Monthly Archives: February 2011

Clients Save Money and Get Better Patents When Attorneys Use This Solution

Many of the tedious aspects of patent drafting can now be automated.

As a “recovering patent lawyer,” I now realize that I wasted a whole lot of my clients’ money over the years because of the inherent inefficiencies that have been built into patent practice.  In this regard, I wrote about the money wasted by old fashioned patent filing systems in this post a while back, a fact which I think dictates that clients insist that their lawyers adopt electronic filing systems.  I have also written about the money wasted as a result of the inability of many clients to judge the value provided by their patent lawyers, which I believe is a result of information asymmetry.

Another waste of money comes from the time needed to review patent filings during the drafting process.  The highly technical nature of patent application and claim drafting requires detailed review of an application on multiple occasions prior to filing.  Each review requires the time of the drafting attorney, who is often backed up by an attorney with an even higher billing rate, and the client pays for this time.   What the attorney is looking for in these reviews typically involves “fly specking” the application for insertions or omissions that could affect the scope and validity of the issued patent.  While these issues are highly technical, they are not hard for an experienced attorney to identify, but this requires costly attorney time.  On the other hand, less experienced or poorly trained attorneys often miss these important components of patent drafting and, as a result, the issued patent could be defective or even invalid.

At the end of the day, however, the fly specking of  a patent application prior to filing is an incredibly tedious process for most attorneys.  Indeed, this was often identified as one of the most dreaded parts of the patent filing process by my patent attorney colleagues.  When I was drafting patents on a regular basis, I often wished for a way to automate the tedious process of patent application review.  (I recently assisted in drafting a patent application for my own start-up and told warned by business partners and family that I was likely to be “grumpy” until it was filed.)

About 1.5 years ago, I was very pleased to find out that an intrepid patent attorney apparently thought like me that “there has to be a better way,” and created a software program to automate some of the more tedious aspects of patent practice.  Dmitry Brant, an associate at Fish and Richardson, gave me a free trial of his Patent Claim Master software, and I absolutely love it.  In this previous review of the software, Dmitry indicates that he was frustrated with the tedious aspects of patent drafting, and figured he could automate part of the process.  I don’t expect he will get rich from this software at its very reasonable price, but I am sure many of us patent geeks are glad that there was someone who not only recognized the need, but who had the technical ability to actually fix the problem.

The quality checking features of the software are clearly a major innovation in patent drafting.  But, since I no longer prepare patent applications on a regular basis, I really don’t have a need today for the drafting aspects.  Instead, I have been using Patent Claim Master regularly for creating claim charts, another tedious and time consuming process.   After years of preparing claim charts the traditional way (ie, either cutting and pasting unformatted text from the Patent Office website or, worse, retyping the text into a new document), I am amazed by the ease with which one can prepare a claim chart to review one or several patents.  I literally exclaimed “wow!” the first few times I used Patent Claim Master to prepare claim charts.

There is a downside associated with the use of  Patent Claim Master, however.  A patent attorney and her staff using this software will be able to bill fewer hours, which will result in the attorney making less money unless she can back-fill the time with additional, non-automatable, work.  But this “downside” begs the question of whether clients will benefit if their attorneys use this software.  Patent Claim Master is a win-win for anyone who pays for an attorney to prepare patent applications on their behalf:  the final product is potentially better and takes less time for the attorney to prepare.  And, for claim chart preparation, the client obtains a high quality product–likely better than than the attorney or her staff can prepare for what should amount to almost no attorney or staff time.

Notwithstanding the loss of billable hours that will occur with an attorney’s adoption of Patent Claim Master, this software should be seen as improving the job satisfaction of many patent attorneys, at least those who believe that they can do better work for their clients by focusing on the value-added aspects of the practice.  For attorneys who have this mind-set (and who also presumably have plenty of work to do), I strongly recommend Patent Claim Master.  For attorneys who think it’s better to rely on the old-fashioned way of time-based review of patent applications, you’re free to keep using your quill pens, but just hope your clients don’t find out that your competitors are using computers.

Open Innovation Insights: 5 Biggest IP Legal Mistakes Small Companies Make When Working with Large Companies

Small companies CAN effectively partner with large companies in Open Innovation

Open Innovation guru Stefan Lindegaard recently asked me what the biggest IP legal mistakes small companies make when they are working with large companies.   This is a subject very near and dear to my heart, as I am currently “moonlighting” as GC of a start up energy company that is moving toward licensing our technology into large companies.  Also, as a senior IP lawyer at a multi-national consumer products company, I was on the other side of such deals on more occasions than I can count.  Prior to that, I was a law firm partner representing large and small corporations in patents and licensing issues, and in doing so, I now realize that I killed more deals than I ever facilitated, a situation that is more typical of law firm lawyers than it should be, unfortunately.

In view of this multi-faceted experience, I present this list of the 5 most common mistakes companies make when working with large companies in Open Innovation.

1.  Thinking you have all the answers for the large company’s problems:

As a small company, you often have only have a single idea or technology and you quite properly focus your attention in this direction.  This can be damaging to your ability to do complete an Open Innovation deal with a big company, however.  The large company may not care about what you see as the value of your technology because they are the experts in their products and customers.  Indeed, you may be wholly wrong about why the large company is interested in speaking to you. If you want to sell or license your technology to a large company, your best bet is to focus on the specific technology aspects, and leave the business and customer issues to the other side, at least at the early stages of discussion.

2.  Bringing the wrong lawyer to the table:

Very often small companies assume the lawyer who handles their intellectual property issues is the appropriate person to bring to a conversation with the big company.  However, the legal skills a small company needs to obtain its patent rights are very different than what are needed to get a deal done.  While protection of your small company’s IP should be paramount in any dealings with the large company, putting up complicated restrictions about the use and ownership of your IP even before you know a deal is likely to happen, which is the natural inclination of most IP attorneys, can often end up in the other party walking away before a deal is even underway.   I have found the best lawyers to negotiate deals in the Open Innovation context  are business-focused attorneys, who tend to be people who have served a stint in the corporate world and who might even have little experience with high-end IP issues.  It can be tough to find someone with these credentials, however.  As an alternative, I like to work with licensing experts, most of whom have successfully closed most deals in a year than many law firm IP lawyers see in their entire careers.  These licensing experts are frequently not lawyers, but they have negotiated enough agreements to be very good at spotting the legal issues and, in this regard, they often do a better job than lawyers. Continue reading