with legal entities that assert patents of dubious quality for nuisance value (e.g., cost-of-litigation) settlement purposes – these are the proverbial “patent trolls” or more politely called non-practicing entities (NPEs). My answer unfortunately starts with a stereotypical lawyer-like answer, “it depends”.
Enabling companies to unleash the power of innovation
Earlier this month the USPTO enacted a new facet to the §§ 8 and 71 Declarations of Continued Use, allowing examiners to ask registrants for additional proof-of-use specimens, above and beyond the ones provided in their affidavits. After conducting a two-year pilot where the USPTO asked 500 participants to provide additional specimens, 51% of registrants were unable to provide the now mandatory proof-of-use. This resulted in many of the trademark holders deleting the goods and services for which they were unable to prove use. Other registrations were cancelled altogether.
As I reviewed our 2017 Patent Program Benchmarking Survey, I was excited to see that an increasing number of companies are embracing key performance indicators (KPIs) to help them not only increase the operational efficiency of their patent portfolio programs, but to also increase the quality of their output. This increased corporate focus on patent quality resonates with me. For years, many of you have likely heard me express my belief that quality over quantity is a critical path for all of us. It ensures that we can develop strategic intellectual property programs for our companies. It also helps further improve our Nation’s confidence in our intellectual property system, which has taken a hit over the last decade due to the unfortunate use of dubious-quality patents for litigation settlement purposes.
It’s now February, one month into the new year. Are you trending to meet your 2017 patent filing commitments? Of course, we’ve all been saying quality over quantity – but for many companies, tracking the number of filings is still one of the most straight-forward ways to gauge the success of their patent programs. Below are three key questions that every patent department should be asking.
They say, “money talks”, but does it really? How effective are financial incentives in motivating behavior among inventors with respect to submitting invention disclosures and supporting the patent application process? I haven’t done any official research on this, but my ad hoc experience suggests that many inventors are considerably more motivated by the non-financial incentives than the financial ones.
One of the biggest challenges faced by IP departments is ensuring that new ideas and inventions are captured. Of course, it’s critical to remember that the submission of invention disclosures that are so valuable to IP departments are unlikely to be the primary concern of your inventors. With limited exceptions, most inventors aren’t focused on “inventing” – they have day jobs. They are likely more concerned with creating, building or enhancing new products and services that can be sold, rather than capturing those ideas in invention disclosure forms so that they can be patented. This also means that their thinking can sometimes be limited to what will likely be productized and not necessarily what might be possible or innovative. To supercharge your company’s patent program, consider these five simple steps:
Managing IP budgets can be time-consuming and complex – and because IP budgets can account for up to 75% of all legal spend in some companies, we are talking about some pretty significant costs that typically receive senior level attention. Given the magnitude of the budget needing active management and time and resource constraints with competing priorities, it’s no wonder that IP departments fall prey to some common pitfalls when managing their IP budgets.
I had the pleasure of moderating a panel at Consero’s Global IP Management Forum in Newport Beach, California this week, where Karl Renner and Gwilym Attwell from Fish & Richardson facilitated the conference program. My panel on “Protecting Global IP While Keeping To Budget” included such luminaries as Jeff Duncan from Elevance Renewable Sciences, Inc., Kim Jessum from Heraeus Incorporated, Dr. Tim Joyce from Bayer West Coast Corporation and Julie Vanderzanden from Jarden Corp.
Recently, I attended CodeX’s fourth annual FutureLaw 2016 conference, which was hosted by the Stanford Center for Legal Informatics. The conference featured an impressive group of speakers and attendees, who ranged from academics and policy makers to lawyers, investors, engineers and entrepreneurs. The conference focused on how technology is changing the landscape of the legal profession, the law itself, and how these changes will eventually impact us all.
First of all, let’s establish a few assumptions. Number one, I assume you actually want to manage the entirety of your practice within the business, not just some portion of it. There are lots of point solutions out there that will help you with this or that, but not the whole package. Worse, some people actually try to force a point solution to manage assets or processes for which it was not designed. Ironically, they often spend very expensive human resources to make up for the inefficiencies of their so called savings.
It was a privilege to have Lecorpio sign onto a recent letter of support for Congressmen Tony Cárdenas and Blake Farenthold’s introduction of H.R. 4829, the Trade Protection Not Troll Protection Act. Several Lecorpio clients and other IP thought leaders had signed onto this letter of support as well.
Over the last 10 years, I’ve often written about the importance of ensuring that your legal software providers have taken measures to secure their systems – so you might naturally expect me to say that security is the single most important quality to look for when choosing a legal software provider. And if we’ve ever met, I’ve probably spoken about the need for solutions that are intuitive and easy-to-use, or provide access to information that can enable informed, data-driven decisions. Yes, undoubtedly – all of these factors should be taken into consideration when selecting a legal software provider. And in fact, at Lecorpio, we pride ourselves on delivering these capabilities.
Undoubtedly, there is a lot of thought and attention on the legal data and analytics space. And as the cost of data acquisition and storage goes down, we’re finding new ways to use the piles of data we can now access. This reminds me a bit of the telephone book industry 20+ years ago. At some point in the 1990’s somebody realized that by using inexpensive resources overseas, the publicly available data in the phone book could be digitized and then sold as a database on disks back in the US. At first, this was quite novel. But once the cat was out of the bag, more companies got into the mix. Eventually, the data became such an inexpensive commodity that we take it for granted. When was the last time you opened a paper phone book, or even looked up a phone number on a so-called “white pages” or “yellow pages” website?
In 2006, I attended my first Legaltech, one of the largest legal technology shows in the United States. As a tech insider, but legal outsider, I was shocked the abominable condition of legal technology. Many solution providers were actually bragging about their new web browser interfaces or the fact that their application was based on... wait for it...SQL Server! Mind you, all of this would have been much more interesting in 1999, but by 2006 this was old news, if news at all. So, enough history. Where is legal technology today?
With SCOTUS decisions, shifting litigation trends and changing IP policies, last year was certainly a busy one for the IP community. With so much going on, it was difficult to limit the list to just ten items. But here is what I consider to be the top ten IP stories from 2015.
More than ever, IP departments are looking to technology to simplify management, streamline processes, and gain better insight into their IP portfolios. They are also looking for ways to maximize the value of their portfolios by making smarter, data-driven decisions regarding where and what to file, and what to renew. But before any IPM (Intellectual Property Management) solution is even considered, these six must-haves should remain top-of-mind.
As has been widely publicized, approximately 40% of patent suits this year have been filed in a single district where most of the defendants are neither incorporated nor have a place of business. This trend has existed for a number of years. Today, November 6, 2015, Lecorpio LLC joined a diverse group of 23 other Amici Curiae in submitting a brief to the Court of Appeals for the Federal Circuit supporting TC Heartland’s petition for mandamus (Case No. 16-105) urging that a domestic corporation’s “residence” for patent-suit venue purposes, under 28 USC 1400(b), is limited to its state of incorporation.
Well, first of all, we should answer this question: What is your most valuable class of Intellectual Property?