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.