Introduction

Recognizing, protecting and exploiting Intellectual Property ("IP") assets has never been more important to businesses. While capturing the benefits of innovation can make the difference between profitability and demise, there are numerous and competing priorities on companies' time, money, and attention that make doing so a challenge.

In order to assist our clients more efficiently and effectively manage their IP within this competitive and challenging marketplace, Fasken Martineau conducted a survey of a number of Canadian companies as to how these companies view the importance, value and role of IP in their business. The following analysis of the results of our survey will help our clients secure more effective IP protection, more effectively manage the IP development process and reduce the risk posed by third party IP.

Respondents View IP As Driving Their Business Model

A majority of our 2009 survey respondents know and understand that IP is important to their business. Almost 80% of respondents consider IP to be a key or top priority, while only 6% consider IP to be a low priority.

Our survey respondents also have a clear, and remarkably uniform, view of the role that IP plays within their organizations. Two thirds of the respondents surveyed reported that IP plays a significant role in generating revenue for their company (for example, through licensing).

A majority of respondents also indicated that IP "distinguishes" their company in the marketplace (60%) and "creates barriers for competitors" (56%).

The fact that 62% of the respondents indicated that one of the key roles of IP within the business was to "increase the company's valuation" suggests that most respondents understand the value of IP as an asset. Further, 44% of respondents considered that one role of IP was to "attract investment."

 Global IP Outlook: Looking beyond Canada to Secure IP Protection

IP protection in countries other than Canada is clearly important for the Canadian companies surveyed, as two thirds of the respondents report that they sell products or make their services available outside Canada. Of those respondents that do sell products or offer services outside of Canada, 69% indicated that they have sought IP protection outside of Canada. The overwhelming majority (91%) of the respondents who sought protection outside of Canada indicated they had sought to protect their IP rights within the United States. However, other jurisdictions appear to also be key, including Europe (73%), the United Kingdom (55%), Japan (50%), India (36%) and China (32%). This not only reflects the growing role that these countries are playing within an ever increasing global market, but – in the case of India and China - may also reflect a perception that IP protection in these jurisdictions is becoming more effective, such that it justifies companies making the effort to obtain such protection.

Read and download the Intellectual Property Bulletin about this survey on the authors' law firm website, www.fasken.com and, for more information about this survey, please contact the authors, John Beardwood and Mark Penner.

John Beardwood is a partner of the firm, engaged in a corporate/commercial practice, with an emphasis on outsourcing and procurement, technology and privacy law related matters. John works closely with clients in advising on and negotiating various technology-related transactions, including outsourcing/procurement, licensing, implementation, distribution, technology transfer, strategic alliance and e-commerce related transactions, including in the airline, health care, financial/insurance institution and public sector contexts.

Mark Penner is a partner in the Technology and Intellectual Property Practice Group with expertise in the acquisition, protection and enforcement of intellectual property rights in the chemical, pharmaceutical and biotechnology areas. Mark's practice focuses primarily on the drafting and prosecuting of patent applications in this area of technology. In addition to patent prosecution, Mark also has extensive experience with preparing infringement, validity, freedom to operate and patentability opinions in the life sciences. On the enforcement side, Mark has been involved in Federal Court proceedings involving patent infringement and validity as well as Notice of Compliance proceedings under the Patented Medicines (Notice of Compliance) Regulations. Mark's practice also involves the IP aspects of corporate transactions (e.g. financing, mergers & acquisitions and joint ventures) such as protection of confidential information, trade secrets and know how, conducting due diligence, as well as technology acquisition and licensing. Mark is registered to practise as a patent and trade-mark agent before the Canadian Intellectual Property Office. He is also registered to represent Canadian applicants before the United States Patent & Trademark Office.

There may be no better competitive advantage in business than to be able to offer a valuable solution for free for which a rival must receive remuneration to stay in business.

The idea follows the line of the business axiom to give away the razors (a durable) for free so that people buy the razor blades (a consumable). It’s a dynamic that, for another illustration, means that there really cannot be a viable consumer printer seller that does not also sell printer ink…and then generate all sorts of safeguards, IP and otherwise, to protect that revenue stream of ink sales.

When competitors like Epson, Canon, and HP find a competitive equilibrium with a combination of products – they all sell the printer and ink combinations – traditional competitive dynamics develop over differentiation and price. A combination becomes a marvelous combination when you can give away a part of a solution that competitors cannot. Classical strategists call this an asymmetrical advantage. IP practitioners can gain asymmetrical advantages over their rivals under certain conditions by doing something counterintuitive – giving valuable-to-them IP away.

Asymmetrical advantages often provide the only real way to compete with dominate players on the market. The success of open source software solutions, notably Linux, provides a prime example. The open source community presented an alternative to Microsoft operating systems for end users in the one way that Microsoft did not and could not have an answer. They gave a good operating system away for free. Companies like Red Hat and Novell then built other saleable solutions around the free IP from which to generate revenue and therefore their marvelous combinations.

Free IP that is also good IP has a way of propagating into the market. It can not only serve as a way to compete with dominant players, it can also serve as a way to secure open markets. Think about Facebook for illustration.

The definition of free can also be “free” relative to other solutions. Although dated, the Beta vs. VHS competition is a perfect example given that by making licenses to the VHS format freely available for a reasonable royalty rate, the company Matsushita built a market standard for VHS that crushed proprietary Beta from Sony. This created a marvelous combination for Matsushita given that it could succeed in the video tape market regardless of whether anyone bought its tape player or that of another company. Matsushita actually did better by, in a sense, giving away video tape player customers to competitors so that those customers would build and use the VHS standard.

Think about the marvelous combination when you work to build your business. Can you create one? IP may be one of your vehicles for doing so considering what you give away and what you keep. Defensive publications can help you to communicate freely available IP that can build marvelous combinations, and liberal licensing terms may have similar effect.

If an IP bible existed, it could very well say, “That which you giveth away, you will receiveth back tenfold.”

About the author:

Robert L. Cantrell is an IP Strategist, MBA, author on business and military strategy, and a professional shark photographer. He is on the faculty of Patent Resources Group, where he teaches Patent Strategy for Business. He is the founder of Center For Advantage, a provider of tools for strategy, innovation, and sales workshops, training, and problem solving.

Robert has written a number of articles and papers on intellectual property. This includes his recently published book, Outpacing the Competition: Patent-Based Business Strategy (Robert Cantrell: Wiley 2009). This book blends patent strategy, business strategy, and classical strategy into a comprehensive whole, with the overall theme that those businesses capable of proficiently assessing their situations, deciding on courses of action, and taking action, win most competitive contests.

Recently I had written an article about our

Intellectual Property Strategy

and how we were considering integrated various intellectual property (IP) elements to protect our first physical product and product line while bootstrapping.

After posting this particular article I had a brief dialogue with Duncan Bucknell through the article comments. Duncan is an attorney specializing in IP and is the Chief Executive Officer (CEO) of Think IP Strategy, a boutique IP law firm with a global presence. With his comments on our blog he asked us to consider defensive publication, a subject which I had not encountered prior to.

If you haven’t read that particular article or the useful advice Duncan had provided you should do so, by visiting our article Intellectual Property Strategy.

This led me to conduct some research into a really fascinating area of IP law, the beginnings of which I will share here.

What  Is Defensive Publication?

Defensive publication, otherwise referred to as technical disclosure is a strategy employed by firms with IP to protect their right to use said IP. In essence the inventor or business publishes the information which otherwise would be patentable, to the public domain limiting their own ability to patent the disclosed information but also limiting others, such as competitors to do so.

Why You Should Consider Defensive Publication

Placing all your hard earned information and innovation in the public domain may seem counterintuitive and foolish at first glance but there are some very good reasons for doing this. Historically larger firms such as IBM and Xerox have gone to great lengths to employ the strategy of defensive publication, initially bewildering researchers and competitors. In recent years many small businesses are increasingly embracing this strategy.

Although there are a number of reasons why firms both big and small choose defensive publishing, there are three primary advantages when considering defensive publication:

1. Cost: A primary advantage is cost, which potentially can be zero. It appears that one need only release the information to the public domain such as releasing the information in a conference paper. I imagine that documenting your idea in a blog may be an option, but I’m not positive on this and need to do further research. With defensive publishing the innovator would not be subject to patent or enforcement costs associated with patent filing and potential litigation.
2. Guaranteed Use: By disclosing the information to the public you are guaranteeing your firm the right to use the information. When considering the option of a trade secret, a competitor could obtain your secret sauce through competitive intelligence and patent your idea and therefore prevent you from using it!
3. Strategy: Defensive publication appears to be an excellent strategic tool when it comes to your overall IP strategy. For example, large firms have used defensive publication as a means to derail competitor efforts by prematurely releasing information in the hopes of discouraging competition. There are other tactics employed by firms who pursue defensive publication, which are outside the scope of this article.

Now that we know the advantages of this option, let’s look at when it makes sense to do it.

When You Should Consider Defensive Publication
Defensive publication seems to be of optimal use when compared to patents and trade secrets in the following circumstances:

1. An innovation is easily reverse engineered
2. There is a high probability of being pursued by “patent pirates”
3. Industries where bad patents have a higher probability of being issued

Innovations that are easily reversed engineered are easily patented around. For example, if your product is in the retail space a competitor could purchase the product, make some modifications and possibly be granted a patent for a similar innovation. This is more difficult to accomplish with business-to-business (B2B) or highly complex solutions. The risk of this scenario increases with the corresponding increase in the issuance of bad patents by the patent office which I will discuss shortly.

Next, patent pirates are individuals who seek to profit through bogging firms down in patent litigation but do not intend on actually competing. Patent pirates achieve profit not through innovation but through litigation; this is a risk for primarily larger firms.

Increasingly research has shown that there are an increasing number of bad patents being issued by patent offices. As the state of the art of various technologies increases, the patent office becomes less skilled in assessing the true novelty of an invention due to lack of specialized expertise in the area in question. This is especially true with software and business process innovations. Another reason for the increased issuance of bad patents – the increase in the number of patent filings. The increasing number of bad patents being issued encourages more patent filings in the hopes that the patent will be issued regardless of merit. The cycle appears to perpetually feed upon itself with the risk growing over time to the legitimate innovator.

Defensive Publication Considerations
Despite it’s advantages there are some items worth considering before taking the path of defensive publishing as it is not ideal for all situations.

First, once you defensive publish your innovation, for better or worse the information is out there. That means beyond the one year time frame upon disclosure to the public you cannot patent the idea should you wish to do so at a later date.

Second, if your competitors do not have access to your innovation and you do not anticipate that they will, you may wish to go the route of protecting your idea as a trade secret rather than disclosing through defensive publication.

Third, if your idea is technically complex and not easily reverse engineered you may wish to pursue patenting or trade secrets as you may not receive benefit from defensive publication.

Fourth, if your business is a start-up with a very narrow niche defensive publication may not be the right choice. This explains why very high-tech startups as well as pharmaceuticals generally do not pursue defensive publishing as they would open themselves up to more competition as competitors have a potential advantage of accessing the information without having to incur the costs (both time and money) of developing the innovation.

Finally, it appears that the success of defensive publication hinges on the patent office finding the area where your innovation was published. If you defensive publish and a competitor applies for a patent, but the patent office fails to discover your defensive publication, then your competitor could defend their rights under the filed patent. For this reason at least a couple of firms, IP.com and Research Disclosure, have arisen to address this need. Based on my research it appears that these firms charge by the page for creating prior art from your submitted information and costs could range from $40 – $110. This is obviously more costly than submitting via a conference paper, however it increases the probability that the patent office will find your defensive publication and in turn reduce the associated risk of a competitor being granted a patent on said innovation.

Defensive Publication Resources
Like other IP related topics, defensive publication is a highly complex topic which I am just scratching the surface of here. Based on our situation at Analytica this seems like a very viable option for the following reason:

1. Our product is not technically complex and could be easily reverse engineered by someone with the requisite knowledge
2. Our idea could be designed around and an alternate patent filed once reverse engineered
3. The potential of zero to low cost is appealing for a bootstrapping startup
4. Even if we only achieved a small market share due to a competitor copying the idea it would make a large impact on our business, it appears to be much less expensive to guarantee our right to sell the product when compared to patent and enforcement costs

That being said I am going to do a little more research on this subject and update this blog with my findings. In addition, I plan on updated my original diagram to include defensive publication as an option for Level 1 strategy as outlined in my Intellectual Property Strategy article.

In the meantime here are some resources that I used for this article and that you may find of interest should you wish to delve deeper into the subject of defensive publication:

1.  Wikipedia – Defensive Publication: Formal definition of defensive publication. Referred by Duncan Bucknell of IP Think Strategy.

2. Social Science Research Network – Defensive Publishing By A Leading Firm: Amazing paper on defensive publication. It may take you a couple of hours to get through, but it’s definitely worth a read for those interested in the subject. The authors go so far as to model their assumptions to move beyond basic heuristics, good stuff. Also, this article you are reading is based heavily on this work.

3. University Of North Carolina School Of Law, Scott Baker – Disclosure And Investment As Strategies In The Patent Race: Academic paper on how firms use defensive publication as a strategy to include targeted innovation. I plan on studying this paper more in-depth and writing a follow-up article in the near future.

4. United States Patent And Trademark Office (USPTO) – Abstracts, Abbreviatures, and Defensive Publications: USPTO resource on defensive publication. Referred by Duncan Bucknell of Think IP Strategy.

5. United States Patent And Trademark Office (USPTO) – US Patent Full-Text Database Manual Search: Searchable patent database; referred by Duncan Bucknell of Think IP Strategy.

6. IP.com: Searchable patent, application, and prior art database which for a fee allows for submission for defensive publication (or technical disclosures) of your ideas.

7. Research Disclosure: Journal which serves as a vehicle for defensive publication and technical disclosures.

Thanks again to Duncan Bucknell of Think IP Strategy for suggesting this consideration and stay tuned for follow-up articles on defensive publication and an updated Intellectual Property Strategy article.

Check out these blog posts by John R. Sedivy

• Defensive Publication – How Much Is Enough?
• Intellectual Property Strategy
• Is A Patent Really Necessary?

on June 21, 2010

While the U.S. patent community passes another restless Monday without a Supreme Court decision regarding the future of business methods and maybe software patents in the Bilski case, I have been reviewing an excellent new prior art database from IP.com.* IP.com's Intellectual Property Library is unique, to my knowledge, among free prior art databases for at least two reasons: 1) it is international; and 2) it searches not just patents, but also non-patent prior art. The Intellectual Property Library also claims to be the first website outside China offering free access to China's State Intellectual Property Office patent data. In my experience, China is a huge and often untapped prior art resource in U.S. patent litigation.

In addition to providing a significant amount of patent and non-patent prior art searching capability without any charge. The Intellectual Property Library has a very nice interface and the search results appear to be very good. IP.com promises that in addition to a classic full text search, it offers a sophisticated semantic search engine. I cannot comment on the sophistication of the system, except to say that I was very happy with the quality and speed of my test searches. Click here to try out the Intellectual Property Library yourself.

If you would like to see some sample results that IP.com has prepared, check out their Interesting Queries.

* In the interest of full disclosure, I have used IP.com for professional search services before, and would expect to use them again. But they have not offered me anything in return for this post, nor would I ever accept anything were they to. I am writing about it only because I like the tool.

Outpacing the Competition: Patent-Based Business Strategy, by Robert L. Cantrell (Wiley, John & Sons, Inc., 343pp), is a book written for business-people and attorneys who are charged with developing business opportunities using practical patent strategies.

Patents on their own are just pieces of paper (with a fancy seal). What really matters, is how you make use of patent rights. Here, the author has provided a practical guide to the use of patents as effective business tools. This book is not an introduction to patent law but is a thorough discussion of key approaches to make intellectual property serve a company’s business plan and goals.

In Outpacing the Competition, Robert Cantrell sets out that a patent strategy is composed of decision cycles that include:

Cantrell describe the situation as this:

Decision cycles are not one-pass-through events. They are continuous cycles of assess, decide, and act, whereupon each action leads to new assessments, new decisions, and new actions, the complexity of which increases proportionally to the ambiguity of the objective.

The main body of the book then describes using the decision cycle as the primary guideline for how an organization should plan its patent strategy and organize its intellectual property. Whether your organization is IP driven or not (and it probably is even if you don’t know it), there are lots of lessons here.

With the changing business landscape, assessing the situation requires understanding that all successful enterprises have a central idea that defines the company, its centers of excellence. As a model example, Cantrell shows how Federal Express set one of the best descriptions of a central idea set out in its tag line, “When it absolutely, positively has to be there overnight.®”

Federal Express patents are oriented around fulfilling the promise of this idea. A review of Federal Express patents will show that they describe packaging, labeling, and logistic methods oriented toward getting packages from point A to point B proficiently and at high (i.e., overnight) speed. It’s entire intellectual property suite — the brand name, the trademarked tag line, the patents, plus trade secrets … — are all oriented toward delivering that promise.

Can you say the same for your business?

Drawing heavily from Sun Tzu’s The Art of War, a Chinese military treatise written in the 6th century BC, Cantrell shows how to use patents to your advantage. In one example, asymmetry is used as a strategic tool to take actions that line up a companies strengths against a competitors weaknesses, the idea being to engage a competitor on your own terms.

We highly recommend that you read Outpacing the Competition. You are sure to walk away with insights into business action that go well beyond just intellectual property strategies.

Robert L. Cantrell is a professional strategist who has managed multiple consulting and analytical engagements across a wide range of technology sectors that include the communications, electronics, medical devices, pharmaceuticals, energy, and consumer goods fields.

Outpacing the Competition: Patent-Based Business Strategy, by Robert L. Cantrell, is available from Amazon.

Patent Baristas is an intellectual property news and commentary site featuring freshly brewed chat on patent and IP issues in the biosciences. Besides patent law and litigation issues, Patent Baristas covers items relating to building a bioscience business, nanotechnology, technology transfer, orange book filings as well as FTC and FDA regulatory matters.

If you are an author, editor, publisher, or agent, and would like to guest blog with on Patent Baristas, please email your request to baristas@patentbaristas.com. If you have preferred dates or time-frames, please include those in your request. The only requirements are that it be well written, on-topic, and non-defamatory. A series of posts on a concentrated subject matter would also be a tremendous asset.

As well, we're always looking for guests who'd like to write something to be featured on IP.com's intellectual property blog, Securing Innovation, and we'd like to thank Stephen Albainy-Jenei and all the other great bloggers who have contributed to our guest posts here. Thanks.

and LIKELIHOOD OF CONFUSION®

There are are all sort of people out there who want you to tell them what happened in Bilski v. Kappos, which was expected to be the big shoe-drop on the question of business process patents.

I’ve never been one of them. But it is something I’m expected to know by everyone else who doesn’t know better.

One who does know better is my old friend, the redoubtable Donald Prutzman. He sent along this link, and I liked — and could follow — what I saw. You might want to keep it handy

The Court held that, although the particular business method at issue in the case was unpatentable, business methods as a class are not unpatentable. However, the Court gave very little useful guidance on what the standards are. It held that the most recent attempt by the Federal Circuit Court of Appeals (which hears all appeals in patent cases) to set a standard for patentability of business methods was incorrect and basically told that court to continue struggling with the problem.

That’s what I would have done, too, but I always figured that’s why I wasn’t already on the Supreme Court. Anyway, more:

The Court held that, although the particularbusiness method at issue in the case was unpatentable, business methods as a class arenot unpatentable. However, the Court gave very little useful guidance on what thestandards are. It held that the most recent attempt by the Federal Circuit Court ofAppeals (which hears all appeals in patent cases) to set a standard for patentability ofbusiness methods was incorrect and basically told that court to continue struggling with the problem.

The majority opinion by Justice Kennedy, joined by Chief Justice Roberts and Justices Thomas, Alito and Scalia (with the exception of two sections) rejected the patent on the ground that it was a mere abstract idea and thus fell within one of the three categories of subject matter long recognized as unpatentable – laws of nature, physical phenomena and abstract ideas. However, the majority held that business methods can, under some circumstances not clearly identified, be patentable processes under the Patent Act. . . .

Justice Stevens, joined by Justices Ginsburg, Breyer and Sotomayor, delivered an opinion concurring in the judgment of non-patentability, but for the reason that, in his view, business methods should simply not be patentable subject matter. . . .

I may not be a patent lawyer, but technically speaking, that’s a huge gap you’ve got right there, and all but one vote on either side of it. Half of the Supreme Court says, Sure thing! Half says, No Way!
Wouldn’t it make sense for something like the United States Congress to make this decision by doing something like legislating, rather than waiting for someone in a robe to die before we can feel really good about sending clients who inquire about business process patents to Donald and his patent prosecution colleagues? I don’t think I’m exactly suggesting any significant departure from the prior art here.

and China Law Blog

I am always counseling patience to young lawyers who want to start their careers doing international law. I explain that international law is really just "regular" law with an international component. I thought of that today when I read a post on the High Touch Legal Services Blog, entitled, "Top Ten Intellectual Property Mistakes of Startup Entrepreneurs" and realized how many of those mistakes have commonalities with the IP mistakes we so often see with foreign companies going into China.   

I am going to set out (in bold) six of the mistakes outlined in the High Touch blog post most relevant to China and then discuss how they relate to China.

2.  Assuming that the company owns contractors’ work product.  Even though there is almost no such thing as an independent contractor in China, we see a similar thing all the time. We have been contacted at least a half a dozen times by a US company that has in some strange and illegal capacity retained people in China to conduct R&D for and then when that R&D group goes off on its own, the US company wants to sue them for stealing the US company's IP. My response is usually to ask how it is that the US company proposes to explain the illegal situation to a Chinese court and then note that what the R&D people walked off with probably did not belong to the US company in any event.  

3. Using another company’s license agreement.  Fortunately, we have no encountered this situation all that often in a China context. Apparently, most companies do realize that if they are going to be involved in a China licensing arrangement they need a customized licensing agreement. I will note here also that China requires you to register your licensing agreements with the government.   

4.  Thinking that patents are the only IP that matters.  We do see a bit of this in that companies seem to underestimate the importance and value of trademarks and trade secret agreements in China.  

5.  Neglecting to identify and protect trade secrets.  Very true of China where companies far too often fail to do all that they can to protect their trade secrets via agreements with their employees or via NNN Agreements with outsiders.  

6.  Giving the “family jewels” to an overseas supplier.  This one obviously applies to China in that companies so often make the mistake of not requiring their China suppliers to sign confidentiality, non-compete and/or non circumvention agreements.  

The seventh mistake (not set forth in the High Touch blog because it is China-centric) is believing that registering your trademark under the Madrid Protocol is the same thing as registering it in China.   

What are you seeing out there?

You might want to add your comments below or join the discussion of this blog post on China Law Blog.,

Can you patent an idea? No.

Many potential inventors say to me “I have an idea I would like to patent” but what they do not understand is that the invention itself is patentable, not the idea. In order for an idea to become a patented invention, the inventor must be able to teach someone of ordinary skill in the art how to make and use the invention.

Could Roddenberry have applied for a patent in 1966 for the cell phone or a transporter? Not unless he could describe to someone skilled in the art how to make and use it.

The law doesn’t even require that you actually make it (“reduction to practice”) you just have to be able to describe how to make and use it. 35 U.S.C. 112 often referred to as the enablement clause reads

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…”

§ 112 paragraph 1 requires nothing more than objective enablement. In fact, an inventor can "constructively" reduce an invention to practice, which is unique to patent law.

"The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in § 100 nor the basic conditions for obtaining a patent set forth in § 101 make any mention of "reduction to practice.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60-61 (1999)." 

As Judge Pauline Newman as described, "[t]he inclusion of constructed examples in a patent application is an established method of providing the technical content needed to support the conceived scope of the invention" because "[u]nlike the rules for scientific publications, which require actual performance of every experimental detail, patent law and practice are directed to teaching the invention so that it can be practiced." Hoffmann-LaRoche, Inc. v. Promega Corp., 323 F.3d 1354, 1377 MPEP § 608.01(p).

People often come to me with an idea of how some type of machine might help solve a problem. But when I ask "how do you make it?" they cannot describe the inner workings of the machine. I ask them to tell me how it works and they say "can’t we get someone like an engineer or an electrician to make it work?"  I reply "wouldn’t that engineer be the inventor?"

If we go back to 1969 and the wireless phone idea... just having the idea to transmit voice signal wirelessly wouldn’t be enough to get a patent. You would have to be able to describe it like George Sweigert of Euclid, Ohio did on June 10, 1969. Sweigert  is the man who is credited as the person who came up with the first cordless phone and was awarded US Patent Number 3,449,750 (.PDF). Download the patent to see the way he described how to make and use his invention.

The bottom line is that your new idea of a way to solve a known problem can only be patented if you can describe how to make and use it. You cannot  get a patent on the idea alone.

Is the United States patent system broken and does it need to be fixed? Can our governmental leaders fix the patent system through legislation? Patent reform legislation has been introduced in each of past three Congresses and has yet to be ratified. Through the current Reform Act it is hoped that better patents are issued, patent rights will be enforced and the flow of technology advances our society for the good of us all. The argument over the many proposed changes appears to be getting closer to a conclusion.

The Obama administration has signaled support for a bipartisan patent reform agreement in the Senate. Senate Judiciary Committee Chairman Patrick Leahy (D-VT) recently came to agreement with Jeff Sessions (R-AL) regarding changes to the Patent Reform Act of 2009 (S. 515), increasing the chance that patent reform will actually happen.

In an April 20, 2010, letter addressed to both Senators Leahy and Sessions, Commerce Secretary Gary Locke pointed out that President Obama supports patent reform and would like to see the bill brought to the floor of the Senate and passed. Here is an excerpt from Locke’s letter:

The Obama Administration strongly supports your efforts to achieve such reforms and is committed to working with members of both houses of Congress to bring these efforts to fruition as you seek to bring a bill to the Senate floor. Regardless of any issues that remain under discussion, there is a consensus that a strong patent system, including an appropriately funded and well-functioning United States Patent and Trademark Office (USPTO), fosters innovation that drives economic growth and creates jobs.

Leahy’s procedural move is called a “hot line,” in which Senate Majority Leader Harry Reid (D-NV) will ask all Senate offices for unanimous consent to proceed to the bill, substitute the new language, and consider it passed.“Hot line” is the term used for a request to Senators to agree to allow a bill or resolution to be considered approved by the Senate without debate. It is has been reported by Dan Friedman of the NationalJournal.com that Senator Leahy is seeking floor time for consideration of S. 515, and hopes it will be taken up by the full Senate prior to Memorial Day.

Some of the proposed changes to current law are outlined below:

• First Inventor-To-File: The U.S. currently uses a "first-to-invent" system, which seeks to determine which applicant actually invented it first. The proposed reform would grant a priority of a right to the inventor who first-filed a patent application. Currently an inventor has a one-year grace period to file a patent application from the time the invention is used in public, published or offered for sale. This change would eliminate the one-year grace period unless the inventor was the "first-filer."
• False Marking: The proposed reform would eliminate the right of "any person" to file a false marking claim. Claims would be limited to individuals who have "suffered a competitive injury." This change would apply to apply to all cases, without exception, pending on or after the date of the enactment of this Act.
• Damages: The Patent Reform Act of 2010 attempts to address allegations that awards in patent cases are at times unfair and inconsistent. The Act proposes that courts be required to "identify the methodologies and factors that are relevant to the determination of damages, and the court or jury shall consider only those methodologies and factors relevant to making such determination." In other words, juries will only be allowed to award damages if the contentions are supported by substantial evidence. Each party would be required to "state, in writing and with particularity, the methodologies and factors the parties propose for instruction to the jury in determining damages … specifying the relevant underlying legal and factual bases for their assertions." This approach looks to strike a balance between the rights of patentees and accused infringers. However, as this approach does not actually limit damage awards, it remains to be seen how much this will affect a jury’s determination of damages.
• Trial: Right to split trial into segments: damages; infringement; validity; and willfulness.
• Willful Infringement: Under the current law, if it is determined that an accused infringer willfully infringed on another’s patent, "the court may increase the damages up to three times the amount found or assessed" (see S. 515 – Patent Reform Act 2009). Understandably, willful infringement was asserted in a majority of cases, and was found in many of them. This led to a number of unforeseen consequences. For instance, since one defense to willful infringement is reliance on an opinion from a patent attorney that there was no infringement, a number of lawyers were charging outrageous amounts (in excess of $100,000) for these opinions. In other cases, it was found that some businesses deliberately avoided learning about patents in order to avoid willful infringement claims. This completely goes against the whole purpose of the patent system, which is to promote science and useful arts. As a result, the Patent Reform Act of 2010 attempts to fix the willful infringement doctrine by increasing the standard for finding it. The 2010 Act proposes that, in order to be found “willful,” you must be found to be “objectively reckless” by clear and convincing evidence. It would also be made clear in the statute that knowledge alone is not enough to establish willfulness, and that any close cases should ere against a willfulness finding. This approach strikes a nice balance by making it much more difficult to assert willful infringement without getting rid of the doctrine all together.
• Pre-Issuance Submissions of Prior Art by Third Parties: The statute would expand the time frame for third-party submissions and allow third-parties to submit references and a statement regarding the relevance of the reference to patentability during examination of a patent application. This provision will benefit the public, the Patent Office, and inventors by giving the public additional time and the ability to make arguments to the Office; the Office more thoroughly examines an application in the first instance thereby decreasing potential reexamination proceedings; and the inventor is granted a patent which has been more thoroughly examined thereby decreasing the likelihood that the patent will later be invalidated through a novelty/nonobviousness argument.
• Litigation Venue: Patent cases could be transferred for the convenience of the parties to venues clearly more convenient than the venue in which the civil action is pending.
• Federal Circuit Judicial Residency: Federal Circuit Judges would no longer be required to live in the Washington, DC area.
• Micro-Entity: A new type of entity defined as a "micro entity" for an inventor that has not been named on 5 or more previously filed patent applications would qualify for reduced fees.
• Best Mode Requirement: The Best Mode requirement would no longer be an invalidity defense and it cannot serve as a basis for holding a patent unenforceable. If the bill is made into law it will result in: Patents that do not teach the best way to make the invention, but teach “a way” to make the invention; this change favors the inventor over the infringer because it will make it harder to invalidate a patent.
• Inequitable Conduct: Currently, when applying for a patent, the patentee is required to supply to the Patent Office any information deemed relevant to the invention’s patentability. If you intentionally mislead the Patent Office at this time, you are guilty of inequitable conduct, and the penalty is unenforceability of your patent. While that appears to be fair, it turns out that because of the penalty at stake, inequitable conduct is alleged in almost every major patent case. As a result, the Patent Reform Act of 2010 proposes to allow patent owners to request “supplemental examination” prior to litigation. During this time, the patent owner could submit relevant information to the Patent Office for consideration. Any patentee surviving this reexamination would be exempt from an allegation of inequitable conduct based on the initial examination process. However, a big question mark is the ability of the Patent Office to handle the changes created by this proposed law, including processing a host of new reexamination proceedings. With 750,000+ applications sitting in its backlog, can the USPTO afford to devote manpower to this?

The Patent Reform Act of 2010 appears to balance the playing field for patentees in defending their patents.In the long run, the pressures of market competition will determine the fate of the patent system based on its performance. If the patent system fails, over time it will make the United States economically less competitive, and industry will demand change.

The new amendment to the "Patent Reform Act of 2010" proposes a number of so-called improvements that are the subject of other LoTempio Law Blog posts:

• First-Inventor-to-File
• Pre-grant submission of prior art
• Patent marking statute
• Administrative post-grant review of patents
• Litigation Reforms
• Best Mode
• Inequitable Conduct
• Damages
• Willful Infringement
• Venue
•  Pilot Program for District Courts
• Patent Fee Setting Authority and Ending Diversion

One of the most important lessons I learned about intellectual asset strategy during my time as Corporate Patent Strategist at Kimberly-Clark Corporation was the value of aggressive defensive publications. IBM, one of the world's leaders in extracting value from its patent estate, publishes about half of all its invention disclosures.

One of their early efforts involved a patent for a technology (scanning tunnelling microscope) where the value of a patent estate ended up being reduced by about 90% due to a group of minor improvement patents on top of the foundational IBM patent. Many of the improvements were things that IBM had thought of but didn't feel were worth the cost of additional patents. They realized that such improvements needed to be disclosed to create prior art that would stop others from getting patents for all those minor variations or minute improvements, thereby increasing the value of their own estate.

The IBM STM story is behind this passage from Richard Poynder's 2001 article, "On the Defensive about Invention":

As patenting strategies become more sophisticated, so the value of defensive publishing increases. It can, for instance, protect against picket-fencing - where competitors patent small incremental improvements in your patent in order to erode its value and enable them to license your technology on preferential terms.

In 1982, for instance, International Business Machines was granted a US patent for the scanning tunnelling microscope (STM) capable of imaging atomic details as small as 1/25th the diameter of a typical atom.

At first IBM dominated the STM field. By 1989, however, it had been picket-fenced by competitors.

"If IBM had published disclosures of all of the incremental innovation around their pioneering technology, they could have prevented others from picket-fencing them," says Tom Colson at IP.com. "They would, in effect, have taken full control of the technology without putting patent resources at risk."

Such blocking tactics can also be achieved by patenting the incremental improvements, but defensive publishing is significantly cheaper. "It costs $109 ( £75) per document to publish on IP.com," says Mr Colson. "This compares very favourably with the $20,000 it costs per patent application to file in key locations worldwide."

The price at IP.com has come up since then, but it's still an incredible bargain. For a very small fee, your document is almost instantly published and time stamped, archived, and made searchable by the PTO and other patent offices, providing a lasting and secure record that the information disclosed was part of the public domain at that time.

Some of you with corporate R&D or IP experience have faced the pain of seeing competitors get patents on things you had considered long ago but thought were too "obvious" or minor to be worth a patent. An important lesson from IP litigation is that even an invalid patent can still be a major headache, one that can cost millions. Much better to reduce the odds of such nuisance patents by creating a strong body of prior art that discloses bells and whistles as they come up and also discloses various combinations that competitors might be working on to reduce what they can patent in the fields important to you.

Publications need to be crafted for strategic purposes. There are quite a few issues to consider, such as how to get the internal review needed to avoid harmful disclosure, how to get them written, what kind of incentives to provide for inventors/authors, whether to publish anonymously or not, and what venues to use (IP.com is one of my favorite), etc. I'll be discussing some of these issues in the future, but feel free to give me a call if you'd like to learn more.

When Innovationedge helps a company strengthen their innovation strategy or IP strategy, defensive publications are usually one of the key topics we address. We find very few companies do anything serious in this effort, and many Legal Departments seem inherently geared to overlook the benefits that can be obtained with creative publications. That's understandable. The IP attorneys are all about IP, and publications don't fall into the "P" area of property. They are intellectual assets, however, that must not be neglected for cost-effective IP strategy.

About the Author

Jeffrey D. Lindsay, Ph.D., is Director of Solution Development at Innovationedge (Neenah, Wisconsin) and former Corporate Patent Strategist at Kimberly-Clark Corp. He is an innovation enthusiast with over 100 patents in numerous areas. Prior to 13 years of experience in the innovation community at Kimberly-Clark, Jeff was an Associate Professor at the Institute of Paper Science and Technology on the Georgia Tech Campus. Jeff is a registered U.S. patent agent with a Ph.D. in Chemical Engineering from Brigham Young University, where he was a National Science Foundation Graduate Fellow. Jeff is chair of the Forest Bioproducts Division of the American Institute of Chemical Engineers and is a member of the Licensing Executives Society. Jeff is the lead author of the new John Wiley & Sons book, Conquering Innovation Fatigue: Overcoming the Barriers to Personal and Corporate Success, with co-authors Cheryl Perkins and Mukund Karanjikar. Jeff blogs at InnovationFatigue.com and SharpIP.com.

Deep in a dumpster lay two hundred years of patent lithographs that the US Patent Office discarded when they went digital. Out went the handwritten examiner notes and fine ink drawings on patents by Tesla, Edison, Bell, Goddard, Farnsworth and Carlson - masters of innovation who lived in far more challenging economic times.

Randy Rabin and I have shared with the world 140 of these original hand drawn lithographs in a book Drawing On Brilliance. Most have never been seen by the public before. Each holds the secret to innovation success – how to build products that will change the world.

Accelerating Innovation With Search

Think about this. There have been a mere 360 years between Galileo's discovery of the sun's turning on its axis and the first moon landing. Then less than 100 years between a time when the world's roads were made of dirt and the invention of the Internet. We are on a steep trajectory of success in solving global problems.

So drawing on the brilliance of the innovators who brought us this far, we can accelerate the rate at which we successfully build products that change the world.

For example, success at controlled flight eluded the likes of Galileo, DaVinci and hundreds who followed them. So what was it that two bicycle shop repairmen from Ohio named Wright did differently that would then serve to raise the standard of living around the globe? What approach did they take that centuries of geniuses before them did not?

Search! With no engineering degrees and limited financial resources they began a profoundly systematic search, (and without the benefit of the internet).

Dear Sirs (letter to The Smithsonian):

I am about to begin a systematic study of the subject in preparation for practical work which I expect to devote what time I can spare from regular business. I wish to obtain such papers as Smithsonian Institution has published on this subject, and if possible a list of other works in print in the English language. I am an enthusiast, but not a crank in the sense that I have some pet theories as to the proper construction of a flying machine.

I wish to avail myself of all that is already known and then if possible add my mite to help on the future worker who will attain success. I do not know the terms on which you send out your publications but if you will inform me of the cost I will remit the price.

Yours truly,

Wilbur Wright

Before building a single model they looked at centuries of prior art, dissecting the patterns of failure as carefully as the patterns of success as far back as Leonardo DaVinci. They used mapping, visualization, and had completed a painstaking analysis of as much available scientific information and technical intelligence as they could find.

How does starting with search ensure product success?

Right Product, Wrong Customer?

A state of the art search is critical before any company enters into a new technology area. Results can provide a basis for making critical market decisions based on competitive intelligence. They will become a powerful navigation framework for any innovative product or process design and will keep development focused on the right customer.

When Chester Carlton, the inventor of the photocopy machine, spent years trying to sell his invention to large companies, but to no avail. But two small companies, the Batelle Memorial Institute and the Haloid Corporation (later to become the Xerox Corporation) eventually agreed to license the technology and manufacture the copier.

It then took Xerox 15 years before the first viable, user friendly model hit the market. And their challenges continued when the Arthur D. Little Consulting company report done for IBM advised that the Model 914 “had no future in the office copy market”

Yet in its first six months the Model 914 exceeded sales projections for the entire lifetime of the machine. The A.D. Little Report consultants had only done their research on mailroom managers and not the secretaries who became the primary customers.

Optimize and Monetize

Visionaries are by definition too early and with each passing, great idea they seem to only get more visionary. Most of Nikola Tesla’s inventions were too early to be commercially successful in his lifetime. Yet many of them now form the basis of entire new industries and have helped create millions of jobs.

Is there a “Tesla” in your collection of innovations? Have you built a great product that is too early to be commercially viable? The true litmus test for commercial viability is when customers will actually buy the product and in some cases – even prepay for it

Effective archiving allows a company to monetize that product development risk by legally safeguarding the IP until the market is ready to buy.

Or is there a brilliant process your company has perfected for your current industry that has an even more world changing impact when applied to another industry?

Remember, Henry Ford repurposed a process from the meat-packing industry that allowed mass production of cars. And Yo-Yo Ma’s cello bow measurement technique is now used to design every child’s car seat in the world. Capturing this IP can foster even more of the cross-pollinating breakthroughs that have been the hallmark of product success.

Today’s sophisticated workflows and collaborative environments make it imperative that creative work be legally safeguarded yet remain accessible to as a private archive. This will also serve to optimize the value of your R&D budget, potentially increasing your company’s balance sheet and adding measurable asset value to any future M & A.

We are on the cusp of a third industrial revolution that will raise the global standard of living yet again. Today we have access to an unprecedented amount of resources and we’re collaborating like never before. And yet there is no shortage of global problems that need to be solved. So go build that product that will change the world, by drawing on brilliance.

About The Author:

Jackie Bassett is founder and CEO of BT Industrials Inc., a strategic management and technology consultancy where she helps CEOs of global 500 companies design and execute on their innovation strategies. She was one of the first 100 employees at Netscreen Technologies; which started in 1997, successfully IPO'd in 2001, then was acquired by Juniper Networks in 2004 for $4Billion. Her background is in investment banking having worked at State Street International. Her innovation strategy work has been in a variety of industries from Telecom, to HealthCare, to Clean Tech, to Digital Entertainment, to Biotech. She holds an MBA from Babson College and a private pilot's license.

You know how sometimes you hear a theme every once in a while, and you don’t make much of it? But then you hear it five times in a week, and suddenly you say whoah, something’s going on here!

That’s how it is for me with trust and innovation. I have now seen enough about their connection that I notice it.

Got problems with innovation? R&D not giving you much bang for the buck? Suffering from same-old service offerings? Product un-differentiation got you down? Read on.

Observation: Pessimists Don’t Innovate, Nor do they Trust

In Why Victims Can’t Invent Anything, Michael Maddock and Raphael Louis Viton suggest a simple test for the ability to innovate: the old glass is half full, half empty test. If you are optimistic, you are a creator. If you are pessimistic, you are a victim. Guess which one wildly out-innovates the other?

Now marry that up with the profile of trusting and non-trusting people from Eric Uslaner, arguably the world’s leading academic expert in trust. Paraphrasing, high-trusting people believe that life is good, and that they are in control of their lives. Non-trusting people believe life is fundamentally unfair, and that other powers are in control of their lives.

You want to increase innovation? Hire optimistic, high-energy people; shun conspiracy theorists. And why does this work? Because they trust each other.

Diagnosis: More Trust Yields More Innovation

Let’s follow this logic further. Trusting each other means people are open to each others’ ideas. Robert Porter Lynch explains the link.

Creativity happens, he says, very little by sitting around contemplating. Rather, it comes about from our interaction with others. In particular: people different from ourselves, who think in fundamentally opposite ways from the way we think.

If we’re not open to others—if our fundamental approach to others is fear-based, if we come from anger or ego or fight/flight responses—we shut ourselves off from the creative forces that come through sharing those different perspectives. We see them as threats.

The bridge is trust. If we can trust the other person, then we can hear and consider their perspectives, as they do ours. Net: communication, creativity, new ideas, innovation.

Trust and Innovation: Does It Work in the Real World?

Does it work for Ross? He’ll answer a resounding ‘yes.’

In the course of the next month, you’ll be hearing from several of these people: Eric Uslaner, Robert Porter Lynch and Ross Smith in particular, as well as others. I think you’ll enjoy reading what they have to say.

For now, let’s just notice what they all agree on: the road to innovation goes through trust.

About the Author

Charles H. Green is founder and CEO of Trusted Advisor Associates. The author of Trust-based Selling and co-author of The Trusted Advisor, he has spoken to, consulted for or done seminars about trusted relationships in business for a wide and global range of industries and functions.
Centering on the theme of trust in business relationships, Charles works with complex organizations to improve trust in sales, internal trust between organizations, and trusted advisor relationships with external clients and customers.

Charles started his career with the MAC Group and its successor, Gemini Consulting, where his roles included strategy consulting and VP strategic planning. He majored in philosophy (Columbia), and has an MBA (Harvard).

Trust Matters is his blog and he is also the founder of the monthly business blog review on the worldwide web known as the Carnival of Trust. We follow him on Twitter, as well, @CharlesHGreen

If you look at the books of large companies these days you will discover that their intellectual property (IP) adds a enormous amount of money to the balance sheet. In fact most companies fixed assets are small in comparison to the brand and IP value. This tells us something very interesting – yes – how much more would your company be worth if you invested more in intellectual property recognition and registration?

When a company strategically identifies, maintains and secures its IP rights then this can plainly have a major affect on the business in terms of its overall operation, including its ability to appeal to investors, enter into specific business partnership, and in the end increase its value when it comes to sale or company merger.

Large businesses who have mega-brands like McDonalds and Pepsi are often quoted when it comes to their brand value as out-valuing their fixed assets hundreds of times, yet it is easy to forget how these companies also became so big.

We live in an information world now. Information companies like Google can be valued at a few billion dollars a few years after creation only because information is now so valuable. Information is a tradable asset only when it is protected by IP laws and other laws. Every company, big or small should consider intellectual property seriously. It is one of the best investments literally you can make with a company if the intellectual property (IP) value is capitalized within the business and added to the balance sheet.

It is highly recommended for companies of all sizes to be aware of intellectual property topics and produce special strategies that will proactively ensure that their IP will at all times be properly legally protected.

Here are a few areas to help you start concentrating on by first identifying the areas that you are creating intellectual property (IP) in:

1. Trademarks – these protect parts of your overall brand such as slogans, images, names.

2. Copyrights – these cover the protection of expressive items such as documents, books, images, videos, sound recordings etc.

3. Trade secrets – these protect proprietary information, internal know-how, systems and operations that are deemed to give you a business competitive edge

4. Patents and industrial designs which protect specific types of ideas and inventions and processes

Considering the above items the first step that you need to do is identifying current intellectual property within your company. You may be amazed by how much you may have. Once all sources of a company’s intellectual property (IP) have been identified, processes should be put in place that enable the company to easily keep track of all existing IP and all new IP . Then someone needs to be given the responsibility to manage the intellectual property.

Learn more about Trademark Registration Singapore and uncover how does a trademark lawyer and IP protection increase the net worth of your business overnight.

Article kindly provided by UberArticles.com

Although he is generally reluctant to criticise individual IP rights owners for seeking to protect their market position, and equally reluctant to criticise those members of the IP professions who represent them, there are times when the temptation to do so becomes very great.

One such occasion when the temptation became fairly strong was today, however, when on reviewing the recent crop of appeals to the Court of First Instance of the European Communities regarding Community trade mark law he came across Case T‑162/08, Frag Comercio Internacional, SL v Office for Harmonisation in the Internal Market, Tinkerbell Modas LTDA.

Tinkerbell applied to register as a Community trade mark the sign on the right. Frag opposed, citing a likelihood of confusion with the mark on the left, on account of their similarity and the identity or similarity of its goods to the goods and services for which Tinkerbell had applied to register its mark. If you look very carefully you can just about see the words "by missako" in a scribbly sort of script at the bottom of Tinkerbell's sign.

The Opposition Division, the Board of Appeal and the Court of First Instance were all united in considering that the respective sign and mark were not hugely similar. The miracle is that it took the Court some 22 paragraphs of patient, formulaic judgment to explain that the marks were dissimilar.

The IPKat has seen some dissimilar marks touted as being similar over the years, but he doesn't think he has ever seen so egregious a case of dissimilarity as this. In case he was mistaken, he took the trouble of showing the pair of them to some friends and colleagues, each of whom was totally puzzled as to how anyone could have thought them similar. Merpel adds, what's also annoying is that Frag applied to the court to reject the application for registration, even though this plea has been ruled inadmissible in a string of cases going back many years. She feels that this exercise was a waste of someone's time, effort and money and hopes that futher appeals to the Court of Justice, the United Nations and the Celestial Tribunal will not be forthcoming.

Want to know more about our distinguished Guest Blogger?

I graduated from the University of Cambridge (Clare College) with a BA (Law) in 1973 and earned my PhD from the University of Kent at Canterbury in 1977 for my thesis on the allocation of intellectual property rights between employers and employees. From 1975-1976, while I was writing up my thesis, I was a Special Fellow at the University of California at Los Angeles (UCLA).

I have taught law full-time at Trinity College Dublin (1976-1980), University of Durham (1980-1984) and Queen Mary (1984-1987), returning to Queen Mary in 1991-1992 as Herchel Smith Senior Research Fellow. More recently, from 2003 to 2006, I was Professorial Fellow at the Queen Mary Intellectual Property Research Institute.

In addition, I spent two years as Managing Director of the publishing house that founded Trademark World, Patent World and Copyright World. I also launched Managing Intellectual Property magazine, which I sold to Euromoney Publications in 1991. Between 1992 and 1996 I was Registrar of the Court of the Chief Rabbi.

This caused a bit of a stir at the CIP Forum. Do you agree?

Perhaps none of the speakers in the IP and IA management track in last week's brilliant CIP Forum in Goteborg, Sweden were qualified to speak about what appears to be the most pressing issue for the future of IP management. You see, none of the speakers in this track were from small to medium enterprises (SMEs).

Let's back track a minute and then I'll explain.

Each of the speakers on the IP Management panel on the second afternoon were asked to spend a few minutes speaking about what they see as the major issue defining the future of intellectual property management as we head to a knowledge economy.

Here's what I had to say, please do come and join the conversation and let us know what you think.

We consistently hear (and at the conference, from the likes of Eli Lilly, Microsoft and Philips) that most innovation is occuring at the SME level.

Clearly most IP management is occuring there as well.

We have all heard about and constantly deal with IP silos within companies, managing IP as a profit centre (and not a cost centre) and communicating value to the Board.

Well, the vast majority of IP management has no silos, no profit centre, no cost centre, indeed no centre at all.

The vast majority of IP management is done where there is no IP function.

The challenge then, is to develop a set of principles and practices that are transportable across SMEs to large corporations. Accounting principles apply this way, as do marketing, sales, product development, indeed every other function.

Large entities have a great interest in helping SMEs to acheive this. They themselves often say that this is where they look for innovation. If they are to acquire IP from SMEs, then they would much rather that it had been carefully nurtured prior to acquisition.

Those of us charged with working in or with large and well resourced entities have an opportunity to make a substantial impact by leading the development of these tools.

[Photo credit: Clint M Chilcott and inventor of 'Light Emitting Diode Persistence of Vision Helmet']

About the author

Duncan Bucknell is an IP Strategist, lawyer, patent attorney and a veterinarian. He is a Fellow of the Institute of Patent & Trade Marks Attorneys and a Principal Fellow at the Melbourne Business School where he co-teaches ‘Strategic Management of Intellectual Property.’

Duncan is also an Associate of the Australian Institute of Company Directors and an Associate Fellow of the Australian Institute of Management.

Duncan is also one of three co-founders of Remarqueble, a provider of outsourced online trademark registration services.

L.L.B. (Hons), B.V.Sc. (Hons), B.Anim. Sc. (Hons)
FIPTA, AAICD, AFAIM
Phone: +61 (0) 427 003 423
Fax: +61 (0) 3 8640 0843
Email: duncan [at] duncanbucknell [dot] com

Dave Donoghue is one of a cadre of leading intellectual property law bloggers that have signed on recently to guest blog on the top patent blog, Patently-O. Also guest blogging this month, on Dennis Crouch's Patently-O, are many of the other top patent bloggers: Kevin Noonan of Patent Docs, Brett Trout of BlawgIT, Stephen Albainy-Jenei of Patent Baristas, and Joff Wild, Editor of IAM Magazine and the IAM Blog. Dennis has even got intellectual property blogger emeritus Jeremy Phillips grinning like a Cheshire cat at the prospect of writing an article for the top patent blog.

It's great to see this worldwide collaboration among the top patent blogs; bloggers who have learned the art of guest blogging and are showing others how it's done.

Here on Securing Innovation, IP.com is committed to a collaborative IP blog that is an integral part of the community of intellectual property professionals, attorneys, patent agents, examiners, strategists, and advisors. It's with a spirit of collaboration and mutual support that we've designed our corporate blog to feature a Guest Blogger with a prominent placement, rather than following the standard practice of including the guest blogger among the regular posts. This design gives the Guest Blogger a higher profile for a longer period than is usually the case on other blogs that publish guest authors. Contributed articles on Securing Innovation are also included in the permanent Guest Blogger Archives with a distinctive RSS feed for these featured articles. Looking at the lineup of featured guest bloggers, it makes a lot of sense to subscribe to this Guest Blog and add it to your favorite feed reader.

So far, we've featured the following Guest Blogger articles on Securing Innovation:

Remember Mr. Murphy When it Comes to Protecting Intellectual Property by Jason Shinn

Saving Your Intellectual Property by John Avellanet

Are Patents A Driver of Innovation or Just a Tax? by Stephen Albainy-Jenei

Should Management Be Involved In Patenting Decisions? by Clifford D. Hyra

Vote for the Top Patent Blogs by Gene Quinn

Technology Transfer Office Uses Workflow Software to Boost IP Management, Marketing by the Editor of Technology Transfer Tactics

August Carnival of Trust by R. David Donoghue

We're open to suggestions from bloggers who would like to be featured as a Guest Blogger here on Securing Innovation, the corporate blog of IP.com While we're not Patently-O and can't boast the traffic of, say, Patent Baristas, we are always keen to collaborate with IP Bloggers who have something interesting they'd like to share with readers of Securing Innovation and clients of IP.com who follow our corporate blog. We expect that several of the executives of our clients and customers, some of whom don't even have blogs, will want to publish an article in this forum of intellectual property professionals.

Got an idea for a post that you'd like us to publish or cross-post on Securing Innovation? Send an email to blog@ip.com and we'll be happy to discuss it with you. Nice people, we love cats and dogs.

Welcome to the August 2009 Carnival of Trust. The Carnival of Trust is a monthly, traveling review of the last month's best posts related to various aspects of trust in the business world. It is much like the weekly Blawg Review that I post links to and have hosted (click here and here), but those generally contain far more than ten links. My job this month was to pick those ten posts for you and provide an introduction to each post that makes you want to click through and read more. For my regular Chicago IP Litigation blog readers, this will be a slight departure from the case analysis format you have come to expect, but very similar to my earlier stints hosting the Carnival of Trust and Blawg Review.

It is the trust that matters, not the title.

At IP Think Tank, Duncan Bucknell added to the recent debate in the patent community about whether the IP function should move into the corporate C-level suite, adding a Chief Intellectual Property Office to the ranks of CEO, COO, CTO, CIO, CLO and CMO – click here and here to read Bucknell's posts. Following up on comments by Microsoft's Marshall Phelps and Rockwell Collins' Bill Elkington, Bucknell explained that the issue is not the name, but in a company having an IP champion that earns the organization's trust and respect, whatever title that person is given:

You have to build your own credibility within your organisation as someone who reliably gets the job done. As you build trust with those senior to you, then your (ongoing?) commitment to communicating the value that can be added using intellectual property will become more prominent.

Make some (achievable) promises and then deliver. The more that you do this, the more credibility will be given to the IP function, and the greater awareness those senior to you will have. Some would call such a person an ‘IP Evangelist’ – I would say that they are just doing their job. People executing on difficult tasks bit by bit has always been what success is about.

As usual, Bucknell's analysis is excellent. A person's respect within an organization is at least as important as their title.

Running an organization is all about building trust.

The patent community focused much of its attention this week on the confirmation hearings for David J. Kappos, nominee for Director of the US Patent & Trademark Office. Click here for Patentability's summary of the hearing highlights and here for a copy of Kappos's statement at Patently-O. The hearings were relatively short, likely because there appears to be widespread trust in Kappos's background and abilities. And although much of the hearing focused on procedural patent office issues, Kappos showed he deserved that trust by focusing his statement on his plans to earn trust with all of the stakeholders in the patent world. He specifically addressed concerns that his corporate background could disadvantage individual inventors or academics:

I am mindful that the USPTO serves the interests of ALL innovators in this country, small and large, corporate and independent, academic and applied, and – most importantly -- the public interest. While I have spent my career to date at a large corporate enterprise, I am familiar with the concerns and issues of all USPTO constituents - including small and independent inventors, the venture and start-up community, public interest groups, the patent bar and many others - and will reach out to all of them.

Kappos addressed his plans to build trust with his employees at the USPTO:

I am mindful of the incredible dedication of the thousands of USPTO employees, and the essential role they play to the success of the US innovation system. I will work every day with the USPTO employees and the unions that represent them to establish strong, positive relationships grounded in professional treatment for these workers producing work product based on professional judgment.

He addressed the need to build global trust and relationships:

I am acutely mindful that innovation today is global and that IP policy is of paramount importance, not only in our country, but also in the EU and Japan, in China, India, Brazil and many other developing countries. I will use my international experience and my understanding of global IP trends to help this Administration represent, advance, and protect the interests of American innovators in the global arena and to lead the world in developing strong, balanced, inclusive intellectual property systems that advance the well-being of all participants.

And he addressed the need to build trust with the Administration he seeks to join and the American people the Administration serves:

Finally, I am mindful that the office for which I am being considered, working as part of Secretary Locke's team and within the Administration's agenda, must be intensely focused on how to serve the American people at this time of economic uncertainty.

Gene Quinn provides proof that Kappos's trust-building efforts worked in his IPWatchdog post about the hearings (click here to read the post):

In all, what Kappos said was certainly reassuring, and he should have absolutely no problem getting confirmed. If he does stay mindful of the needs of all those who use the USPTO, small, large and in between, and the interests of the diverse industries who sometimes need contradictory things in order to thrive, he will not only be a good leader, but he will be an exceptional leader and might really reform the Patent Office into the entity it can and should be in order to foster economic development and job creation in the US.

Walter Cronkite personified trust.

The passing of Walter Cronkite last month does not have much to do with intellectual property, but I could not do this month's Carnival of Trust without mentioning Cronkite. To me and so many others, Walter Cronkite embodied trust. Cronkite was the person so many turned to in times of national tragedy, like war, and in times of national triumph, like the Apollo XI moon landing. Naturally, Cronkite's passing caused numerous reviews of present-day news personalities and almost as many questions about whether times have changed so much that we cannot have another Cronkite. In the Chicago Reader blog, Whet Moser decries a poll that found the Daily Show's Jon Stewart to be the most trusted newsperson on the air today – click here to read the post. Frankly, the poll does not appear to be scientific and, therefore, not very trustworthy. But I have trouble arguing with the results. I love news. Three newspapers are delivered to my door every morning, and I read each one. Okay, I at least skim each one. I grew up watching the nightly news, but I now finding myself turning to Stewart for news programming more frequently than I turn to Couric, Gibson or Williams. I like and even trust all three. But Stewart has built a more powerful trust with me by calling out the problems with the 24-hour news cycle and by making me laugh. Stewart has some obvious biases, but he makes sure they are obvious and he creates even more trust by poking fun at both sides of most issues. Truth and laughter are powerful trust builders.

Cronkite deserves more than one entry in this Carnival, and the second comes from the Carnival of Trust's own Charles Green at his Trust Matters blog – click here to read the post. Green breaks down the components of The Most Trusted Man in America: 1) honesty; 2) selflessness; and 3) integrity. Green also explains that Cronkite's calm, baritone voice reinforced each of the three characteristics. I could not agree more. Hearing Cronkite's voice is an instant dose of trust.

For those not fortunate enough to develop their own "personal," trust relationship with Cronkite through his news programming, check out this NPR obituary to get some measure of the man and his history.

Credentials can generate and regulate trust.

At the Mediation Channel, Diane Levin makes a strong argument that legal mediators need to develop an accreditation system – click here to read the post. And IP mediator Victoria Pynchon responds at her Settle It Now blog with her own arguments for credentialing mediators for the good of mediators, the mediating parties and society's trust in the mediation system as a whole – click here to read the post.

How can companies build trust?

Building trust can be a slow and sometimes uncertain process. At his Touch Points blog, Steve Finikiotis cites a study suggesting that trust in corporation in the United States and other developed countries is at its lowest point ever – click here to read the post. In order to remedy the decreased trust, Finikiotis provides four trust building steps: 1)Focus on understanding and meeting customers’ preferences; 2) Under-promise and over-deliver; 3) Transparency; and 4) Encourage and foster feedback.

And although Finikiotis did not focus on this example, last month Amazon showed just how those steps do build trust. Amazon was accused of copyright infringement when a digital book seller used a self-service program to sell unauthorized copies of several books, including George Orwell's 1984, to Amazon Kindle users. When Amazon learned of the alleged infringement, it erased the books from its customers Kindle accounts. As you might expect, there was a public outcry. Kindle users were upset to learn that books they purchased and felt they owned could be removed from their devices and accounts. And Amazon sprang into action following Finikiotis's four steps:

1. Amazon listened to its customers' frustration at having the books removed and the possibility of future removals;

2. Amazon replaced the books;

3. Amazon's founder and CEO, Jeff Bezos, issued the following very direct and honest apology:

This is an apology for the way we previously handled illegally sold copies of 1984 and other novels on Kindle. Our “solution” to the problem was stupid, thoughtless, and painfully out of line with our principles. It is wholly self-inflicted, and we deserve the criticism we’ve received. We will use the scar tissue from this painful mistake to help make better decisions going forward, ones that match our mission.

With deep apology to our customers,

Jeff Bezos
Founder & CEO
Amazon.com

4. Through its response and apology, Amazon fostered feedback.

Amazon turned a negative situation into a very positive one. As a Kindle owner (and lover), I was very happy with the response and it has made me an even more loyal Kindle customer. And others agree. For example, Amazon's response helped convince PublicOrgTheory blog to go ahead with a Kindle purchase – click here to read the post. And In Propria Persona has qualms with copyright law, but saw the apology as good customer service and said it improves the likelihood of him purchasing a Kindle – click here to read the post. Finally, the Below the Line marketing blog says that "Amazon shows how to apologize," and notes that customer comments on the Amazon site have been largely positive since the apology; proof that Finikiotis's steps work. Nice job to both Finikiotis and Amazon.

And with that story of trust done well, thank you for reading, whether you are a regular reader of this blog or a Carnival of Trust groupie.

About the Author

R. David Donoghue is the creator and author of the Chicago IP Litigation Blog. But blogging is only one facet of Mr. Donoghue's legal practice. Mr. Donoghue is a litigator focusing on intellectual property disputes, with a particular focus on patent litigation. He practices in Chicago as partner with Holland & Knight. More specifically, Mr. Donoghue is actively involved in both asserting and protecting his client's intellectual property assets. His practice spans diverse technology areas including cellular telephony, computer software, automotive technologies, satellite radios, electrical and electronic products, television production equipment, nutritional supplements and numerous medical devices. He also has extensive intellectual property licensing experience.

Mr. Donoghue was previously with Delphi, the world's largest automotive supplier, where he was a founding member of Delphi's Technology Licensing and Litigation group and handled substantial international intellectual property litigation and licensing matters.

Mr. Donoghue served as an Adjunct Professor at the Loyola University Chicago School of Law, teaching Legal Research and Writing and Introduction to Intellectual Property. And at the beginning of his legal career, Mr. Donoghue served as a law clerk to the Honorable Gordon J. Quist, Federal District Judge for the Western District of Michigan.

Mr. Donoghue earned his B.S.E. in Aerospace Engineering magna cum laude from the University of Michigan and earned his J.D. cum laude from the Georgetown University Law Center. While at Georgetown, Mr. Donoghue served as the Current Developments Editor for the Georgetown Journal of Legal Ethics.

The Intellectual Property Management Office (IPMO) at the University of Oklahoma is taking a unique technical approach to secure, manage, and market its portfolio of intellectual property, with a goal of boosting the number of licensing deals. If the high-tech strategy works, the TTO will be better equipped to navigate through the current economic crisis and beyond, says Cameron J. McCoy, director of technology marketing.

InnovationQ, a web-based, on-site software platform that automates and streamlines common IP management functions, is one of the primary tools the office is using to operate more like a business while improving its transparency with inventors and administration, says McCoy. “The ability to customize InnovationQ was a major selling point,” he points out. “We are able to adapt the base system and create new scalable functions that fulfill the specific needs of a TTO. The team at IP.com [the software vendor] has worked with us to co-develop a technology that will support the tech transfer process.” For example, InnovationQ can work with the IPMO’s existing IP management software, Inteum C/S by Kirkland, WA-based Inteum Co., LLC. “We wanted something that would complement Inteum, so we wouldn’t have to change the way we interact with our patent portfolio as it exists now,” says McCoy.

The university is conducting a five-stage implementation:

• Stage one is organizing the foundation of InnovationQ and setting up a secure repository. This essentially involves the InnovationQ team “looking at the types of data you have and what data you are seeking to collect,” says Didas. On the security front, InnovationQ locks down files to maintain integrity and provide a defensible background, says McCoy. The IPMO chose to store data on its own secure servers, but InnovationQ also generates a digital fingerprint (date stamp) for
every version of a document within the system. And the system allows TTOs to give certain departments or individual users either full or limited access to specific documents, says Didas. “For example, some might have ‘read only’ access, where they can preview MTAs or licensing agreements.”

Increased transparency

• Stage two is one of two workflows currently in development, says McCoy. InnovationQ uses a web-based portal to achieve a completely automated invention disclosure filing workflow that allows inventors to collaborate online.

The current disclosure process at Oklahoma works like this: Inventors download the invention disclosure form from the IPMO website. They fill out the form, print it, sign it, and then send it to
IPMO. Tech transfer staff must scan the disclosure form to enter it into their system. “In doing so, the document becomes a picture, and none of the data is available to us for searching,” McCoy points out.

With InnovationQ, “an inventor will be able to log in and complete the entire disclosure process online,” says McCoy. “This not only offers convenience to our inventors, but it gives us a produced
document that is searchable. We are then able to pull search terms out of that document to use in our process of marketing the technology.”

An electronic submission process should ensure that “a TTO is getting consistent disclosures: disclosures that have the same format and that are capturing the same type of data,” adds Didas.
Researchers also can stay in the loop, he points out. “The researcher or the person who authors the disclosure can elect to receive a notification every time their disclosure passes a key milestone in the invention disclosure workflow.”

One of IPMO’s basic goals is “to become more transparent,” says McCoy. “The online functionality of InnovationQ should provide a significant step toward achieving that goal. We will be able to open
the doors and let our researchers see what we are doing and when we are doing it. In turn, they will be able to have more input into the process -- and we can have better communication with them.”

• Stage three sets up another workflow designed to work in sync with the invention disclosure workflow. Specifically, InnovationQ automates the disclosure analysis, “allowing a technology manager and all appropriate resources to together move a technology through the decision processes after the disclosure form is completed via the online process,” says McCoy.

InnovationQ is well established in corporate settings, but only entered the university TTO market about a year ago. As an early adopter, the Oklahoma TTO has worked with IP.com to define standardized “best practices” in disclosure analysis that will meet the needs of most TTOs, says McCoy. “At the same time, the workflow is flexible enough that it can be customized to the processes of individual TTOs.”

The InnovationQ workflow includes collaborative tools. For example, during the disclosure analysis process, a number of questions typically go back and forth between TTO staff, the inventor, and a patent law firm. “These conversations usually take place via Microsoft Word or e-mail systems,” says McCoy. “Currently, TTO staff can leave a note in Inteum referencing the conversation, but really none of these conversations gets tracked.” InnovationQ fills that gap, allowing staff “to have fully tracked and recorded conversations within a secure environment,” he explains. “This is really useful from both a defensibility standpoint and a functional standpoint.”

In addition, the system includes delegation and consultative features. A technology manager who is responsible for approving a document can delegate his responsibility for that record only to a colleague with greater expertise on the specific technology,
explains Didas. Or the technology manager can ask one or more subject matter experts to provide feedback on the technology before he makes a decision. “So InnovationQ can break the traditional workflow and send the record to another person to make an approval or a recommendation. Then the record will proceed on the normal workflow path,” he says. In addition, any changes to the documents are made while also preserving the original or previous version, so “TTO staff can see a full history of the document,” McCoy notes.

A TTO dashboard

• Stages four and five “are both new developments on the InnovationQ core system resulting from collaboration between [the university] and IP.com,” says McCoy.

Stage four sets up a dashboard system that manages the daily workflow of IPMO’s technology managers as they progress in the patent process. Didas offers this example of how the dashboard works for a licensing manager who is responsible for 20 disclosures
or patents: Once logged into InnovationQ, the user has a starting point called a technology manager view. From here, the licensing manager can see all of his 20 disclosures (and the status of each) as a starting point. “The manager would be able to answer such
questions as: Do we have a nonconfidential summary? Is this technology exposed on our marketing portal? Do we have a patentability study?” says Didas.

Then the manager can drill down on each technology and get a detailed picture, he says. “For example, if a disclosure or nonconfidential summary for a technology is being publicly exposed on the marketing portal, the manager can see the metrics (e.g., how many times it has been previewed). So from a marketing perspective, they can make some general assumptions about marketability based on the eyeballs that the technology is attracting.”

The dashboard is a technology overview, providing TTO managers with access to a complete information trail or history for each technology they manage, explains Didas. “In addition, the system will send personal e-mails to the technology manager when key events occur related to these technologies, and the manager can align related technologies within their system.”

The next release of InnovationQ -- slated for this summer -- will incorporate market due diligence into the dashboard, he says. “It will permit a technology manager to take the patent or technical
disclosure, as well as perhaps enter in key words related to that technology, and the system will return a list of companies patenting in that space, almost like an infringement alert.”

This function also helps with marketability analysis, giving TTOs a ready-made list of targeted marketing prospects, Didas comments. “For example, if you have a patent on a technology that prevents corrosion in titanium tanks and you do a search of related key words, you will find other companies that have patents on titanium or something to do with corrosion.”

Dashboards eventually will also be developed “for all levels of a TTO, inventors, and even university administration,” adds McCoy. “This is important from a transparency standpoint.”

Stage five is a technology marketing portal. “The marketing portal should provide typical business web functionality,” says McCoy. “For example, it will have different types of search capabilities, whether that is a tag search, a browse through, or a word search. The portal also will give us RSS feeds on specific technologies or groups of technologies, and people will be able to bookmark or take action on different technologies.”

These interactive features tie directly into the online disclosure system, notes McCoy. Technology managers can create nonconfidential summaries from the searchable disclosures and then publicly expose the summaries on the marketing portal, Didas explains.

Progress so far

The IPMO has installed the InnovationQ core system and staff are current testing it. His ultimate goal for the system is to generate more licenses. “We should have some hard data on whether this is working sometime in the late fall or in early spring 2010,” says McCoy.

The return on investment generated by a secure portfolio, better communication, and efficient automated workflow processes can be difficult to quantify, acknowledges Didas. “However, the system is designed for TTOs to be able to defer unnecessary costs by vetting technology earlier in the development cycle. The goal is for universities to be able to save resources downstream in, for example, legal costs for opinions, comprehensive patentability searches, and filing fees when they don’t pursue technologies that they decide are not patentable.” Factors influencing the cost of InnovationQ include “the number of modules, the amount of customization, the level of integration with other systems, and the number of workflows,” says Didas. “Typically, these modules are staggered to disburse costs while easing users into the new functions.” Considering the cost of one patent filing, many TTOs could cover the price tag by simply deferring two or three patents, he notes.

Contact McCoy at cmccoy@ou.edu or 405-325-3800; contact Didas at mdidas@ip.com or 716-362-4562, ext. 109.

About Technology Transfer Tactics

Technology Transfer Tactics monthly newsletter was launched in early 2007 by BizWorld, Inc, a privately held national science and business publishing company headquartered in Naples, FL. The founder, President and Publisher is Dr. Leslie C. Norins. The audience for this periodical is, broadly, anyone who has an important role in discovering, encouraging, funding or promulgating the transfer or translation of research into useful, practical products which can yield wide benefits. The readership includes institutional directors and managers of technology transfer or translational research, laboratory chiefs, venture capitalists, corporate development officers, intellectual property attorneys, and licensing experts. Subscribers come from the nonprofit, for-profit, and government sectors, worldwide.

Click here to subscribe to the Technology Transfer Tactics monthly newsletter.

As promised, we are moving forward to attempt to determine the Top Patent Blogs. With the objective component making up Phase 1 of the Top Patent Blog selection process complete, it is now time to move forward into Phase 2, which is the voting phase.

Below are 50 patent blogs for you to choose from. Question 1 asks which patent blog is your favorite, and question 2 asks which patent blogs you regularly read. Only one selection is permitted for question 1, but multiple selections are permitted for question 2. For each question 1 vote a total of 2 points will be awarded. For each question 2 vote a total of 1 point will be awarded. Each computer will be allowed only one opportunity to vote, so that we do not run into an American Idol situation where die hard fans can vote hundreds of times and skew results.

Voting will continue through the end of June 2009. Once voting is complete I will tabulate the results, combine those results with phase 1 totals and announce the Top Patent Blogs, sometime at the beginning of July 2009.

Click this link and vote for the best Patent Blogs.

I always recommend that businesses not isolate management from the patenting process. Sometimes companies leave the patenting to the R&D department, figuring that they know their inventions better than anyone in management would.

The problem is that R&D may not know or always be cognizant of the overall goals and strategy of the business the way management is. And what sometimes happens when the R&D department takes over the patenting process is that they lose sight of the truly important aspects of the inventions, leading to patents that cover products, and not innovations.

Rather, it should capture the full scope of your innovation- what is it about your lamp that is new and better than other lamps? Your patent should ideally cover any new product including your innovation, not just the particular one you want to sell or have in mind.

Jackie Hutter has written a good article emphasizing the importance of properly defining the scope of your innovation- and of getting management involved in the patenting process to make sure that happens.

A SVP at a large consumer products company recently expressed frustration that he cannot bring a patent infringement lawsuit even when his company holds 18 US patents (and many other foreign patents) on a product that closely resembles a competitor’s product… The competitor’s knock-off product has been successful because they have removed much of the cost from the product by using less expensive ingredients, while still being able to maintain its desirable performance aspects…

So why can’t the SVP go after the competitor by suing on one or more of the 18 US patents for which his company paid so dearly? Quite simply, the patents cover the INVENTION not the INNOVATION. The difference is subtle, but critical. The invention centered on the plastic composition of the product, that is, how much of each ingredient was present and how that composition manifested in the finished product. In contrast, the innovation centered on the performance of the product, irrespective of the plastic composition…

The reason for this situation is clear: the 18 US patents were prepared in a R & D/patent attorney “silo” where the “cool factor” was considered to be the attributes of the plastic composition, not the attributes of the final product…

After hearing my explanation for his frustration, the SVP wondered aloud how to learn from this costly patent lesson. I told him that the answer was easy: he must dismantle the patenting silo where his patent attorneys work only with his R & D team. Instead, his business team must drive the patenting process at his company by holding primary decision rights on what patent applications his company files and what those applications cover.

Management is sometimes better at keeping their eyes on the ball. The goal is to grow your business and make more money, not to accumulate patents. Jackie also endorses something I always recommend to my clients- a brainstorming session where you try to think of ways your competitors could knock off your product. The results of such an exercise can be a great help to a patent attorney in preparing your application with sufficient breadth to encompass the design-around attempts of your competitors.

By the way, this is another great illustration of the importance of relying on a good patent attorney. Claim/application scope is an art. If a large company with a big patent firm can make a mistake like this, just imagine what can happen when an inventor tries to put together an application on his or her own.

About the Author

Clifford D. Hyra, founder of Hyra IP, PLC based in Reston, VA, is a registered patent attorney with extensive experience in the intellectual property field. Located not far from the United States Patent and Trademark Office in Alexandria, Virginia, the firm specializes in intellectual property law, including patent prosecution in the mechanical, chemical, electrical, medical, computer software, biotech, and business method arts. Hyra IP is a national and international practice with a geographically and philosophically diverse portfolio of clients. Clifford has prosecuted hundreds of patent and trademark applications in the United States Patent and Trademark Office, negotiated the settlement of patent and trademark disputes, conducted trademark cancellation and opposition proceedings, appealed to the Court of Appeals for the Federal Circuit.