Tag Archives: USPTO

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.

 

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

LES annual meeting to be held in Boston October 14-17

The birthplace of innovation, Boston, is the site for the 2018 Licensing Executives Society meeting.

The opening session, “Advancing Innovation Through a Renewal of Trust,” will feature Andrei Iancu, USPTO Director, Bill Elkington, Senior Director – IP Management, Rockwell Collins and Walter Copan, National Institute for Standards and Technology (NIST) Director and Under Secretary of Commerce for Standards and Technology.

Other sessions include:

  • Funding Startups – The Boston Perspective
  • Increasing ROI for Government-Funded Research
  • Advanced Telecommunications Licensing, 4G, 5G and LTE for Automobiles
  • US or Them – Who is Going to Set Standards for Licensing
  • Patenting Machine Learning
  • 2018 Tax Consequences: Coordination of IP Monetization and Tax Planning
  • Life Sciences Partnering Performance and Reputation Survey Results
  • Maximizing IP Value and Minimizing Risk in M&A Transactions

For the full 2018 LES annual meeting agenda, go here. For the speaker biographies, please visit http://www.lesmeetings.org/am18/speakers/

To register, go here.

Image source: lesmeetings.org 

Rep. Collins speaks from IP experience at CIPU-GIPC innovation policy forum

On Tuesday an open briefing was held in Washington to better understand U.S. innovation and IP policy. Congressman Doug Collins (R-GA), a supporter of strong and certain IP rights, launched the event with a personal account of his exposure to IP rights growing up in rural Georgia. 

He said that a number of his relatives and neighbors were chicken farmers, “some of whom invented new and more effective processes to produce and process eggs and poultry that were protected under IP law.”

The keynote comments of the Congressman were part of a program, “Innovation Policy and Intellectual Property: Building on a Strong Foundation,” held by the Center for Intellectual Property Understanding (CIPU), an independent non-profit, and the Global Innovation Policy Center (GIPC), a division of the United Stated Chamber of Commerce.

House Judiciary Committee

Congressman Collins is a member of the House Judiciary Committee, and also is on the sub-committee for the Courts, Intellectual Property and the Internet. He was a sponsor of the recently enacted, and broadly supported Music Modernization Act, which passed the House 415-0, and has developed and supported other IP-friendly legislation. “IP is a part of the fabric of the nation,” he said. “American freedom is tied to an effective IP system.”

Other presenters included CIPU board member Marshall Phelps, former Vice President of IP Business and Strategy at Microsoft and prior to that at IBM. Mr. Phelps also served as head of Government Relations for IBM in Washington in the 1980s, and previously was head of Asia-Pacific. He spoke about the threat to technology posed by “Japan, Inc.” in the Eighties, and how the U.S. was able to surmount the threat with the right combination of incentives.

“The threat to IP and innovation from China is real,” said Phelps in his introductory remarks, “but too much policy and the wrong incentives can create bigger problems. Making patent certainty a higher priority should be the first priority. Putting IP properly on the balance sheet would help, too.”

Manny Schecter, Chief Patent Counsel of IBM, also a CIPU director, and president of the Intellectual Property Owners (IPO) Education Foundation, was a panelist, as were, Alan Marco, former USPTO Chief Economist, Rob Atkinson, a pro-IP economist and President of the Information Technology and Innovation Foundation (ITIF), and Professor Adam Mossoff, an IP scholar and policy expert at George Mason University Scalia School of Law.

Among the goals of the panel was to explore:

  • What is U.S. innovation policy?
  • How does it relate to intellectual property?
  • Who should be responsible for it?
  • How should success be measured?

Audience Response

One the audience members asked if the Supreme Court, with Oil States and several other decisions, was “anti-IP.” The panel did not believe so, but thought that SCOTUS members may be poorly informed about the purpose and use if IP rights.

Another audience member stated the false narratives around phrases like patent “trolls” were part of a long-term “public relations campaign” that has seeded anger and hostility toward IP rights in general. He thought a sustained educational initiative could help to make the role of IP clearer for various audiences.

Image source: GIPC

USPTO Director Iancu will keynote 2018 IPBC Global in San Francisco

An impressive group of speakers, sponsors and supporters, led by USPTO Director and Undersecretary of Commerce, Andrei Iancu, will be featured at the 11th global Intellectual Property Business Congress in San Francisco, June 10-12 at the Palace Hotel.

Director Iancu has indicated that he will support the long-awaited move to greater certainty in the U.S. patent system.  In a recent speech to the U.S. Chamber of Commerce he said that “reclaiming our (U.S.) patent leadership is within reach.”

Attendees will be eager to hear about Director Iancu’s strategy for attaining this and other goals.

IPBC Global 2018 plenary’s and panels include:

  • Will the U.S. Continue to Lead in IP?
  • CIPO Scenarios: The Good, Bad and Ugly 

IP CloseUp editor, Bruce Berman (that’s me), will be a member of the patent quality panel:

  • Is patent quality a distraction? – all that really matters is patent eligibility

    -What is a quality patent?
    -Controversy around eligibility
    -The importance of predictability

For the AI panel, participants will include Bart Eppenauer, former Chief Patent Counsel at Microsoft and William LaFontaine, General Manager, IP, IBM.

  • The World of Artificial Intelligence 

For the IPBC Global 2018 program, go here.

For the full list of speakers and their biographies, go here.

To register, go here.

Image source: ipbc.com; ipwatchdog.com

Cong. Collins & Jeffries, and expert panel, will look at innovation policy and IP on May 8 in Washington

WASHINGTON, DC –– What is innovation policy? What does it mean to U.S. competition and jobs? Who is responsible for it?

These are among the questions that will be addressed at an afternoon briefing held by the Center for Intellectual Property Understanding (CIPU) at the headquarters of the United States Chamber of Commerce headquarters in Washington on May 8.

The event will feature two leading proponents of IP rights, Congressmen Doug Collins (R-GA) and Hakeem Jeffries (D-NY), both members of the House Judiciary Committee, Sub-Committee on the Courts, Intellectual Property and the Internet.

“Innovation Policy and Intellectual Property: Building on a Strong Foundation” is being held by the Center for IP Understanding, an independent non-profit, and the Global Innovation Policy Center (GIPC), a division of the Chamber. Persons interested in receiving an invitation please contact CIPU at explore@understandingip.org.

Preceding the Congressmen will be a panel, “What is Innovation Policy? Why is it Necessary?” featuring leading experts on innovation, IP and the economy, including:

 – Manny Schecter – Chief Patent Counsel of IBM, board member of CIPU and the IPO Education Foundation
Alan Marco – former Chief Economist for the USPTO and now Associate Professor of Public Policy at Georgia Tech
Adam Mossoff – Prof. of Law at George Mason University, Center for the Protection of IP
Robert Atkinson – founder and President of Information Technology and Innovation Foundation (ITIF), an independent think tank

Discussion Will Follow

A networking break will follow the panel and a reception will take place at the conclusion of the program.

Go here for information about the “Innovation Policy and Intellectual Policy: Building a Strong Foundation.”

“U.S. innovation policy and IP focus are seriously lacking,” said Marshall Phelps, former Vice President of IP Business and Strategy at Microsoft and at IBM, and a CIPU board member. “Other nations take their policies more seriously. The timing is right to dissect what U.S. innovation policy means and how it effects jobs and competition.”

Briefing partners and supporters include the Michaelson 20MM Foundation, the Kellogg School of Management at Northwestern University, Berkeley Research Group, the Tusher Center for Intellectual Capital Management at UC Berkeley-Haas and Open Invention Network.

Image source: understandingip.org; nesta.org.uk; theglobalipcenter.com; 

 

Pace of patent litigation declines; 2018 applications still flat

Early indications are that U.S. patent litigation for 2018 is on track to be among the lowest in since 2005.

So far in 2018, approximately 555 patent infringement suits have been filed (3,330 on an annualized basis). This is off from a peak of 5,874 in 2015, or an average of 979 every two months. In 2005, the lowest litigation filing year in recent memory, there were just 2,582 suits. In 2017, there were 4,072. January and February are early indications, and there is time for the rate to increase.

According to statistics provided by intellectual property research firm Patexia, January 2018 patent applications came in at 27,720, just 631 higher than 2017, 27,089, which was the lowest year for that month since 2012. February applications are running behind last year, which came in at 28,329 for the same month. Final figures are not yet in.

This trend in patent applications and litigation has been accompanied by a flattening of Inter Partes Review (IPR) petitions filed. IPRs have been fairly level for the past three years, peaking in 2017 at 1,725. So far this year (through February) there have been approximately 250 IPRs filed, putting 2018 on track for about 1,500, slightly below the last two years on an annualized basis. No information on the number or percentage of instituted petitions was provided.

Litigation, IPRs and CBMs Filed to Date

IPRs and Litigation

Difficulty obtaining software and business methods patents are a likely reason for the drop in U.S. patent applications, as well as the increased difficulty defending patents. Patent uncertainty and decreased need for defendants to take a license or engage in licensing discussions, as well as the high cost of litigation, are possible reasons for an increase in IPRs.

For Patexia live litigation statistics, go here.

Image source: patexia.com

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