Strategic Patenting: How To Get it Right (Guest Post)

This article, by Francis Hagel, first appeared in Intellectual Property Magazine. It provides strong guidance, in checklist form, for those seeking to beat the odds that the patents they obtain will actually generate strategic value. Mr. Hagel is an IP strategy advisor from France. The article is reproduced with permission. “Suggestions for strategic drafting of patent applications” In the drafting of a patent application, a practitioner starts from a blank page[i]. He/she enjoys the greatest freedom for shaping its content on the basis of the information at hand concerning the invention, its context and the prior art of interest, within the constraints set forth by patent law in the country of filing, keeping in mind the specifics of patent law in the major markets for the invention. This freedom applies to all parts of the application : definition of the technical field, description of the prior art, statement of purposes, description of embodiments and results, claims. There are thus myriad decisions to be made.  Based on the understanding of the applicant’s objectives,  the practitioner can  ensure such decisions are in tune with these objectives. This is what can be called a strategic approach to the drafting of a patent application. Continue Reading →

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 way for un- or under-employed patent lawyers to generate income after the rash of layoffs and firm closings in the last few years. For patent lawyers representing corporations, false marking cases may seem like a pain for clients, but something which nonetheless leads to business if a suit is brought against his client.  But, in reality, the uncertainty raised by the current rash of Continue Reading →

Companies Adopting Open Innovation Must Incorporate Patent Information at the Front End

(Editorial note:  This is a repost from this blog over 2 years ago, but the content is more relevant than ever.  On January 20, 2010, I am participating in a Yet2.com webinar with Ben DuPont and Jason Lye where we will be sharing our thoughts about marketing technology to “non-traditional” technology buyers, many of whom come to the table because they are adopting Open Innovation into their product and technology development processes.  I thought this “classic” post would be a good overview for anyone of my viewpoint for those who find my blog as a result of this event.  For regular readers, well, I hope you enjoy this too.  I will post a link to the recorded webinar when it is available. ) Open Innovation is unquestionably becoming a “hot” area of focus for U.S. companies, especially in the current economic climate in which businesses are more than ever focused on smarter ways of doing business. And, why wouldn’t Open Innovation be an intriguing business model when companies can fill their product and technology pipelines for significantly lower cost and with more variability of ideas than typically is possible from their own R&D infrastructures? As a result, more and more Continue Reading →

False Patent Marking Lawsuit Update: A Tale of Successful Defense Strategy

In November, 2010, I wrote a blog post where I talked about a client who was sued for false marking, even though they had months before the suit changed the packaging of their product.  We subsequently obtained a good result with our litigation strategy, and I think others may benefit from this experience.  Moreover, I think it is important for we lawyers to share strategies for the overall benefit of our respective clients.  This is not done enough:  we legal experts all-too-frequently provide sagely advice from the comfort of our own siloed client experiences.  For the past 3 years as a blogger, I have been working to build a more public dialogue on IP strategy, and did not want to let this opportunity go by to let others know of a successful strategy in dealing with a false marking litigation.  (I feel comfortable sharing my experiences with this litigation, which I think others can benefit from, because my relationship with this client is confidential.  I work for them as a consultant on various IP strategy and innovation management issues, and I have been helping out with this matter to my patent litigation background.) As related in the November blog post, Continue Reading →

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 Magazine.) Unfortunately, where you stand also depends on where you sit, and sitting behind a desk writing or examining patents may color your belief that patents are the cure for America’s innovation ills.  (The cynic would likely note that relying on a patent practitioner or the Commissioner of the US Patent Office Continue Reading →

GSU Corporate IP Roundtable on November 4 and 5: A Great IP Event at a Great Discount

Many of you who read my blog also follow my Tweet Streams when I am at conferences.  Last Fall, I blogged from the Georgia State University Corporate IP Institute.  Several people admonished me for not letting them know beforehand that the event was occurring, so this year I am giving everyone advance notice, as well as providing folks with the ability to attend using my discount code. The 2010 GSU Corporate IP Institute will be on November 4-5 at Georgia State University.  Unlike most IP-related CLE’s, this event generally is light on the case law citations, and heavy on practical tips for those who view IP as a primary form of business value today.  (Editorial note:  if you are a case law geek, then this is not the event for you–but if you are a caselaw geek, why the heck are you reading this blog anyway?!) The full details are in this brochure, but one super highlight is that on the 4th, Ray Niro will go up against Dan McCurdy to discuss IP monetization–those in the know will recognize that this is like having matter and anti-matter in the same room!   This will be my 4th year attending this event, Continue Reading →

Want to Know More about IP Strategy? A Selection of Posts for In-House and Outside Counsel

This week, I am speaking at the Midwest IP Institute.  I will be participating in a “fire side chat” with my good friend, Edna Vassilovski of Stoel, Rives LLP. Our session is entitled “How Patent Prosecutors and In-House Counsel Can Provide Work Product Better Aligned with Client’s Business Needs.”  Specific topics we will discuss include: How clients’ views of IP and intangible assets are changing and ways both inside and outside counsel can stay relevant to clients today; What you can do to help clients obtain meaningful patents at reduced cost; How to really understand clients’ business goals and how to help make those happen; and How to help clients monetize their patents I am really looking forward to sharing my passion for IP business strategy with in-house lawyers and outside counsel, especially since I will be doing this with someone like Edna who I think has a great grasp on client service from a business perspective.  In preparation for this talk, and for the benefit of those attending the the session who would like to learn more about my perspective, I thought it made sense to revive some previous blog posts from the past couple of years where I 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 →

An Innovation Expert Sticks Up for IP Lawyers!

Regular readers of this blog know that I strongly believe that IP lawyers can do a whole lot more to better serve the needs of innovation teams.  Much of the disconnect between what IP lawyers do and those of their innovation clients can be traced to misalignment of incentives, as well as a structural and cultural impediments that makes it difficult for legal and business experts to communicate and work well together.  Last week, along with my good friend Deb Mills-Scofield and Mike Riegsecker of Menasha Packaging, I co-led a workshop on this topic at the 2nd Annual Open Innovation Summit.  The workshop was well-attended, and the response was very positive. Also, it appears that my message got through to at least one attendee, who is a prominent innovation consultant.  Keven McFarthing of Innovation Fixer wrote this post in which he asks open innovation professionals to not just look at their IP lawyer as an “extraneous irritant,” but instead as a member of the team.  Kevin also provides these recommendations: Ideally, make the lawyer a member of the formal team. If that can’t happen, treat them as if they are on the team. Don’t leave the final decision up to Continue Reading →

Corporate Business Leaders: Want to Create Value from Your IP? Stop Making it Your Lawyers’ Problem.

One of the biggest complaints I get from corporate innovation and product development professionals is how risk averse their lawyers tend to be about dealing with intellectual property (“IP”) issues.  It doesn’t matter whether these business people are talking about their outside or in-house lawyers, either.  To a person, the complaint generally tracks the contention that their IP lawyers “don’t get what they do” and, as a result, make it more difficult for them to meet the objective of adequately filling their product pipelines and introducing innovative new products that will keep the lights on at their corporations. I have written and spoken about this topic on several occasions.  But, recently, I have been thinking a lot about the issue of risk aversion and IP lawyers for a couple of reasons. First, I am co-leading a workshop at the 2nd Annual Open Innovation Summit next week in Chicago with my good friend Deb Mills-Scofield and Mike Riegsecker of Menasha Packaging.  In this workshop, we are going to discuss our experiences with corporate culture and incentives as these relate to achieving success in the world of Open Innovation.   Much of what I am going to talk about is how those seeking Continue Reading →