Fallback Image

Software Patent Apocalypse?

end-is-near-apocalypseThe data coming out of the district courts and the USPTO make it fairly apparent that the "Software Patent Apocalypse" may be here, at least for the foreseeable future. This result has been widely predicted since the US Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank International earlier in 2014, but facts now are coming out to demonstrate that the next few years will be tough for those who seek to obtain patent protection for inventions that fall into the realm of software.

We saw initial data from the district courts a couple of months ago when Timothy Lee of Vox.com presented data showing that a number of software patents had been found invalid as failing to claim patentable subject matter (a "Section 101 rejection" to us patent types) under the Alice rationale in

Fallback Image

False Marking Lawsuits are Real Problem for Business and Make Little Sense When Applied to Expired Patents

The threat of false marking lawsuits has garnered much attention in the IP business press in the last couple of years.  Companies of all sizes have been hit with qui tam actions (that is, suits brought by an individual or company on behalf of the US government to right wrongs done to the government, not the individual) where the basis of the action is the mis-marking of a product with an incorrect or expired patent number.  Like a gold rush, these lawsuits have resulted in a number of legal entrepreneurs seeking out products that are incorrectly marked--usually by identification of expired patents, which is an easy thing to find--and their bringing suit against the offending companies.  Indeed, there were over 500 false marking lawsuits filed in 2010, making this cause of action seem almost like a

Fallback Image

We’re Measuring the Wrong Things: Inventiveness and Patents Do Not Equal Innovation

Few things infuriate me more than supposed experts who make statements along the lines of "patents are critical to innovation."  I have avoided stating my views widely in this forum because I didn't want to get into a contest of one upmanship with my patent lawyer peers.  However, in the last couple of weeks, several pieces of information have hit my radar screen that make this seem like the right time to go public with my views. Let my position be very clear:  we create a false dichotomy when saying "innovation is not possible without patents."  The issue is much more complex and nuanced than this:  in a particular instance, patents may be critical to innovation, but they might also be only slightly important or--likely in the majority of situations--they might be wholly irrelevant to innovation.  (I talk more about this in this recent interview in Innovation Management

Fallback Image

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

Fallback Image

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

Fallback Image

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