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A responsive patent system requires time and participation: a response to Jay Walker’s IPAS 2018 speech

GUEST COLUMN:

At the IP Awareness Summit held at the Columbia University on November 29 Jay Walker, entrepreneur, prolific inventor, TEDMED curator and founder of Priceline.com, spoke about a “broken” patent system and need for a Constitutional Convention to fix it. In the following response to Walker’s speech, Brenda Pomerance takes a different view. 

 

Improving the Patent System:

Independent Inventors Need Apply

By Brenda Pomerance

At the IP Awareness Summit held by the Center for Intellectual Property Understanding on November 29, 2018 at the Columbia School of Journalism, Jay Walker gave a keynote presentation asserting that the Patent System was irreparably broken for individual inventors lacking “deep pockets.” He based his position on five problems, and called for an entirely redesigned Patent System.

In fact, two of these problems are features, not problems. The existing Patent System can be tweaked to provide individuals with a fairer playing field for the other three problems.

First, clarity: Walker says that patent claims are impossible for him to understand.

Lack of clarity, for laypersons, is due to the need for a claim to only distinguish from the prior art, not to explain how to make an invention and to distinguish that invention from the prior art.  Walker can eliminate his clarity problem by telling his patent attorney to write claims that are essentially a production specification for the invention, but the scope of these claims will be much narrower than is needed. Examiners will love these production specification claims and prosecution will be faster.

Also, the Patent System enables a claim to encompass something that the inventor did not specifically think of when the patent application was filed, if claims are suitably written and there was no discussion of this issue in the prosecution history, but an inventor can relinquish this flexibility via clearer claims that are limited to exactly what the inventor invented.

Second, reliability: Walker says that because so many patents are invalidated, a patent is not a reliable property.

Walker can hugely improve validity by telling his patent attorney to write claims that will survive most litigation challenges (a very high standard), rather than claims that an examiner will allow (a lower standard). But, the inventor will have to (a) do the comprehensive prior art search that litigation defendants do (costing up to $100,000 for the search), then (b) figure out why it would not be obvious-to-try to combine this prior art to arrive at the invention, and finally (c) explain non-obviousness in the disclosure, which requires a detailed in-context understanding of each piece of prior art and vastly more care expended on the background section of a patent application.

An excellent prior art search along with an explanation distinguishing the claims from the prior art will speed up prosecution, but will substantially increase the cost of patent application preparation, possibly making it too costly for shallow pocket individuals.

Third and Fourth, cost and time: Walker says that it is too expensive and takes too long to enforce a patent.

Here are some tweaks to address enforcement cost and time problems:

(A) Require that all prior-art based challenges to a patent be presented in an IPR Request that is filed within nine months (not one year, to reduce gamesmanship of multiple IPR filings) of the lawsuit’s filing, unless plaintiff consents to addressing prior art invalidation in litigation, with a prohibition on staying the lawsuit for the IPR until the IPR Request is granted, and an automatic lawsuit stay after the IPR Request is granted unless the parties agree to concurrent litigation.  During litigation, this would leave mainly inequitable conduct available to invalidate a patent during litigation unless and until defendant negotiates for prior art, perhaps via accelerated discovery or payment.  It requires that the PTAB consider as prior art more than merely printed publications.

(B) If PTAB denies the IPR Request (the current PTAB denial rate is 40%), the patent is presumed valid over prior art against the challenger in all Patent Office and court proceedings.   This will speed up enforcement against defendants who make only small changes but keep infringing to force patent owner to file new lawsuits.

(C) If all claims, asserted in litigation at the time of IPR Request filing, are invalidated in an IPR based on a prior art rejection (references and motivation to combine) that the patent owner was notified of by the patent challenger at least three months prior to the filing of the IPR Request, then the patent owner has to pay the challenger’s attorney fees for preparing and filing (but not prosecuting) the IPR Request.  This encourages defendants to quickly share their most relevant invalidity arguments, and punishes plaintiffs who ignore relevant prior art and waste defendants’ resources in an IPR, but the punishment is limited by not including prosecution costs so as not to be too scary for good faith plaintiffs.

(D) After an IPR Request has been disposed of via denial or an IPR, a deep pocket defendant must begin paying half of the monthly cost of litigation attorney fees for a shallow pocket plaintiff based on redacted attorney invoices.   If the judge or jury finds the defendant is not liable for any infringement damages, then the plaintiff must repay the attorney fee payments.

(E) For a patent that has survived IPR, via IPR Request denial or an IPR, and that a defendant has been shown to infringe, restore the presumption of irreparable damage for patent infringement that was destroyed by eBay v. MercExchange, 547 U.S. 388 (2006), leading to an injunction absent exceptional circumstances, regardless of whether patent owner licenses or practices the patent.

(F) Provide a rebuttable presumption that the patented technology is frequently used by all accused products and services of an infringer, and require that damages be based on how often a technology is actually used to provide a product or service, so that rarely used features have relatively small damages awards, while frequently used features can have large damage awards.   The incentive of rebuttal should encourage defendants to provide discovery, instead of the current gamesmanship of withholding discovery.

(G) For a prevailing shallow pocket individual plaintiff, a deep pocket defendant must pay 200% of the plaintiff’s attorney fees absent exceptional circumstances.  This penalizes deep pocket litigants for litigation gamesmanship.

Fifth, price discovery: Walker says that it is difficult to predict what infringement damages will be.

The pre-litigation part of this difficulty is because parties like to keep confidential the cost of licenses and settlements; but confidentiality should be their right.

The litigation part of this difficulty is because defendants are extraordinarily reluctant to provide discovery on what portion of their business infringes and the revenue associated with doing so; D-G above, especially F, will reduce such reluctance.

Conclusion

I agree with Walker that, at present, the enforcement part of the Patent System is hostile towards under-funded individual inventors.  However, the Patent System is still quite viable and can evolve to be friendlier towards individuals. Independent inventors are a fabulous source of ideas and patents reflect the diligence to make the fruits of their ideas available in commerce, which benefits all of us.

_____________________

The audio file for Jay Walker’s speech can be found at https://www.ipawarenesssummit.com/recorded-speakers

Brenda Pomerance has almost 30 years of experience in prosecution of approximately 2,000 patents, including Appeal, Ex-parte Re-examination, Reissue, Inter Partes Review and Interference. Clients have included Research in Motion (now Blackberry), MIT, AT&T, Lucent, IBM, Sony and Canon. Ms. Pomerance has represented clients in licensing, in several patent infringement lawsuits and in a software copyright infringement lawsuit. She is a solo patent attorney in the Law Office of Brenda Pomerance in New York City. b.pomerance@verizon.net

Image source: canadaipblog.com

To encourage investors the IP system must provide stability and predictability, says USPTO head

IP is the engine that makes economic and cultural developments work and the USPTO keenly focused on facilitating this goal.

That was the message delivered by Undersecretary of Commerce and Director of the United States Patent and Trademark Office, Andrei Iancu, at the Second Annual Intellectual Property Awareness Summit in New York on November 29.

CIPU, CTV, Columbia University

IPAS was held by the Center for Intellectual Property Understanding (CIPU), an independent non-profit, in conjunction with the Columbia Technology Ventures, at the Columbia University’s School of Journalism.

“For the IP system to work as intended,” Director Iancu told the audience of IP owners, creators, executives and educators, “we must make sure future IP laws are predictable, reliable and carefully balanced.”

Director Iancu, who holds degrees in aerospace and mechanical engineering and who has taught at UCLA, said he believes that it is really important for new members of congress coming into office in January, as well as existing ones, be informed about the importance of intellectual property.

“They should be aware why IP is important to the economy and to America’s standing in the world and competitive position.”

“I would urge folks in this room,” he said referring to the IP professionals and educators present, “to talk about these issues with members [of Congress] in ways that relate to their priorities and constituents.”

A Different World

The Director told the audience that the battle for 5G is not likely to be limited to giant American companies but is international and being waged by the smallest and biggest countries; from Singapore, for example, to China.

“We live in a different world,” he concluded. “For the United States to maintain its competitive leadership it is critically important that we have an IP system and innovation and entrepreneurship ecosystem that encourages innovation; that provides stability and predictability, so folks can invest here in the U.S. confidently.”

The audio file of Director Iancu’s remarks and q&a is available at www.ipawarenesssummit.com.

IBM, Priceline, George Mason University

Other featured speakers at IPAS 2018 included Manny Schecter, Chief Patent Counsel of IBM and a member of the board of directors of the Center for Intellectual Property Understanding (CIPU); Jay Walker, inventor, entrepreneur, TEDMED curator and founder of Priceline.com; and Adam Mossoff, Director of the Center for the Protection of Intellectual Property (CPIP) at George Mason University College of Law.

IPAS also included 17 other speakers, four panels and three workshops focused on the IP literacy requirements of IP owners, creators, educators, investors and the public. For the full IPAS 2018 program, presenters and partners go here.

Image source: Russell Cusick Studio 

USPTO Director Iancu, top-ten inventor Jay Walker and IBM’s patent chief + surprises set for IP Awareness Summit this week

The IP Awareness Summit 2018 – IP literacy matters

The second annual Intellectual Property Awareness Summit is being held at Columbia University in New York this Thursday, November 29.

The Summit is being held by the Center for IP Understanding (CIPU), an independent non-profit. This year year’s theme is IP literacy in a digital world.

Featured speakers at IPAS 2018 include United States Undersecretary of Commerce and Patent and Trademark Office Director Andrei Iancu, whose recent remarks in favor of more certain patents and less rhetoric about patent licensing have been favorably received by IP owners.

Jay Walker one of the most prolific American inventors, curator of TEDMED and founder of Priceline.com will follow Director Iancu. Leading the group of featured speakers is Manny Schecter, IBM Chief Patent Counsel and a proponent of a clearer and more consistent definition of what is patentable.

Scholar and proponent of IP rights as property, Adam Mossoff, Executive Director of the Center for the Protection of Intellectual Property (CPIP), will round out the line-up of featured speakers.

A representative from the International Trademark Association (INTA) will speak about the growing problem of counterfeits and ways of addressing it through public awareness.

A few registrations are still available, here. 

Other Speakers & Panelists

Speakers from the International Trademark Association, Bloomberg Law, the Kellogg School fo Business, the Center for the Protection of Intellectual Property, the Global Innovation Policy Center (United States Chamber of Commerce), the rock band Cracker and other organizations from the US and Europe will be speaking and networking.

For the program, presenters and partners go here:

IPPro recently spoke with CIPU about IPAS 2018 and why today more than ever audiences need to understand the purpose and impact of IP rights. Excerpts follow (the entire article, “IPAS 2018: Why IP literacy matters,” is available, here).

What is the Intellectual Property Awareness Summit?

IPAS is an annual gathering of IP organizations, holders, educators and thought-leaders who believe that IP rights are frequently misunderstood and have come to be seen by many as unfair and unnecessary. IPAS 2018 is open to any interested party.

What is the goal of IPAS 2018?

At IPAS 2017 in Chicago, participants identified that there is a significant disconnect between how people see and use intellectual property. The problem is a result of confusion about why IP rights exist and who they benefit. A combination of inaccurate media coverage and vested interests are responsible for this false impression.

At IPAS 2018 we will “dig down” and start to identify whether or not there needs to be a set of basic standards for IP awareness for various audiences. What are the basics? How are they best communicated?The theme of IPAS 2018 is “IP literacy in a digital world.”

Information moves so much faster today. It is more accessible than anyone would have believed twenty years ago. Many businesses and individuals believe that basically “everything” accessible is available, and ideas are there for the taking.

Some U.S. lawmakers and courts have over-reacted to patent and other patent holders who wish to license their rights or enforce them, rendering many patents valueless. Some even believe that infringing IP causes no major harm and is a part of modern life.

A basic awareness of what IP rights are and do, and what is appropriate IP behavior, is something everyone needs – and it should come from a trusted source.

Why is IP awareness important?

The lines of IP ownership are sometimes poorly drawn and frequently misunderstood.

We need to start with IP professionals. They must recognize there is a problem outside of the IP community and even within it. There are intelligent people who believe that IP theft is not stealing.

Then, we need to identify the key audiences for better IP understanding: college students, educators, business schools, lawmakers, K-12 teachers, parents, investors, journalists.

What three or four basic IP principles do they need to know? Why? When should they be imparted? How?

It is no accident that the U.S. is the greatest nation when it comes to innovation, technology and authorship, including films and music. But that is changing.

The fast pace of communication and easy access to data do not let users off the hook when it comes to acknowledging IP rights. Respecting IP rights today may be more inconvenient for some than others, but it should not be more acceptable.

_____________________________

For more information about IPAS 2018, including registration information, please visit www.ipawarenesssummit.com.

To learn more about the Center for IP Understanding, go www.understandingip.org.

Image source: CIPU; understandingip.org

U.S. cities are attracting a lower percentage of startup capital

Several surveys of global innovation have noted that the U.S. innovation edge is slipping, but until now they have not pinpointed where the U.S. share of global tech investment is going and possible reasons why.

A recent report detailing which cities today are attracting the most venture capital, Rise of the Global Startup City, states that the U.S., while still a lead player, is no longer the epicenter of all things new and  technological. Other cities are attracting a growing share of the venture pie, especially those in China.

“America’s long-held singular dominance of startup and venture capital activity is being challenged by the rapid ascent of cities in Asia, Europe, and elsewhere,” reports the study. “While the United States remains the clear global leader, the rest of the world is gaining ground at an accelerating rate.”

The reasons for the shift are complex: better access to data and computing power; local talent that cannot easily emigrate to the U.S. – or no longer wishes to  – and soaring real estate prices and salaries in established technology centers like Silicon Valley, New York and Boston.

Inhospitable Environment

Another reason not mentioned in the “Global Startup,” which was commissioned by the Center for American Entrepreneurship, is the inhospitable environment for U.S. IP rights, especially patents. The U.S. has fallen into an abyss where most IT patent rights are uncertain and virtually impossible to license, creating disincentives for both investors and tech companies.

At the same time, China has flaunted an increasingly plaintiff-friendly patent system that is more welcoming to innovators and foreign participation than a decade or two ago. Also, a decade or so ago, cities like London, Berlin and Delhi were barely a blip on the VC radar. Now they are serious players who want to grow.

For the full report, “The Rise of the Global Startup City, go here.

Source: Richard Florida/Ian Hathaway

Et tu, TechCo? Some potential patent licensees should be outed for abusive behavior

What is the appropriate response to a legitimate request for patent licensing?

If you are an information technology company comfortable taking full advantage of confusion in the patent system, and unfettered by business ethics, it may be tossing the offer in the garbage can — just because you can.

Can a business simply ignore a reasonable licensing offer or does it have an obligation, ethical or otherwise, to take seriously a reasonable request to consider a license to an invention it requires or may already be using?

For an executive at one inventor-owned business, Personalized Media Communications, being totally ignored when a legitimate request to discuss a patent license is presented is an abusive practice and a threat to innovation that must be stopped.

The Real Issue

“Too often, this abusive behavior is conflated with ownership models to deflect attention from the real problems,” said Aaric Eisenstein, VP Licensing Strategy. “PR efforts targeting ‘trolls’ have warped stories of threats to mom & pop businesses to cast large companies as the equally helpless victims of these ruthless predators… the real issue is abusive behavior, and that’s what needs to be targeted…

“The responsibility for ending abuse rests not only with the Patent Office and the federal courts but also with the stakeholders in the patent system themselves. The stakeholders cannot simply complain and lobby for one-sided solutions. They must work together to improve the system upon which they all depend.

“The responsibility for ending abuse rests not only with the Patent Office and the federal courts but also with the stakeholders in the patent system themselves.”

“Following these rules eliminates both problems: skimpy-to-ridiculous notice packages and throwing legitimate packages in the trash.  It doesn’t matter whether the companies are large or small or whether they’re direct operating competitors or have completely different ownership models. The critical point is that these standards are targeted to prohibit abusive behavior per se

“The US patent system was the envy of the world for generations.  It can be again if we’re honest about its shortcomings and address them in direct and balanced ways.”

The TROL Act in the House of Representatives reintroduced legislation with apparent bi-partisan support that would give the Federal Trade Commission and the state attorneys general authority to issue civil penalties up to $5 million for sending misleading or bad faith letters demanding patent licenses.

There is no indication that penalties will also be instituted for bad faith on the part of businesses that ignore legitimate offers to license good patents, forcing owners to file suit.

Eisenstein is grateful to USPTO Director Andrei Iancu for having “reminded patent system stakeholders what US inventors have given the world and the right way to enhance the system.”

For the full article, go here.

Image source: seapine.com

Costs to establish clear patent ownership are soaring – Here’s why

It has never been easy for American innovators hoping to generate a return on their inventions, but new hurdles have made it impossible to license even the best patents.

Despite increased availability of capital and access to data, IT patents today have a much more difficult time proving themselves than a decade or a century ago. The vast majority of the public, stakeholders if indirectly, are not aware of the situation or its impact.

With the enactment of the American Invents Act (AIA) in 2012 and several supreme court decisions setting an ambiguously higher bar for patent certainty, licensing began to resemble scaling a high peak, with enough challenges even the most innovative business or inventor.

Two such obstacles are the Patent Trial and Appeal Board (PTAB) and inter partes reviews, created to validate patents already issued by the United States Patent and Trademark Office. Until the AIA came along, USTPO-issued patents had enjoyed a “presumption of validity,” the standard since 1952.

Second Look

In theory, a “second look” for issued patents is not a bad idea. Examinations are not always as thorough as they could be. If it were fairly applied, these re-examinations would kill any dubious patents that should not have been issued by time-constrained examiners, and affirm those that deserve to be. This would make it easier for owners to license without resorting to costly litigation. In practice, however, is not the case.

Patents that the PTAB chooses not to review, and even those whose reviews are instituted and claims affirmed, still, are rarely seen as licenseable, and are subject to subsequent IPRs and/or protracted litigation. New and even more onerous obstacles to patent certainty have added to the time and cost of resolving disputes. How much time and cost?

 

Steep Climb

The illustration on this page, courtesy of Brody Berman Associates, IP communication specialists, is an illustration of the just how difficult patent licensing has become. That is not to say that every licensor must go through all of the steps, all of the time, but many do, especially those who believe the infringement warrants significant damages or a potential licensor believes the royalty costs outweigh the expensive legal ones. Many accused infringers have the capital and constitution to withstand a protracted dispute, which can last five years or more.

Defendants who take their time engage in what is known as “efficient” infringement. For a patent holder to prove patentability, validity, infringement and damages is frequently too costly and time-consuming a climb, so why bother? For many IT patent holders, licensing without litigation is no longer an option.

From Edison to Alexander Graham Bell to Nicola Tesla, market leaders have been reluctant to accept new ways of solving old problems if it may hurt their bottom line. An expensive challenge with many impediments along the way is one way of mitigating a threat. Patents that are held by businesses and individuals but are not used (enforced) are seen as less threatening to established businesses. To them, the best patents are seen but not heard.

An overly arduous path to patent certainty not only tilts the playing field, it dissuades competition and dims the future.

Image source: Brody Berman Associates, Inc.

 

Patent “abuse” stories is the subject of a website and forthcoming book

From Michelangelo to Edison and Bell, inventor success stories are well-known.

But patent and inventor abuse stories – such as inventor Robert Kearns’ and his intermittent windshield wiper, famously infringed by almost every auto manufacturer and well-captured in the feature film, “Flash of Genius” – are less well-known.

An organization supported by a GoFundMe campaign is looking to change that. Protect American Innovation has been collecting patent abuse stories since July and has thus far gathered 16 examples of dramatic abuse. Some of the examples cite videos.

Protect American Innovation, which is described on its website as a “coalition of businesses, innovators and inventors, to spread the word about patent abuse and to push for effective change in the U.S. Patent System,” supports the Stronger Patents Act, which hopes to correct the over-reaction and weakening of the patent system caused by the American Invents Act. The Bill is currently in the House Judiciary  Committee.

For PAI patent abuse stories, go here. They help to explode the myth of the abusive “patent troll.” Those interested in the website may also want to know about a book being written by IP consultant David Wanetic about patent and inventor abuse.

Incisive Op-Ed

Also on the PAI website is “The Time to Revive the American Patent System is Now!”, an incisive op-ed written by Chief Judge or the Court of Appeals for the Federal Circuit (ret.), Paul R. Michel. It succinctly restates that the U.S. is losing its innovation edge and how a balanced patent system can help to fix it. Judge Michel’s piece can be read here.

“… to overcome the massive PR campaign of the FANGs, featuring largely fictional or exaggerated tales of patent ‘trolls’ abusing the system with baseless law suits, leaders in Congress need stories to illustrate the harms of the AIA reviews and Supreme Court cases.”

For the Save the Inventor video feed with more than 100 videos, go here.

Image source: savetheinventor.com

IP Awareness Summit update: keynotes to include top-ten inventor, Jay Walker, USPTO Director Iancu and IBM’s Schecter

Priceline.com founder and one of the most prolific and successful U.S. inventors in history will join USPTO Director Andrei Iancu and IBM Chief Patent Counsel Manny Schecter as featured speakers at the IP Awareness Summit in NYC on November 29.

The Summit will is being held by the Center for IP Understanding, an independent non-profit, at Columbia University’s famed Pulitzer Hall in the School of Journalism in conjunction with Columbia Technology Ventures.

Mr. Walker, an owner of TEDMED, which bridges the gap between science and the public, has long held that despite increases in U.S. technology and innovation, the patent licensing system is broken.

“The fact is that without a functioning licensing system we really don’t have what need to compete,” Mr. Walker, a former member of the Forbes 400, has stated. “Licensing is the way that inventions get into the economy; it’s the way they get used and brought into the marketplace and creates jobs and helps our economy to be more competitive.”

Mr. Walker is number eight on the U.S. all-time U.S. inventor list with 950 issued utility patents. Thomas Edison had 1,084. At the current pace, Walker will surpass Edison sometime in 2023. Many of his patents cover gaming and risk calculation.

Iancu and Schecter, too

Joining Mr. Walker as an IPAS 2018 featured speaker is USPTO Director Andrei Iancu, who will present at 1:30 and is likely to touch upon U.S. and China IP issues. Another featured presenter is Manny Schecter, Chief Patent Counsel of IBM, who will speak about the impact of a faster, more digitized world on IP and how it is seen.

Other speakers and panelists include a range of IP thought-leaders, owners, educators and organizations from the U.S., Europe and Asia, who will present and serve on panels. Luncheon breakout sessions will permit IP holders, creators and others to consider specific IP leadership challenges. Registration for IPAS 2018 is now open to the public but space is limited.

The IPAS 2018 theme – IP Literacy in a Digital World will be the basis for examining the impact of information and speed on how intellectual property is seen and often taken for granted, as well as ways to address the disconnect through education and the media.

To view the IPAS 2018 program and event website, visit www.ipawarenesssummit.com.

To register, go here.

The current list of IPAS 2018 participants and partners can be found on the home page. Persons who wish to apply for a discounted registration, contact explore@understandingip.org.

To learn more about the Center for IP Understanding, www.understandingip.org.

Image source: bloomberg.com; TEDMED

Too sexy to be taken seriously: movie star’s invention story is a lesson for both men and women

In the 1930s she was called “the most beautiful woman in the world,” but screen star Hedy Lamarr was obsessed with how things worked.

An Austrian émigré in Hollywood, Lamar, intellectually curious and highly patriotic, and who was raised Jewish, wanted to do something to help her adopted country defeat the Nazis. This prompted her to develop a complex, secret communications system that would later serve as the basis for Wi-Fi, Bluetooth, wireless phones, GPS, and other developments.

Problem was it took the Navy 20 years to take her and her co-inventor seriously. Both were high school dropouts and of Austrian and German extraction at a time of heightened suspicion and spying. This fascinating story is explained in greater detail in The Intangible Investor in the November IAM magazine, “Torpedo invention laid the foundation for Wi-Fi and more.” Subscribers can find it here starting October 1.

What drove Lamarr to invent is a focus of this fascinating and well-received documentary, Bombshell: The Hedy Lamarr Story (96% rated on Rotten Tomatoes). It is available on Netflix and on DVD from many public libraries. Even those familiar with the story will find the film worth watching. It illustrates that some of the best inventions derive from the most unlikely sources and can seem implausible.

For more on Lamarr’s background, go hereFor her patent, 2,292,387, “Secret Communications System,” go here.

“Bombshell” estimates that Larmarr’s invention, had it been widely adopted, would have been worth $30 billion.

Lamarr and her co inventor, George Autheil, a respected American avant-garde composer and concert pianist who spent a decade in Paris associating with James Joyce and Ernest Hemingway, posthumously made it into the National Inventors Hall of Fame.

“If you do good,” Lamarr said, “people will accuse you of selfish motives – do good anyway.”

Image source: washingtonpost.com 

 

IPCU readers can save $200 on IP Dealmakers Forum Nov 6-8 in NY

Patent monetization is alive and improving.

Look no further than the 5th annual IP Dealmakers Forum, which will attract the top players in IP licensing, sales and litigation funding to the Alexandria Center overlooking NYC’s East River, November 6-8.

IP CloseUp readers can save $200 off of registration by using discount code IPDF18_CIPU.

Panels include:

  • IP Market Roundup: Light at the end of the Tunnel
  • In Patents We Trust: Government Updates & Outlook
  • Leveraging Data to Identify Valuable Patents
  • SEP, FRAND & Getting Ready for 5G
  • IP Investors Roundtable: Opportunities In and Around IP
  • What Matters Now: Navigating the New Deal Landscape
  • Corporate Governance & Activist Investing in IP

One-to-one meeting and networking sessions will be held throughout the conference.

A partial list of speakers includes:

  • Erich Andersen, Corporate VP & Chief IP Counsel, Microsoft
  • John Lindgren, CEO, IPVALUE
  • Todd Dickinson, Former Director, USPTO
  • Fred Fabricant, Head of IP Litigation, Brown Rudnick 
  • Paul Michel (ret.), former Chief Judge of CAFC
  • Hans Sauer, Deputy General Counsel for IP, BIO

For the full IPDF agenda, go here.

To register, go here.

CLE credit is available.

Images source: ipdealmakersforum.com

IP CloseUp readers can save $100 on Patent Law & Policy DC event

House Judiciary Committee’s Cong. Doug Collins (R-GA), a leading proponent of more effective IP legislation, will be a speaker at the 4th annual Patent Law & Policy conference to be held at the Ronald Reagan International Trade Center in Washington on November 23.  

Congressman Collins was instrumental in the success of the Music Modernization Act, a sweeping bi-partisan bill that brings the Internet in tune with songwriting and recording and provides a road map for fairer artists compensation while encouraging business

The House voted to support MMA 415-0. Cong. Collins is a strong supporter of patents, too. He spoke on patents earlier this year at Innovation Policy and IP, presented by the Center for IP Understanding. 

In addition to two keynotes, the Patent Law & Policy program will include the following panels:

  • Changing of the IP guard: the future of IP Policy
  • The litigation climate in 2018 and beyond
  • SEP FRAND
  • Developments at the PTAB
  • Winning tips for the PTAB

For the complete program, go here. For the list of speakers, here.

IP CloseUp readers can save $100 on the standard delegate rate by using code CIPU100 here: http://bit.ly/IAMPLAP2018

(NOTE: The code cannot be applied by IP service providers and is only valid for registrations made on or after September 3 2018.)

IAM’s Patent Law & Policy has established itself as the leading Washington D.C. event for anyone interested in how the legal and political climates shape the patent market. The event analyzes recent developments and the impact they could have on future proceedings, and responds to questions like How will the political climate shape the patent landscape? What effect will the new U.S. Congress have on the IP market?

Image source: iam-events.com; serrano.house.gov

12-fold increase in China’s U.S. trademark apps; many are said to be fraudulent and improperly filed

Cash subsidies are among the incentives fueling a dramatic rise in U.S. trademark applications by Chinese filers. Thousands are said to be  improperly filed and unlikely to be granted. 

In a national effort to increase IP ownership China is paying companies and individuals, some of them prisoners, as much as the equivalent of $800 to register a trademark in the U.S.

“The U.S officials say many China filings show a pattern of suspicious claims about the goods in question and the qualifications of the attorneys handling them,” reports the Wall Street Journal.

China may be attempting to “disrupt” the U.S. system by flooding it with huge numbers of applications, making it potentially more difficult for business to obtain the marks they desire, especially those that may be associated with products that are sold in e-commerce.

Mark Cohen, UC Berkeley law professor and former USPTO expert on China told IP CloseUp that he did not believe there is a concerted effort to undermine the U.S. trademark system.

“China is metrics-driven, numbers-oriented society,” said Cohen, who is fluent in Chinese. “It wants to achieve government-established goals and will resort to incentives to achieve them. This planned approach can lead to the kind of spikes we have been seeing in trademark applications. The ultimate impact is unclear.”

In addition to paying cash incentives, China has been known, says Professor Cohen, to award tenure, defer income taxes and reduce sentences of prisoners who obtain marks. Similar motivations have been known to exist in the patent space, where China is a leading U.S. filer and number two globally. If the pattern continues, it will soon be number one in both trademarks and patents.

Numbers Game

This rapid rise does not necessarily lead to high quality IP rights or to appropriate use of them. But IP does apparently amount to something of a numbers came to China.

Cohen believes that many of the filers are small businesses selling online goods such as phone chargers and cheap clothing. Whether they are every in a position to enforce their marks, if infringed, remains to be seen.

Representing a number of Chinese trademark filers are foreign attorneys who are not licensed to practice in the U.S., which violates application rules.

These payments by the Chinese government amount to nearly $800 per US trademark registration that is obtained (a potential profit per trademark of $525 after filing fees), reports trademark attorney Josh Groben.

Full-time Job

“Given that the median monthly income for a Chinese citizen is around $1,000,” says Groben, “the government payments make it possible for someone in China to have a full-time income by registering just two US trademarks per month.”

The U.S. received more than 50,000 applications from China in the year through September 2017, accounting for 8.5% of all trademark filings.

It is difficult to know how aggressively legitimate Chinese trademark holders will enforce their rights against infringers. In the U.S. complete failure to enforce will lead to a weakening of an owner’s marks, loss of distinctiveness over time and potential forfeiture of certain available remedies.

Image source: creekmorelaw.com; lexology.com

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