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IP Lawyers: Enough about Bilski Already! Instead, Start Spending Time on Things that Create Value for Your Clients

Jul 15th, 2010
by Jackie Hutter, IP Strategist.
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The response to Bilski demonstrates that IP Lawyers are attracted to star power just like most everyone else

Clear your calendars!  Bilski was decided just a few weeks ago, and already the schedule is filled with at least 3 Lunch and Learn seminars in the Atlanta area about “what Bilski means to your practice.”  If you can’t make these due to your Summer vacation schedule, don’t worry:  there are countless blog posts and “Urgent Practice Alerts” available, each of which reviews, abstracts and analyzes the case and its minutiae.

Come on Folks:  at the end of the day (and after 70 + obtuse pages of reading), Bilski was a very narrow ruling.  We know what it means, and very few inventors will be affected by the holding.  This means that very few attorneys should do much more than read the abstracted case, and then move on.

So, why are my IP lawyer peers spending so much time talking about a case that doesn’t matter much to our clients or practices?  Maybe it’s because the Supreme Court deigned us with their presence by hearing a patent case.  Whoo Hoo!  But, that’s like being really interested in Angelina’s new tattoo “that’s only for Brad.“  There I said it–fretting over Bilski is akin to Celebrity Stalking, IMHO.  In short, for most of us, Bilski is much ado about nothing, but we lawyers seem to think that by talking about something everyone else is talking about, we are somehow smarter and more worthy of recognition from clients and peers.

So, instead of spending time writing missives to clients that will immediately be put in the circular file or preparing for a seminar where you will demonstrate to your peers how well you can read and analyze obtuse Supreme Court cases, how about working to create value for your clients?  Instead, I suggest you spend time helping clients address an issue that will be much more likely to effect them and their business bottom line.

I have set out a few examples below, but the point is that IP lawyers need to become more relevant to business.  Spending countless hours talking about marginal issues makes us seem marginal to clients.  If we don’t become more relevant to clients in this world where business is taking a harder look at IP, we will be left behind talking about case law with each other.

Some examples of ways to create value for clients come to mind as follows:

  • Helping them monetize the patents you have charged them handsomely for over the years
  • Providing strategic advice about how they can get better patents for less money
  • Sitting down and having a heart to heart talk about their business goals and how you and your firm can help make those happen
  • Taking a business class so you can communicate better with your clients and understand their goals

If you must talk about Bilski, how about this novel idea:  pick up the phone and call your client, if just to say “don’t worry, this Bilski case is not relevant to your busiiness.”  But, you’d better not charge them for this call!

Photo: Flickr:tincanorange

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Posted in: Commentary, IP Culture, Law Firm Management, Patent Staffing.
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IP Strategist on the Radio: 2 Recent Interviews

Jul 10th, 2010
by Jackie Hutter, IP Strategist.
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IP Strategist on the radio!

As my consulting practice becomes ever more busy, blogging must be relegated to times when client work is not pressing–that ever-elusive free time.  But now that Summer is here, free time has been hard to come by–it’s hard to write when at the pool with the kids or driving to Grandma’s house–but I haven’t been totally giving up my outreach.  I recently participated in 2 radio interviews where I discussed the value of IP Strategy for entrepreneurs and inventors.

Here I was on the 40 Year Old Business Virgin Radio Show with Dave Savage, Leader and President of The Inventors Association of Georgia and a person named Mohamed who has a really cool entrepreneurial story (sorry I didn’t get his last name).  The hosts of the show, Kile Lewis and Ted Jenkin, are irreverent business advisors, and you should enjoy the show.  (I appear in the first half).   They also made a short follow-up You Tube video (I had no idea I would appear on video and dressed totally inappropriately, but–oh well).

I also appeared with Dave Savage on the Community Perspectives Radio Show (link here:  IAG Interview–opens to YouSendIt.com then your media player), along with Narayanan Subramanian.  In this show, we talked about the Inventor’s Association of Georgia and its value to entrepreneurs and inventors.  Dave had some very smart things to say about the difference between the two, and this is worth a listen, if just for that piece.

I hope you enjoy these interviews.  Lots of substantive blog posts are running around in my head, and I look forward to sitting down before the computer soon–maybe from the beach in Florida!

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Posted in: Commentary, Entrepreneurs, IP Strategists, Legal Costs, Patent Staffing, Start-up IP Strategy, Start-up Patent Strategy, Uncategorized.
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How the Northeastern Indiana Amish Serve as a Business Lesson about Patents

Jun 25th, 2010
by Jackie Hutter, IP Strategist.
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The Amish can serve as a lesson for business about patent strategy

I have been spending time in Northeastern Indiana–the land of my roots–to introduce my children to their aunts, uncles and many, many cousins.  Catching up with extended family has made it difficult to formulate a post in the past couple of weeks, but I have a few moments this morning and wanted to capture a thought that has been rattling around in my head since I arrived here.

Anyone who has spent time in this part of the U.S. will be familiar with the presence of the Amish as part of the cultural landscape.  My children, as city kids, are fascinated whenever they see a carriage with families traveling along the side of the roads.  However, I invariably consider about how stifling I would find it to not be able to interact with the outside world in the way that is familiar to me.  In short, I wonder what it would be like not to be able to be part of the modern world and immediately subtract all of this from my “happiness quotient”, which is the same view I have held of the Amish lifestyle since I was a child.

Earlier this week, I was sitting with my uncle, who is a prominent small town lawyer, about an Amish client of his.  He was going over some documents while we were chatting, and I said “So how do you talk to him?  Do you have to drive out to his homestead?”  My uncle laughed, and said “Oh, Jackie, they all have cell phones here.”  And just then, the phone rang with the Amish client, and they proceeded to have a conversation about his substantial financial assets.

After his call was over, my uncle revealed some very interesting things about the “modern” Amish of Northeastern Indiana.  Unlike years past, many have become very prosperous by engaging with technology such as cell phones, satellite Internet and generators.  One of his clients has owns a factory with 100 employees that makes the “Amish-made” products that are sold in Bed Bath and Beyond.  As he related this information, I recalled that the Amish houses we passed on the way up here looked very new, as opposed to the lived-in look from the Amish of my childhood memories of the 1970′s and 80′s.  (The carriages we passed on the road were certainly much more modern and well-appointed with shock absorbers and safety equipment than the one in the picture above.) Continue reading →

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Posted in: Entrepreneurs, IP Culture, IP Strategists, Intellectual Property Strategy, Patent Business Strategy, Patent Strategy, Start-up Patent Strategy, intangible asset management, ip.
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Innovation is Sprouting in US Patent Office: A Plea for Flexibility from Patent Practitioners and Interested Parties to Allow the Necessary Changes

Jun 9th, 2010
by Jackie Hutter, IP Strategist.
1 comment

This blogger is keeping her fingers crossed that necessary changes will be allowed to occur in the US Patent Office.

Anyone who has practiced IP law for a few years can attest to the transformations happening in the US Patent Office over the last year.  In my opinion, Director Kappos is more than a breathe of fresh air over his predecessors, he actually knows what he is doing!  Also, regardless of what one may think of President Obama’s other policies and actions, one cannot question that his leadership is resulting in real attempts at innovation in the arguably previously moribund Patent Office.

As a experienced patent practitioner, the last several years have been very demoralizing.  I actually made the decision to stop working as a patent prosecutor because, quite simply, I became weary trying to educate junior examiners about the deeply nuanced intricacies of patent law.  Worse was trying to explain to clients why their patent application covering an important commercial innovation could not get approved in the Kafkaesque environment of the circa 2000′s US Patent Office or why their competitors were seemingly able to get ridiculously broad patents covering the prior art.

From my vantage point as a 15+ year patent professional, it is clear that the absence of experienced leadership in the Patent Office in recent years served as a primary cause of the problems that we face today.  Those thinking I am overstating this point would do well to remember that the first Director of Patent under President George W. Bush brought to the job the stellar credentials of having been the Chief Prosecutor of the Clinton impeachment trial, who needed a safe place to land after losing his Arkansas reelection bid.  (One must wonder whether he knew what a patent was before he took the lead role in Patent Office.)  The second Director, Jon Dudas, was only slightly more qualified:  as a former legislative aide, he had probably seen a patent before being appointed to head of the Patent Office, but not much more.   And, the appalling lack of competent leadership in the Patent Office occurred at the time the number of patent filings was increasing markedly:  in 2000 there were approximately 330K patent filings versus about 435K in 2006.  In my opinion, things went to Hell in Hand-basket in the Patent Office from 2000 to 2008. Continue reading →

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Posted in: Commentary, Patent Staffing, US Patent Office, patent reform, uspto.
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Patent Applicants: Get Your Attorney on the Phone to the Examiner–NOW!!!

May 21st, 2010
by Jackie Hutter, IP Strategist.
1 comment

Sieze the Day: Take your patent allowance!

A couple of couple of weeks ago, I wrote a detailed post about how the US Patent Office seems to be in a deal-making mood.   Today, Dennis Crouch of Patently-O posted data that demonstrates that in the last  weeks, the Patent Office has issued more patents than in any 2 week period in history!   We don’t know how long this will last.  I highly recommend that anyone who has been waiting for a patent to issue get the patent examiner on the phone as soon as possible to see how the case can be passed to allowance.   Not all patent applications will be allowable, of course, but many will be, as shown by the actual data and anecodotal information from patent bloggers like Dennis Crouch and myself.  CARPE DIEM!

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Posted in: Commentary, Intellectual Property Strategy, Patent Business Strategy, Patent Staffing, US Patent Office, uspto.
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Have a Pending US Patent Application? There’s Never Been a Better Time to Make a Deal with the Patent Office

May 7th, 2010
by Jackie Hutter, IP Strategist.
2 comments

The US Patent Office is in a deal-making mood.

The US Patent Office is in a deal-making mood.  Really.  Ever since Director Kappos told his examiners last Fall that “patent quality does not equal rejection,” I have heard many stories about how patent applications that appeared to be stuck in the limbo 0f serial rejections are now being allowed.  Those of us who talk about such things online are in agreement that we may be operating in an unprecedented favorable environment of patent allowances.   The data bear out this anecdotal evidence:  patent issuances are up 35%  this year over last year.

My sense of what is happening, which has been confirmed by other experienced patent folks to whom I have spoken, the perspective of the Patent Office has changed.  The consensus is the U.S. patenting process is much less adversarial today.  In recent years, examiners were effectively told by the Patent Office administration that “there needs to be a reason to allow an application.”  This has now changed to “there needs to be a reason not to allow an application.”  This is a subtle, but critical, difference.  In the former viewpoint, the gate for allowance is closed and needs to be opened prior to letting the applicant pass through.  In the latter, the gate for allowance is open and needs to be closed in order to deny an application.

This change in perspective has resulted in many cases tied up in the Patent Office with “bogus” rejections being allowed for no apparent reason.  Is it possible that SPE’s (i.e., Supervisory Patent Examiners) are reviewing cases and telling their staff to allow cases where the prior art does not suffice as a suitable rejection?  I think this is the case in many art units. Continue reading →

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Posted in: Legal Costs, Patent Staffing, Uncategorized, ip, uspto.
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Patent Information is a Necessary Calibration Tool: How the Pilgrims’ Journey is a Metaphor for the Innovation Process

May 4th, 2010
by Jackie Hutter, IP Strategist.
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Use proper calibration to make sure your innovation processes end up in the right place.

Regular readers of this blog will recognize that I am a strong advocate of the use of patent information in the front end of innovation processes.  (More on this here, here and here.)  Relatively few innovation professionals actually do so, however, likely because it can be difficult for innovators to understand how to change the longstanding paradigm where lawyers are perceived to be the people who “put the ‘no’ in innovation.”  Put simply, I find that innovation professionals prefer to leave anything smelling of legal advice out of the front end of their processes because they think they will not be able to do their jobs if the lawyers show up to their meetings.

Of course, it makes little sense for innovation professionals to make significant business decisions involving new products or technology without also knowing whether they will be able to own the fruits of their innovations or whether a competitor will be able stop them from moving forward.  To this end, I have been working for sometime to develop a metaphor to demonstrate how the use of patent information can improve the outcome of innovation processes.  And, I think I have succeeded in doing so–in one word:  PILGRIMS.

Yes, I think the use of patent information in the front end of innovation processes is much akin to the Pilgrims’ journey to the New World.   Specifically, the Pilgrims did not intend to end up in Plymouth, Massachussets when they left England.  They instead wanted to end up in Manhattan.  But, a very small calibration error on the front end of their journey caused them to deviate from their intended destination.  This error resulted in their ending up in a much less hospitable place (at least in the Winter time).  Moreover, their “competitors”–the Dutch–ended up in Manhattan in their stead.  It took many years, and considerable effort, for the British to acquire Manhattan.

Applying this metaphor to the front end of innovation processes, we can say that, when used with other metrics, patent information can improve calibration.  Significantly, this information cannot tell one where the innovation process will end up or whether the product or technology will be a gangbuster when it hits the market.  Patent information can nonetheless give one a signal of whether the innovation process will be limited by third party patent rights or whether ownership is likely.

I discuss this in more detail in this YouTube video prepared for the Baldwin-Wallace Open Innovation Forum at which I will be attending on May 18, as well as this presentation that I made at PaperCon 2010 on May 4, 2010.

So far, I have seen the proverbial “lightbulb go off over heads” when I compare patent information in the innovation process to the Pilgrims’ journey to the new world.  I invite others to let me know what they think about this framework, as I believe it is critical for we patent professionals to be better able to speak the language of innovators so that they include us into their processes.

Photo: Flickr/Glacial Wanderer

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Posted in: Innovation Strategy, Intellectual Property Strategy, Open Innovation, Patent Analytics, Patent Business Strategy, Patent Landscaping, innovation.
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Jackie Hutter Speaking at the Minneapolis May LES Meeting

Apr 28th, 2010
by Jackie Hutter, IP Strategist.
No comments yet

I love meeting my online friends and collaborators IRL (“in real life”).  If any of you are located in the Minneapolis area, please consider attending May 11, 2010 LES meeting where I will speak on collection and analysis of patent data.   I am being sponsored by this event by my client Clyde Hanson of Venture Isles.

Here is the information as circulated by Mr. Hanson:

You are welcomed to attend the luncheon even if you are not a member.  Ms. Hutter is an advisor to Venture Isles and we have worked together on many projects.  She is a self-described “recovering patent attorney”, a prolific blogger and a sharp intellect so it will be a high-energy event.  The food is by D’Amico has been consistently good.  Save room for dessert.  Please register at: LES USA/CANADA

How to Properly Collect, Analyze and Leverage Patent Information to Enhance Your Licensing Programs

Speaker: Jackie Hutter, MS, JD    The Hutter Group:  IP Business Strategy

Patent data can provide much value to licensing programs by allowing one to identify potential licensees, partners or infringers.  However, one must know how to collect and analyze such data in a way that provides relevant and actionable insights.  An experienced law firm and corporate lawyer, who is an IP Strategist, will provide instruction and watchouts for those who are currently or who are looking to utilize patent analytics and landscaping products in their organization’s licensing programs.

COST $35

DATE May 11, 2010, Tuesday  11:30 am -1:00 pm

LOCATION
University of Minnesota-Minneapolis Campus

McNamara Alumni Center
200 Oak Street SE
Ski-U-Mah Room
Minneapolis, MN  55455

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Posted in: Patent Analytics, Patent Landscaping.
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Much Ado About Patent Marking: Why It is So Hard for Corporations to Get It Right and Why False Marking Lawsuits Might be a Good Thing Overall

Apr 16th, 2010
by Jackie Hutter, IP Strategist.
5 comments

Misalignment between patent and business functions is the underlying cause of false patent markingIt is fairly rare for patents to make hit the radar screen of mainstream news outlets but, recently, there has been much space allotted to the issue of patent mis-marking and lawsuits being brought by third parties for “violation” of the law requiring that products cannot be marked with an incorrect patent number.  Indeed, the usually substance-free local paper in my mother’s Southwest Florida community reported about the flood of patent mismarking lawsuits.  And, it is no wonder that the undoubtedly arcane issue of patent marking has reached the status of “news” in a small-town paper given the huge number of cases currently pending in the federal courts.  It seems as if patent marking litigation may be the new business model for trial lawyers who are looking for a new “gravy train” to extract substantial legal fees from corporations whose activities violate the letter (but not necessarily the spirit) of the law.

First, an explanation:  U.S. patent law expressly dictates that products should be marked with the number of patent(s) with claims that cover that same product.  If one does not mark the product, the patentee cannot obtain damages for infringement that occurs either prior to its giving “actual notice” to the infringer (such as by letter or the like) or its bringing of a lawsuit. Moreover, the patentee cannot obtain damages for infringement occurring before actual notice to the infringer. The marking statute not only sets forth and affirmative duty to mark a patented product, it also provides punitive measures for inaccurately marking a product with a patent number.  Specifically, the law states that false marking is punishable by a fine of up to $500 per occurrence.

It is this punitive provision of the law that has given rise to the flood of lawsuits in the last couple of years.   A cynic might view these lawsuits as a new business model for trial lawyers who are feeling the pinch of decreased patent litigation suits.  Others might feel that there is no reason to shed any tears for corporations that cannot get it together enough to mark their products with their patent numbers–that is, how hard can it be, right?

In truth, under existing corporate IP paradigms, it is quite difficult to mark products  correctly.  This blog post provides a practitioner’s eye view to why this is the case.  ( Those seeking more information about the specifics of patent marking should look here and here.  For more on the details of the third party marking lawsuits making the news lately, check here .) Continue reading →

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Posted in: Commentary, IP Culture, IP Monetization, Intellectual Asset Management, Intellectual Property Strategy, Patent Litigation, Patent Staffing, Patent Strategy, Uncategorized, ip.
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Innovation Professionals–Take Charge of Patents to Ensure ROI of Your Efforts (includes a case study)

Mar 30th, 2010
by Jackie Hutter, IP Strategist.
3 comments

Innovation professionals must work closely with patent lawyers to ensure desired ROI of their efforts is achieved

Recently, I have been spending considerable time working with innovation professionals to demonstrate the value-creation opportunities available by embracing IP strategy as an aspect of their processes, and why patent drafting should be an aspect of their roles and responsibilities.  More specifically, my efforts have focused on why and how patents matter to the ROI of corporate innovation today.  Most business people would likely acknowledge that patents are important to protect their products from competition, however, the vast majority of the innovation professionals whom I meet have no idea how critical patent strategy can be to the success of their business plans.

Modern innovation processes typically start with identification of a consumer need or the like.  In so doing, the innovation team undertakes detailed research to draw dimension around a product that will solve this consumer need.  This research will be directed toward identifying the multiple ways the consumer need can be addressed.  For a number of reasons–some of which will be related to specific competencies of the company–only one of these ways will be selected as the go-to-market product strategy.  By the time the product is fleshed out, these myriad alternative ways to solve the consumer need will be left by the wayside when the patent application is prepared.  This means that the resulting patent intended to protect the innovative product from competitive threats will not successfully do so.

Let me be clear here:  most patent attorneys competently work with their clients to obtain claims as broad as possible.  This means that a patent application covering a product design will typically encompass a variety of different product designs.  However, the broadening of the claimed product will center on the actual product design.  This claim broadening exercise will almost always occur between the inventor (i.e., R & D personnel) and the patent attorney.  The inevitable result of this siloed patent drafting process is that the detailed research conducted to identify and solve the consumer need is not considered in preparing the patent application. Continue reading →

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Posted in: IP Culture, Innovation Strategy, Intellectual Asset Management, Intellectual Property Strategy, Patent Business Strategy, Uncategorized, innovation.
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