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Lecorpio blog

Douglas Luftman is Lecorpio’s Chief Innovation Officer and General Counsel. He leverages his thorough understanding of issues facing in-house IP attorneys, their outside counsel and other legal service providers to drive Lecorpio’s corporate and product strategy. He also works in collaboration with the company’s product, client services, marketing, and sales teams. Most recently, Doug was Vice President of Innovation Services and Chief Intellectual Property Counsel for NetApp, Inc., where he was responsible for the company’s nationally recognized worldwide intellectual property program. Prior to that Doug held similar roles at CBS Corporation and Palm, Inc. Over the years, Doug also has been globally recognized for his personal accomplishments as an innovative and strategic executive. Doug earned his J.D. with honors from The George Washington University School of Law in Washington, DC and his B.S. in Electrical Engineering from UCLA in Los Angeles, CA.

Unitary Patent System – Are You Ready?

As we have been hearing for some time now, the Unitary Patent (UP) system is going to be upon us before we know it. As you may recall, this new system includes not only the creation of a Unitary Patent asset, but also the establishment of a Unified Patent Court. As of the writing of this article, it appears that the UP system is imminent with the final milestones for triggering the system happening by this late Spring / Summer. No longer can we hope that the new UP system will only be implemented after we retire.  It’s now a reality with us having to get our arms around it by the end of this year.
As you may recall, for the UP system to become effective, at least 13 of the 25 EU countries including Germany, France and the UK must ratify the UPC Agreement. At this point, we’re only waiting on the UK (expected any time now) and Germany (June – Aug timeframe) to ratify before we enter a “provisional protocol” period. At that milestone, the Unified Patent Court will begin to coordinate and opting-out from the new UP system will be possible. 
So what does that mean for all of us?  After the opt-out period begins, the final deadline for making an election for traditional European patent assets will likely be in early December, 2017. Be forewarned that the opt-outs will be done electronically through the system’s new case management tool with the registrar not checking whether an opt-out meets all of the requirements. Therefore, it will be the responsibility of the patent practitioner to ensure that the opt-out is done correctly. Definitely something to keep a close eye on. 
For pending patent applications that are close to being granted, companies also need to begin deciding whether they want to allow such assets to be included within the new UP system by ensuring that grants are appropriately timed and the necessary request for unitary effect are made. 
It also is important to ensure that one monitors which countries are covered by the new system. At the start of the new system, at least 14 countries will have ratified the UPC Agreement resulting in those countries being included within the Unitary Patent scope of coverage. However, those countries that have not ratified the UPC Agreement prior to obtaining a Unitary Patent may not be retroactively included within this scope. An approach to address this UP system limitation is to consider either filing national applications in those countries and/or utilizing divisional patent applications to preserve your European patent rights during this transitional period.
Obviously, the above is just a quick thumbnail sketch of some of the things that you should keep an eye on as we progress through the summer and head toward the UP opt-out deadline and the implementation of a new Unified Patent Court, at the end of this year. Good luck to everyone during this truly historic period for European patent rights.

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Understanding IP Risk Mitigation Services to Combat Threats Posed by NPEs

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”.

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Focusing on Patent Quality

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.  

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2016 IP Management Trends

With the close of 2016, I couldn’t help but think about the top 5 IP management trends that I’ve observed over the past year. 

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Common IP Budgeting Pitfalls

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.

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Consero’s Global IP Management Forum

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.

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CodeX FutureLaw 2016

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.

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Lecorpio Actively Supports the Trade Protection Not Troll Protection Act

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.

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Lecorpio Joins Amici in Supporting Federal Circuit Mandamus Petition Regarding Restricting Venue in Patent Suits

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.

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Silicon Valley Regional U.S. Patent & Trademark Office – What It Means For Silicon Valley

Like many areas in the enterprise, your legal department is probably being asked to do more with less. You’re certainly not alone. Most IP attorneys are tasked with filing significantly more patent applications within the same budget as well as enhancing their responsiveness to business clients without any increase in department headcount. To meet these challenges, you’ll need to maximize your IP process efficiency across the entire enterprise and expect the same of your external partners. Below are a few best practices for enhancing the patent management process at scale (while keeping your sanity).

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In-House and Outside Counsel – Adopting Technology to Achieve a Win-Win

Earlier this week, I read an interesting article that explored the reasons why law firms often struggle to innovate. The article highlighted what is already well-known, that most law firms are driven by the almighty billable hour – a metric that is said to discourage efficient behavior.

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