Tag Archives: innovation

U.S. patent grants down the most since 2009; China is only nation up

January 15, 2019 by Bruce Berman 0 Comments

U.S. patent grants were down 3.5% in 2018 over 2017, only the second decline in the past decade, but the largest. 

All nations experienced a decline in grants, except China, which was up 12%.

The reasons for the declines are unclear. They range from

  • Over-patenting in prior years
  • Uncertainty of newly issued patents
  • Lower return on patents
  • Insufficient R&D
  • Growth of businesses in which patents are difficult to secure, e.g. software, algorithms and business methods

According to this year’s report from patent analytics firm IFI Claims:

  • The USPTO issued 308,853 Utility Grant patents in 2018. This represents a 3.5% decline from 2017’s record year.
  • US companies received 46% of these patents. Asian companies received 31% and European companies received 15%.
  • Chinese companies represent only 4% of 2018 US Grants, but their total of 12,589 US patents is an increase of 12% over 2017.

2017 was the 26th year that IBM received the most U.S. patent grants, 9,100.

Google, Samsung and Sony were down 14%, 16% and 21% respectively. Ford Global Technologies and Huawei were both up 14%.

Samsung: Still Largest U.S. Holder

The world’s largest “active” U.S. patent holders and their subsidiaries convey a somewhat different picture. Samsung is first, according the IFI Claims Ultimate Owner ranking, with 61,608 and IBM is third with 34,376. (Canon is second just ahead of IBM.)

The reasons for the significant difference is unclear. They likely have to do with owners’ perceived need to maintain patents they may not use and whether the patents are being used to out-license for revenue or defensively to mitigate risk and maintain market share.

Image source: IFI Claims Patent Service   

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USTR warns of increasing attacks by China on US intellectual property, including cyber-attacks

January 8, 2019 by Bruce Berman 0 Comments

A report released in late November the Office of the United States Trade Representative (USTR) states that China appears to be stepping up its attacks on U.S. intellectual property.

“China fundamentally has not altered its acts, policies, and practices related to technology transfer, intellectual property, and innovation, and indeed appears to have taken further unreasonable actions in recent months.”

Raymond Zhong in The New York Times reported that “something is unfolding right now that carries higher stakes than any other tech story on the planet.”

Zhong was referring to China having detained the third Canadian citizen in apparent retaliation for the arrest of Meng Wangzhou, a top executive at Huawei, the world’s leading maker of telecom networking equipment. Since, CFO Wangzho’s arrest, Canadian officials have reported that a total of 13 people have been arrested in China. Eight have been released.

It has been long speculated that Huawei’s products can be used for spying by the Chinese government.

The USTR report, released on November 20th, is called UPDATE CONCERNING CHINA’S ACTS, POLICIES AND PRACTICES RELATED TO TECHNOLOGY TRANSFER, INTELLECTUAL PROPERTY, AND INNOVATION.

“In the USTR report the U.S. accused China of continuing a state-backed campaign of cyber-attacks on American companies that were both intensifying and growing in sophistication,” Bloomberg News reported.

Chinese Claims

In response to questions about the report, a spokesman for China’s foreign ministry on Wednesday said U.S. officials should read a white paper published by the government in September that claims China ‘firmly protects’ intellectual property rights.

On August 18, 2017, the Office of the U.S. Trade Representative (USTR) initiated a Section 301 investigation of China’s acts, policies, and practices related to technology transfer, intellectual property, and innovation. 3

On the date of initiation, USTR requested consultations with the Government of China concerning the issues under investigation.4 Instead of accepting the request, China’s Ministry of Commerce expressed “strong dissatisfaction” with the United States and decried the investigation as “irresponsible” and “not objective.”5

The primary four points of the report (IPCU’s boldface):

1. China uses foreign ownership restrictions, such as joint venture (JV) requirements and foreign equity limitations, and various administrative review and licensing processes, to require or pressure technology transfer from U.S. companies.

2. China’s regime of technology regulations forces U.S. companies seeking to license technologies to Chinese entities to do so on non-market based terms that favor Chinese recipients.

3. China directs and unfairly facilitates the systematic investment in, and acquisition of, U.S. companies and assets by Chinese companies to obtain cutting-edge technologies and intellectual property and generate the transfer of technology to Chinese companies.

4. China conducts and supports unauthorized intrusions into, and theft from, the computer networks of U.S. companies to access their sensitive commercial information and trade secrets.7

“Further Unreasonable Actions”

The USTR report concluded: “China fundamentally has not altered its acts, policies, and practices related to technology transfer, intellectual property, and innovation, and indeed appears to have taken further unreasonable actions in recent months.

“USTR intends to continue its efforts to monitor any new developments and actions in this area.”

The full report can be found here.

Since 2014 Chinese venture capital investment in the U.S. totals $31 billion. The report cites analyst that estimate “Chinese investors participated in 10-16% of all venture deals in the United States between 2015 and 2017.”

Image source: USTR Update

 

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Patent litigation is down 41% since 2015; IPRs are lowest since 2014

January 2, 2019 by Bruce Berman 0 Comments

Patent disputes are significantly lower since they peaked at 5,874 in 2015.

Litigation tumbled 41% to 3,491 cases in 2018, and was down 14% from the prior year.

While litigation is never good, it is not always bad. Not everyone agrees that the drop in patent suits is a positive sign.

Some see it as an indication that the Patent Trial and Appeal Board (PTAB) is doing its job, eliminating patents that should never have been issued.

Others who are patent owners told IP CloseUp that litigation has become “so costly and arduous, that it no longer pays for many infringed holders to bother.” They also point to the inconsistency of PTAB decisions and multiple opportunities for it and the courts to invalidate patents.

The litigation data was reported this week by Patexia. For the full update, go here.

Additionally, Inter Partes Review (IPR) petitions were down 7% from last year and are at the lowest level since 2014.

Delaware is now the preferred venue for litigation, with 697 cases. Eastern District of Texas, once the top dog for patent disputes, was down to 504 cases in 2018.

Image source: Patexia

 

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IP CloseUp surpassed 200,000 views in 2018

December 31, 2018 by Bruce Berman 0 Comments

In 2018, IP CloseUp broke though the 200,000 view level, generating a total of 207,868 on 373 posts since it was first published. 

Among the most popular posts for 2017:

By far the most read post on IPCU is “Kearns’ son still fuming over wiper blade fight”. Since 2014 it has generated 77,844 visits.

In 2018 IP CloseUp was read in more than 100 countries. Since 2015 IPCU has generated 154,653 views.

IP CloseUp has been rated by Feedspot among the top-fifty IP blogs. It began publication as IP Insider in 2011.

To receive IP CloseUp weekly follow @IPCloseUp, connect to LinkedIn via publisher Bruce Berman or by subscribing at the right of this page under the Franklin Pierce tile.

 

Image source: ipcloseup.com

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“Know-go” – negative know-how that can be protected as a trade secret is among IP’s most overlooked assets

December 13, 2018 by Bruce Berman 0 Comments

Thomas Edison famously said: “I have not failed. I have just found ten thousand ways that won’t work.”

After hundreds of experiments with different materials for a long-lasting light bulb filament, Edison, as much as businessman as an innovator, zeroed in on carbonized thread.

“At that point,” says James Pooley, author of SECRETS: Managing Information Assets in the Age of Cyberespionage, “Edison had two trade secrets: first, the identity of the best material. And, second, the identity of the materials he had tried.”

Negative Know-How

A business’ lack of success, a matter of specialized know-how more aptly called “know-go,” is protected under trade secret law because it is valuable not only to it but to a competitor who wishes to catch-up without spending as much time and money.

Know-how, sometimes known as show-how, is the “secret sauce” that can give an otherwise mundane invention meaning. But the value of negative experience — of what not to do; of repeated failures and near successes — should not be under estimated.

The Intangible Investor in the December IAM magazine looks at “Failure – IP’s most underrated asset.” The full piece can be found here.

Costly Mistakes

A popular television series, “What Not to Wear,” has run for 345 episodes over ten years. The show advises women and men about how to spare themselves the cost, time and embarrassment of fashion faux pas. The value, the show’s loyal followers reason, is not only in identifying the right clothes choices, but in avoiding the more costly mistakes.

Information, data or experience that spares businesses time, cost and potential embarrassment is an asset, often an invaluable one, especially to large, risk-adverse businesses where R&D is at a premium.

Know-go is also attractive to potential acquirers who need to know how far towards a solution a target may have progressed.

Closely related to the concept of negative information is the idea that you can be guilty of trade secret theft (“indirect misappropriation”) even though your product looks very different, or significant investments have been made in your own research.

“Intangible assets of this nature that serve to avoid failure,” says Pooley, former Deputy Director of the World Intellectual Property Organization (WIPO), “can be more valuable than knowledge that enables success.”

Image source: rundlesafety.co.za; wikipedia.org;

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

December 10, 2018 by Bruce Berman 1 Comment

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

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

December 4, 2018 by Bruce Berman 0 Comments

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 

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

November 26, 2018 by Bruce Berman 1 Comment

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

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

November 13, 2018 by Bruce Berman 0 Comments

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

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

October 30, 2018 by Bruce Berman 0 Comments

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.

 

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

October 18, 2018 by Bruce Berman 1 Comment

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

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

October 9, 2018 by Bruce Berman 0 Comments

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

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