Monthly Archives: November 2009

Guest Poster David Boundy: A Detailed Examination of What the Proposed First to File Legislation Means to Business

(Editorial Note:  Last week, I posted my thoughts on the proposed changes to the US patent laws from a first to invent to a first to file system.  In response to my post, I received an exceedingly detailed and substantive comment from David Boundy, Vice President, Ass’t Gen’l Counsel, Intellectual Property at Cantor, Fitzgerald.  (David wanted me to say that this post his personal view, and does not reflect the views of Cantor, Fitzgerald.)  David’s viewpoint on what the proposed legislation will mean to business deserves a forum, and he has graciously allowed me to post his comment in total on the IP Asset Maximizer Blog.  Anyone who works with business to generate patent assets should be concerned about the proposed changes.)

David Boundy of Cantor, Fitzgerald

David Boundy of Cantor, Fitzgerald

About guest poster David Boundy:   David Boundy has spent over a decade on Wall Street, first in several of New York’s most prominent law firms, now as in-house counsel at one of Wall Street’s largest investment banks.   In several years of his career, David as one single lawyer moved more money around based on patents than the entire federal judiciary combined.   David believes that litigation costs and damages should be irrelevant to the current patent reform debate; what matters is the effect on investment flows.

David Boundy’s views on the proposed First to File legislation:

I concur with Jackie on the narrow points of her last paragraphs from her post of last week:  IF the proposed legislation simply changed § 102(g) from “before such person’s invention thereof” to “before such person’s effective filing date,” and IF the currently-pending legislation left in place §§ 102(a) and (b) so that an inventor can “swear behind publications” (don’t forget prior use and sale!), “but not [behind] previously filed patent applications that claim the same or similar invention,” then I think the new statute and first-to-file might work.  As Director Kappos wrote in his blog, IF that were the proposal, the number of affected applications would be small. Continue reading

A Closer Look at the Patent Office’s New Conversation about Adoption of a “First to File” Rule and a Proposal for a Win-Win for the Patent Office and Inventors

(Editorial Note:  Regular readers of the IP Asset Maximizer Blog might find this post an departure from the usual topics discussed on this blog.  In the almost 2 years I have been blogging, I have consciously avoided talking about specific aspects of patent law, both in the form of case law, patent reform efforts and the US Patent Office itself because I believe there are many great blogs that do a great job that frequently discuss these topics and that I can likely add little to the already substantive discussions occurring elsewhere.  However, given the great significance of the so-called “first to invent” system to the interests of individual and corporate inventors alike, I felt it appropriate to weigh in on the conversation.  Put simply, any changes in the first to invent rule must clearly flesh out and respond to the resulting effects to businesses of all sizes, as well as unintended consequences that might occur to the operations of the US Patent Office.  I think my business-focused approach to this topic may provide a perspective not seen on the other blogs discussing this topic.  I welcome your comments.)

The first to invent rule is arguably the "third rail" of the US patent system.

The first to invent rule is arguably the "third rail" of the US patent system.

The new Patent Office Administration has hit the ground running.  In just a few months at the helm, David Kappos and his crew have rescinded the controversial continuation rules that had the patent community in an uproar for 2 years, advised the examiner ranks that patent quality does not equate to rejection of applications and has started realigning patent examiners’ workplace incentives so that they are less inclined to reject otherwise allowable applications.  These are all good signs that Mr. Kappos, as well as his boss Commerce Secretary Gary Locke, are serious about fixing the often-Kafkaesque bureaucratic mess that the US Patent Office has been over the past several years.  But, like many things we have seen from the folks in the Obama Administration, these efforts–which only 2 years ago would have seemed almost revolutionary–appear modest now that the Patent Office seems to be reaching for the “third rail” of the US patent system:  the first to invent rule. Continue reading

Seeking to Sell Your Patent to a Big Company? Think About These Negotation Tips

Ask the right business questions to succeed from a position of lesser bargaining power

Ask the right business questions to succeed from a position of lesser bargaining power

Over the past year of so, I have become friends with Victoria Pynchon, an accomplished California litigator and ADR expert.  She is a great source of information for people seeking advice in the area of ADR and negotiation, whether IP or otherwise. 

Victoria has just posted some information that I think will be of great use to any entrepreneur or start up that is seeking to sell their patent(s) to a larger entity.  Except for very rare circumstances, these IP owners will be at a significant disadvantage in comparison to the company to which it seeks to sell.  This post, entitled “More on Bargaining from a Position of Weakness” should be the first step before any small IP owner approaches the possible purchaser to help them understand how to succeed in the typically highly uneven bargaining process.