Google Changes the Game Again–This Time for Patent Owners and Those Who Serve Them

Patrick Anderson of the great Gametime IP blog reported the details of Google’s new prior art searching tool*.   This is such important news, I thought it important to repeat it in a separate post.  Patrick provides detailed instructions for how to use the Google patent searching tool, and I will not repeat that information here.  This post provides commentary on why I think this is a very good development for the patent world.   Google’s original announcement on its blog is here.  It does not appear coincidental that Google is upgrading its patent searching capabilities:  in this press release from June 2010 we are informed of the partnership between Google and the USPTO to increase the amount of US patent information available to the public. When used correctly, Google’s tool can help “democratize” the patent analysis process by putting more power in the hands of those who are not part of the closed “guild” of patent professionals.  For example, before spending money on a search (and the opinion that most patent professionals will insist on writing to put context to the search), an inventor can herself get a feel for not just the patentability of her invention, but also Continue Reading →

Contrarian Viewpoint: Patents Likely Matter Little to US Innovation and Job Creation

Many experts insist that innovation cannot succeed without patents, and that the delays in the US Patent Office stifle innovation.  This viewpoint is like to become more widely believed by the public as US Patent Office Director Stephen Kappos sees a way to improve the dismal operations of the Patent Office by equating patents as job creation tools, which necessarily requires patents to be asserted as critical for innovation to occur. I believe it is highly misleading, and even harmful in many cases, to say that patents are the end-all be-all to innovation.  I also think that fixing the Patent Office–which will invariably mean that more people will see value in obtaining patents to support their business idea–should be viewed more as a job creation engine for patent attorneys and those who support them (including Patent Office employees), as opposed to creating jobs that can help improve the dismal employment figures the US is experiencing today. No doubt, it is true that patents are necessary to create value from many innovations, and that jobs can then result when the patent owner is able to build a business around the idea (assuming the company and its employees are actually present in Continue Reading →

Innovation is Sprouting in US Patent Office: A Plea for Flexibility from Patent Practitioners and Interested Parties to Allow the Necessary Changes

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 Continue Reading →

Have a Pending US Patent Application? There’s Never Been a Better Time to Make a Deal with the Patent Office

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.  Continue Reading →

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.) 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 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 new Patent Office Administration has hit the ground running.  In Continue Reading →

The US Patent Office’s Impending Financial Crisis and What Sort of Disruptive Innovations Might be Seen as a Result

My postings have been light for the past few weeks because of the Holidays. I plan on re-posting regular content after the New Year. Nonetheless, I couldn’t help posting something this week during my vacation after coming across this wonderful analysis of recent patent issuances post-KSR from Matt Buchanan of the Promote the Progress website and blog. Matt’s analysis of PTO issuances over the past several years shows that KSR definitely had an effect on the number of patents issued in the last year. What is obvious from Matt’s 2008 issuance data is the fact that the PTO experienced a significant decline in revenue over the past year due to the reduction in issue fees paid by successful patentees. Moreover, this revenue decline will certainly be felt over the next 10 plus years as a result of a reduction in maintenance fees that would have been paid for these issued patents. When coupled with the current economic crisis and the need for the U.S. government to fund agencies and projects that are arguably much more critical to the health of the national economy, there is no doubt that the PTO will be faced with a significant revenue shortfall in the Continue Reading →

Who Cares if the Patent System is Broken? Making Lemonade from the Patent Office’s Lemons

Is the patent system broken? I am now an IP Strategist and owner of a patent strategy and consulting company, however, I spent many years in the trenches working to prepare and file U.S. and foreign patent applications for large and small companies of varying levels of sophistication. From my experiences, there is no doubt that there are fundamental problems with the U.S. patent system, as well as the patent systems of other countries. As one example, I frequently experienced frustration dealing with patent examiners who clearly did not understand the basic rules of patentability, even when these rules are clearly spelled out for all to see in their manual. In recent years, it started to seem that I was dealing with the “no patent office,” instead of the Patent Office.This blog post is not about the problems with the patent system, however. The reality is that the patent system is what it is, and your company cannot wait until the patent system is fixed to jump into the patent game. (For a good summary of the arguments regarding the problems with U.S. patent system check here: http://www.news.com/Fixing-a-broken-patent-system/2010-1014_3-6212615.html). As with many things in life, if you wait for perfection, you Continue Reading →