Anyone who has practiced IP law for a few years can attest to the transformations happening in the US Patent Office over the last year. In my opinion, Director Kappos is more than a breathe of fresh air over his predecessors, he actually knows what he is doing! Also, regardless of what one may think of President Obama's other policies and actions, one cannot question that his leadership is resulting in real attempts at innovation in the arguably previously moribund Patent Office. As a experienced patent practitioner, the last several years have been very demoralizing. I actually made the decision to stop working as a patent prosecutor because, quite simply, I became weary trying to educate junior examiners about the deeply nuanced intricacies of patent law. Worse was trying to explain to clients why their patent application covering an important commercial innovation could not get approved in the Kafkaesque environment of
Innovation is Sprouting in US Patent Office: A Plea for Flexibility from Patent Practitioners and Interested Parties to Allow the Necessary Changes
Patent Information is a Necessary Calibration Tool: How the Pilgrims’ Journey is a Metaphor for the Innovation Process
Regular readers of this blog will recognize that I am a strong advocate of the use of patent information in the front end of innovation processes. (More on this here, here and here.) Relatively few innovation professionals actually do so, however, likely because it can be difficult for innovators to understand how to change the longstanding paradigm where lawyers are perceived to be the people who "put the 'no' in innovation." Put simply, I find that innovation professionals prefer to leave anything smelling of legal advice out of the front end of their processes because they think they will not be able to do their jobs if the lawyers show up to their meetings. Of course, it makes little sense for innovation professionals to make significant business decisions involving new products or technology without also knowing whether they will be able to own the fruits of their innovations
Innovation Professionals–Take Charge of Patents to Ensure ROI of Your Efforts (includes a case study)
Recently, I have been spending considerable time working with innovation professionals to demonstrate the value-creation opportunities available by embracing IP strategy as an aspect of their processes, and why patent drafting should be an aspect of their roles and responsibilities. More specifically, my efforts have focused on why and how patents matter to the ROI of corporate innovation today. Most business people would likely acknowledge that patents are important to protect their products from competition, however, the vast majority of the innovation professionals whom I meet have no idea how critical patent strategy can be to the success of their business plans. Modern innovation processes typically start with identification of a consumer need or the like. In so doing, the innovation team undertakes detailed research to draw dimension around a product that will solve this consumer need. This research will be directed toward identifying the multiple ways the consumer need can
A Closer Look at the Patent Office’s New Conversation about Adoption of a “First to File” Rule and a Proposal for a Win-Win for the Patent Office and Inventors
(Editorial Note: Regular readers of the IP Asset Maximizer Blog might find this post an departure from the usual topics discussed on this blog. In the almost 2 years I have been blogging, I have consciously avoided talking about specific aspects of patent law, both in the form of case law, patent reform efforts and the US Patent Office itself because I believe there are many great blogs that do a great job that frequently discuss these topics and that I can likely add little to the already substantive discussions occurring elsewhere. However, given the great significance of the so-called "first to invent" system to the interests of individual and corporate inventors alike, I felt it appropriate to weigh in on the conversation. Put simply, any changes in the first to invent rule must clearly flesh out and respond to the resulting effects to businesses of all sizes, as well
Looking for Inside Info on the Automotive Bailout and Other Business Issues? It May Be Hiding in Plain Sight in US Patent Assignment Database
One of the under-utilized aspects of available US patent data is the business information effectively "hiding in plain sight" in the U.S. Patent Office Assignment database. While it used to take weeks or months for assignments to be recorded, in recent years, the USPTO has implemented a very efficient electronic filing functionality that results in assignments being available for review almost immediately after being presented for recording. (This is arguably the most efficient process today in the USPTO.) Because most patent owners appear to avail themselves of electronic filing option when recording their assignments, one can find a wealth of information in the USPTO Assignment Branch.
To this end, I recently uncovered an intriguing tidbit of information related to the Automobile Bailout when performing a wholly unrelated patent monetization marketability study for a client. In confirming that a patent was
Without Disruptive Innovation, Many IP Law Firms are Destined to Meet the Same Fate as Buggy Whip Manufacturers
A possible upside to the recent economic downturn is that many previously accepted business models are being revealed as in need of substantial reinvention or even total elimination. The billable hour/leverage law firm model for legal services is one of these increasingly maligned business models, and is now appearing to be in danger of ending up in the dustbin of history. Specifically, even those who benefit handsomely from the billable hour, such as the Cravath firm's many $ 800 per hour lawyers, now realize the fundamental irrationality of charging a client for time spent instead of value provided. This alone should signal that change is in the air. Notwithstanding the growing conversation about the need for alternative legal service billing methods, I fear that the majority of IP law firms will either try to ignore the desire for change or will respond by offering
Investors in the Green Economy: You Could Lose Your Investment in Green Innovators by Failing to Identify the Green Inventors that Came Before Them
With President-Elect Obama's announcement that he will establish an "Apollo Project" to develop a Green Economy, there is no doubt that "the Green Technology train has left the station." Indisputably, investors will start to invest heavily in companies that appear to possess commericializable Green Technology that will enter the marketplace as the US embraces the Green Economy and develops the necessary infrastructure to make this happen. Before staking a claim to one or more of these companies, however, investors should understand whether existing patent rights owned by third parties could undermine the investment potential of even the most promising Green Technology innovators. Anyone seeking to capitalize on the Green Economy and its attendant Green Technology must recognize a fundamental reality of US patent law: in granting a patent, the Patent Office cares only that an invention is useful, novel and nonobvious. Significantly--and this is the rub for investors in Green
Investors Can Predict the Winners of the Alternative Energy Race: Follow the Patents
It seems that in just the last few months, reduction of US dependence on foreign oil has moved from an occasionally discussed aspirational goal to becoming a critical public policy mandate. Indeed, there is much talk about the energy policies of both John McCain and Barack Obama, each of which focus substantially on increasing the amount of energy obtained from within the borders of the US. As an interested observer, it appears to me that the publicity associated with The Pickens Plan announced in July 2008 (which I previously wrote about here) served as a significant impetus for increased public awareness of alternative energy as a public policy concern. There can be no doubt that the alternative energy "train has left the station" and that we will begin seeing an ever-increasing amount of corporate investment in both wind and natural gas technology. This investment will be directed toward
Recent BusinessWeek Article Confirms that Energy Innovation is Rampant: Why These Innovations Should be Patented
This current BusinessWeek article entitled "The Real Question: Should Oil be Cheap?" confirms that innovations directed toward energy savings are rampant in these days of high energy prices. Specifically, the article states that "[h]igh energy prices [] water the flowers of innovation, making investments in alternatives pay off . . . ." As I wrote in this blog previously, along with such innovations comes the opportunity for savvy corporate managers to obtain exclusive rights to these energy usage improvements by developing and executing on patent strategies that prevent their competitors from benefiting from their investments in innovation. Moreover, as I wrote in this blog post, I believe that The Pickens Plan will open the floodgates of patenting in the area of wind energy and turbine technology. I realized after writing these blog posts that some people might find the idea of patenting energy innovations distasteful. Such a perspective
Prediction: The Pickens Plan for a Green Energy Infrastructure will Launch a Gold Rush of Patenting Followed by Rampant Patent Litigation
The day after I posted this about patenting green energy innovations: Corporate Managers: Are You Failing to Obtain Maximum Value from Your Energy Savings and Green Innovations by Ignoring Patent Issues?, multi-billionaire oil man T. Boone Pickens announced The Pickens Plan. This plan, if successfully implemented, will constitute a giant step toward reducing America's dependence on foreign oil by embracing domestically-produced green energy as a significant source of America's power. To show he is serious about this plan, Mr. Pickens intends to spend $58 million of his own money to publicize it and, if the number of radio commercials I have heard about his idea in the last week is any sign, he is well on his way to spending his advertising budget. In the last week, much has been written, both laudatory and critical, about The Pickens Plan. You can check out some of the articles indexed by
