Predicting Patent Litigation – A Response by Professor Chien

In the preceding post, I highlighted two recent critiques of Professor Colleen Chien's recent article on predicting patent litigation.  Below, Professor Chien responds to these critiques. – Jason

By Colleen V. Chien, Assistant Professor of Law, University of Santa Clara School of Law

In my article Predicting Patent Litigation, I describe the relationship between a number of intrinsic and previously unexplored acquired patent variables and the likelihood of the patent being litigated.  In the article, I state that “from the starting point presented here, there are a number of directions that follow-up research could take to improve the resolution of the ranking approach described here that, while promising, does not provide a ‘commercial grade’ solution to outstanding patent-clearance problems.” Along this vein, Petherbridge and Kesan et al provide thoughtful suggestions and questions about how the analysis could be verified, refined, and extended.  Their input is timely as efforts to do so are just getting underway, as part of adapting this exploratory project to commercial settings. Looking at more, and more recent patents, replicating the analysis, and adding additional variables, where it makes sense, will necessarily be part of this effort.

Since my paper was published I have been approached by a dozen or so parties interested in testing and applying the paper’s insights. The diversity of these interests addresses the two questions raised by the commentators. First, how precise must the model be? Though Petherbridge’s answer is “much more so,” the answer necessarily depends on the context of the application. On one hand, no level of precision in the algorithm can best a patent lawyer’s expert analysis of the claims and in very few cases would it make sense to proceed solely based on a mere calculation. On the other hand, if an insurance company is trying to use this as one of a variety of variables for calculating defense insurance rates, or for related applications where this filter is applied with others, this kind of algorithm can be useful. Likewise, the question, what variables should be considered? cannot be answered in a vacuum. Kesan et al suggest variables such as whether the particular patent is embodied in a product and the historical revenue of the patent owner. But even assuming these are better than other variables, the difficulty of getting them may make them impractical in many cases.

My article flags the difficulties with tracing what happens to a patent after issue as a potential problem but was not intended to definitively recommend that recordation rules be changed. Indeed, as I have explained in my recent comment “The Who Owns What Problem in Patent Law,” there are many reasons, the majority of which are economic and inadvertent rather than strategic, that it’s hard to determine who owns what patents. As part of the Kappos administration’s helpful efforts to improve access to patent data (examples here and here), the PTO has recently solicited input on this very question. While greater applicant disclosure is worth considering, I believe that the PTO could do much more with the information it already has. Currently, you cannot search among only in-force patents, or easily tell who the owner of record of patent is, how many times it has been cited, how much longer it may be in force, whether it has been reexamined, who requested the reexamination, or whether or not the current owner is a large or small entity. Yet making this information, which already exists, more accessible and supportive of business decision-making, could go a long way to enhancing the public’s ability to assess patent risks and opportunities.

 

 

94 thoughts on “Predicting Patent Litigation – A Response by Professor Chien

  1. Oh and just so you know… Although you already do know, I faxed it so man oh man you are done! Now if you don’t accept the mail again… Then I will share it even quicker! Thanks for everything.

  2. Yes and you should see the Awesome looking Water marked Birth Certificate for LOLOLOL. You are a riot. Can’t wait to share it and everything else!

  3. One more penny…

    Yes, I see (the notion of rights being absent from the scales – Big Brother, here we come).

    Thanks.

  4. Anon, we essentially agree on most points here.  But, even so, I think when one is trying to assess the risk of exposure of one's business or products, the ownership of the adverse patents is important. I think that is the one thing we can learn from this thread. If a patent is in the hands of aggressive, and adverse, patent owner, one's resources, which are not unlimited, should be first direct to assessing the risk of those patents.

  5. Inconvenience of registration by owners vs. inconvenience of ownership determination absent registration system, by interested parties.

  6. Determination of property interests is rarely if ever easy, and rarely if ever cheap–a fact to which anybody doing real estate transactions can attest, even in a Torrens system.

    But but but 6 the legal expert says otherwise.

    Oh, whom to believe? Each have such high credibility.

    balance of convenience and economic efficiency, from a policy perspective

    What is on the opposite side of that balance, in your other two cents?

  7. My 2 cents…

    Having done searching myself, I can definitively state that there is no such thing as a guarantee of the perfect search for art.

    Finding out who owns important PA is important for searching the art, as that party may be likely to own or be involved with other relevant art.

    Thus, although it may indeed be all about the “what”, that “what” SHOULD rely in part upon the “who” for its determination, if the search for the “what” is to be characterized as comprehensive or broad-ranging.

    It’s just another starting-point–and a very good one, in my experience–in the quest for the “what”.

    And yes, the information can currently be found by a number of means. Determination of property interests is rarely if ever easy, and rarely if ever cheap–a fact to which anybody doing real estate transactions can attest, even in a Torrens system.

    Should the government implement some sort of a system akin to a Torrens registry for the registration of patent ownership interests? It might make searching easier, and the balance of convenience and economic efficiency, from a policy perspective, might weigh in favor of registration.

  8. Given Wyeth v. Kappos CAFC 2009-1120 (located at link to cafc.uscourts.gov ), and the continuing need to review the calculations the Office performs on its calculations of PTA (continuing errors are routinely found), you may be correct that this is “too complex” for the Office to handle.

    But I would not place the blame on the computers.

    I have actually written a very simple program to do this calculation and run it quite often.

    This projected date should be included. The Office’s current computers can handle this easily enough thank you.

    You actually have bigger issues with products (and product changes) that may or may not be covered by patents in effect, and to a smaller degree, the premature lapsing of patents due to nonpayment of the maintenance fee (see link to patentlyo.com ), and to an even smaller degree, the dropout due to litigation (see link to ipwatchdog.com ).

  9. Sorry I was not clear, above. I was only thinking that working out the expiry date was a job too complex for the USPTO computer.

  10. Ned,

    Perhaps I am misreading yoru answer, but you indicate my response as “punting” yet go on and advise exactly what I advise.

    As I stated: “There is nothing wrong with a dialogue with IV and exactly what it feels its position to be – in other words, a mere nebulous letter from them would be met on par. Any reasonable diiscussion would warrant reasonable details.

    As far as one’s patent position may be irrelevant to the extent of seeking a cross license, I think you have your wires crossed. In seeking a cross license, one’s patent position is not only relevant, it is critical. It drives your bargaining power.

    AS far as “without knowing one’s exposure,” your exposure is defined by what is out there – regardless of who owns what is out there, at least from the macro level. Again, revisit WAD’s step by step breakdown. Knowing the “what” is so much more importatn than knowing the “who.” At least in establishing your overall exposure.

  11. anon, one's own patent position may be irrelevent to the extent that one is seeking a cross license.  It may be relevant if one is attempting compromise by giving some of one's own patents to IV as a solution to the problem.
     
    Having a dialog with IV without knowing one's exposure is unwise.  That is why your client asked you in the first place to give him advice.  Simply punting may be the only thing that one can do, but then, just admit it.
     
    If I were in your shoes, anon, I would advise your client to ask IV for a list of patents that might be the subject of the insurance policy.  That would make the job of identifying the relevant patents redundant.
     
     
     

     

  12. Look above to the wonderful step by step exposition by WAD.

    Without any more specific facts, you cannot have a more brilliant and complete answer.

    Of course, such factors as your patent position, portfolio strength, existing “other” patent strength – regardless of ownership – and any purported basis for the initial letter from IV would be logical considerations.

    There is nothing wrong with a dialogue with IV and exactly what it feels its position to be – in other words, a mere nebulous letter from them would be met on par. Any reasonable diiscussion would warrant reasonable details. Handling this in a professional and reasonable manner would keep the blue sky in place and difuse the chicken little “OMIGOD ITS A TROLL LETTER” hysteria from setting in.

  13. Anon, imagine that you are practicing lawyer, and your client sends you a letter that he has received from Intellectual Ventures suggesting that your client take out an insurance policy against any patents it presently owns or controls, with the option, at a price, that might include future patents IV might own or control.

    He asks for your advice. In particular, he asks for your assessment of whether any patents presently owned or controlled by IV may apply to his business.

    What is your plan of action to respond to your clients request?

  14. Malcolm, you were the one who was adamant one had to prove all the process elements of product by process claim so that others could produce the same product by other processes without infringement. But what if it is demonstrated that the invention is in the process, but the patent attorney does not claim a product by process, but rather claims the product per se, a product that is otherwise known, but which is distinguished from the prior art using a adjective such as “purified” or “isolated?”

  15. Malcolm Macbeth,

    “On topic” does not mean address with an insubstantial “shove them aside.” When I ask for “anything,” I am asking for anything with substance.

    Try again – and reply for the first time with substance.

  16. Ned,

    I have complied with your stated post of posting directly to your email on the Dealertrack thread.

    Rather than branching off your answer into this thread, please reply on the long thread. It is easy to find my comment – just fully expand the thread length and then search (CNTL F) with “Feb 19″ to find comments posted today.

    I look forward to your three answers:

    1) a simple Yes or No answer to “Does configuring a machine change the machine?”

    2) an explanation of your phrase “software on a computer;” and

    3) a defense to the ultra vires “permanent residency” and “automatic execution” additions to patent eligibility.

    Please pay attention to what is not a legitimate answer. No dodging, no restating the questions, and please, no umbrage. I have asked politely and refrained from snark. I expect a full and well-thought out answer as I have complied with your request and made it easy for you. Take your time – but not too much time, as these are not new questions.

  17. Careful SSBB, as it is only selective selfish reasons that need to be controlled by the state – those that deal with (evil) money or (equally evil) property.

    You are likely to draw the ire of Malcolm Macbeth if you were to impugn that selfishness of the personal liberty type – such as procreation control – were fair game for any such reasoning of good of the “public.”

    Surprisingly, you have not been acccused of being hypocritical, as that is obviously MM’s position and her loves to accuse others of what he does.

  18. WAD,

    +1 – a brilliant step by step expose that showcases an underlying improperly assumed issue and ties into the 1984 aspect of my 7:39 Feb 17 post. I could not have tied it together better if I had wrote it myself (a sharp stick to the eye of Malcolm Macbeth).

  19. Out, d_amned spot! Out, I say!

    Poor poor Malcolm-Macbeth (MM, a suitable acronym),

    Seeing “sockie-trolls” everywhere again, are we? Perhaps if you took a step back and reflected on the content of the posts here, you would see just who is the “sockie-troll” and who has contributed to a meaningful discussion of an important issue that was – but should not have been – assumed from the start. A hint: you have contributed your usual nothing but derogatory and insubstantial g_arbage.

    Just because others point out the same flaws that I have pointed out – to no small extent – does not mean that we are part of some grand conspiracy “out to get you” or that we are all some form of single entity cybernetic organism. So don’t accuse WATP of being me. I am not WATP; although, like him, I find your off-patent rantings quite offensive.

    And if you find that you cannot contribute in a substantive manner, then find some other haunt to troll. Your posts and your typical cheap tricks are at most boring and trite, and at least offensive as much as they are insubstantial.

    Again, as MMatbng:ald has invited you, let’s see some substance from you for a change. Either on your so-called self-evident – and perfectly legal – Appeals fix, or on the notion of owner rights to be as discrete or as hard to find as they choose.

    This is a call for you to contribute, although I am not expecting anything of substance and I am actually expecting your usual “savvy” and mindless *click* retort.

  20. Can we get back to the words of Prof Chien as repeated above by MM? As I understand and endorse her words, the professor wants a Patent Register like that at the EPO. No more, no less.

    What’s so wrong with the EPO Register? It reveals inter alia who is the proprietor, who are the named inventors, and what is the date on which the patent will expire. It does not reveal, inter alia, who owns the proprietor.

    Apart from the expiry date issue, it’s just an IT issue for the USPTO, isn’t it? Now the PTO has the cash flow, it can improve its IT, can’t it?

  21. Ha! What hypocrisy!

    How about responding to my post in the Dealertrack thread?

    You know when I ripped apart your bogus state Street Analysis and exposed your fallacious conclusions?

    You know, the post that made you cut and run up the hill with your skirt in between your legs.

    Or if my post is too intellectually terrifying for you how about responding to the other 10- 15 posts by various patent attorneys that exposed your flawed thinking on everything from business methods to software and computers.

  22. MM,

    You are truly delusional. Please seek professional help.

    Do it now. Not tomorrow. Not on Monday. Now.

  23. My rebuttals are on point. But you need to recognize the law to recognize that.

    Your “McCarthy” comment is touching, since again my comment is on point, and your reply of “McCarthy” indicates an off-point scare tactic. It is well known that you are the “bully” of the blog and try to answer in intimidation (push them aside) and expletives (fxxxxg scxmbxgs), rather than any cogent reasoning or legal principles.

    Your lack of anything grounded in law on this thread is a fine example.

    But please continue to prove my points with your style of vacuous posting. Perhaps you can learn something from the 7th graders. After all, they are easily your superiors.

  24. Loving looking up to a 7th grader from your 3rd grader position again, MM.

    Really is “Too fxcxing funny,” as most adults eschew profanity.

    What about MaxDrei and Ned

    What about them? Have they acted like a Tard on this topic? Have they put forth a legal position bankrupt and divorced from reality? Unlike you, I don’t label people before they have earned the label.

    Have you got anything actually on topic to add?

  25. Ned,

    That is already captured under “You can put forth some of your own detective effort, locate the actual owner and attempt to commence negotiations.”

  26. For example, everyone knows how to get rid of the dreaded appeals backlog, quickly and legally.

    I have to see this. Do tell.

  27. please, Malcolm, be consistent. Call the Director a scumbxg,

    I think I’ve already gone there, Ned, back when we were discussing the airplane toilet with the POWERFUL COMPUTER BRAIN. Kappos is in a fatally compromised position as PTO head. For example, everyone knows how to get rid of the dreaded appeals backlog, quickly and legally. But you have to really want to do that first.

    Kappos plainly doesn’t want to do that. Either that, or he and his lawyers are incompetent fxxls.

  28. sockie: As stated in several places, “ownership” and “inventorship” are separate concepts.

    Keep beating that strawman, sockie. Nobody ever claimed otherwise.

    like IANAE, your posts have traditionally smacked of socialism

    LOL. Okay, Senator McCarthy. Time to put down the bottle.

  29. Actually, that is my opinion as well. The IV model is somewhat patterned off of our dear Director’s former employer and companies like his. They amass large piles of patents and walk into a room and demand payment.

    “For what?” One might ask.

    The answer is that the size of the pile increases the risk of infringement. The royalty payment is in terms of an insurance policy, and it is based on the size of the pile and the size of the business licensed.

    Now, please, Malcolm, be consistent. Call the Director a scumbxg, for that is exactly what I think of anyone who practices such holdups.

  30. sockie The conjecture thus assumes the point to be proven in the next stated implicit assumption.

    I love it when sockie writes like a precocious 7th grader. Too fxcxing funny.

    6 is the tard
    Bliss, too, is the tard
    MM, too, is the tard

    What about MaxDrei and Ned, sockie? Did you run out of fingers?

    MTBHTDT

  31. In the context of requiring relevant, useful and basic information about a government grant.

    As stated in several places, “ownership” and “inventorship” are separate concepts. The grant is a separate thing from who owns that grant.

    You too make the errant assumption that “ownership” is required for the government grant. This is an unwarranted conjecture. Property alienation, except in extremely limited circumstances, happening post-grant has nothing to do with the Office and would be an ultra vires invasion of basic property rights if the Office were to mandate any such system.

    But like IANAE, your posts have traditionally smacked of socialism and the h_atred of private property, so it is no surprise that you eagerly turn a blind eye to these rights.

    It is ironic that you also claim hypocrisy, when you display that very trait. However, I have been around long enough to note that this “accuse others of what you do” is also something that you are known for.

    So I am not surprised by your feeble response to someone complaining of your interjection of a completely inappropriate topic on a patent law blog.

    I would be surprised if you actually acknowledged a legal principle at work , as that would mean that you would be actually discussing something on topic.

    And yes, WATP, I do have a bodyguard and he has strict shoot to kill orders for MM. Such wacko’s are indeed dangerous because they are clueless as to hwo they really are and are so wrapped up in their delusions.

  32. As to IV, just looking at this thread, if I were they, I would not record anything, ever, just to throw off the likes of EG and Bliss trying to “assess” the risk. IV needs as much uncertainty as possible, I think, for their business model to work.

    Promote the progress!

    LOL. What a bunch of fxxxxg scxmbxgs.

  33. What the H has this to do with patent law?

    You were the one who shrieked about 1984, “the constitution and minimal government interference”, sockie. In the context of requiring relevant, useful and basic information about a government grant.

    I’m just pointing out that (like most patent txxbxggxrs) you’re a hypocrite, not that anyone should be surprised at this point.

  34. The conjecture is bidirectional as no such art can divorce an opinion from ownership

    should read

    The conjecture is bidirectional as all such art can divorce an opinion from ownership”

    It really is an all or nothing thing.

  35. There are arts where an opinion can be given independent of patent ownership

    This too is an unwarranted conjecture, which by implication forces an association between type of art and “ownership.” The conjecture is bidirectional as no such art can divorce an opinion from ownership, because the concept of ownership is a separate legal concept untied to any art. Your supposed “defined nomenclature and/or proper classification” has nothing to do with “ownership.”

    The conjecture thus assumes the point to be proven in the next stated implicit assumption.

    Bliss reinforces Ned’s implicit assumption that software and business methods must be suspect.

    Re: Progress – A throw away line.

    Rather than a “throw away line” – the line is fundamental to the issue and actually throws away your arguments.

    You supplied the very rope by which you hang. You state a clear bias and then assume the conclusion follows from your stated bias. You want to ignore the actual fundamental constitutional driver as some type of “throw away.” You cannot.

  36. 6, I think you recognize that we would need legislation of some sort

    This is an unwarranted conjecture.

  37. There are arts where an opinion can be given independent of patent ownership (technologies with defined nomenclature and/or proper classification) where the identification of relevant references is simple (time consuming, but still straightforward). Then there are arts where this is not the case (computer networking, business methods, database management, anything in Classes 1, 705, 707, 709, 715 – And yes, I said Class 1).

    In those situations, a client would like to help themselves and the attorney by narrowing the opinion scope to parties likely to assert (those with a history of doing so for example). In the current system of assignment tracking, that is not feasible. Why must this be the case? Who owns a patent does matter in these situations.

    Dolt – For arts like these, it is impossible to ‘know the art’. These areas are different than automobile headlights, gene sequences, pharma compounds, and toys.

    Re: Progress – A throw away line. My apologies for getting your feathers all ruffled.

  38. There is a clear and definite distinction to be maintained between “inventorship” and “ownership.”

    Principles of alienation of property are subtlely being warped by the surface thinking and unchallenged assumptions.

  39. Don’t worry BigGuy. As soon as we enact the “1984″ act, we will then set our sights on other choices that should be removed from the public, for the good of the “public,” of course.

    First step in that line will be the control of selective procreation. 6 will not be allowed to have childrens.

    Of course, any naysayers will be shut down because they are not looking after the good of the “public,” but only for their own selfish reasons. We will not allow any such rights to innure to individual selfish reasons.

  40. Step 1 – know the art. This means knowing the “what.” At this point the “who” simply does not matter. If you have something inventive above the “what,” then you are good to go. If not, then proceed to Step 2.

    Step 2 – You have a choice. You can choose to see if the owner of the item that you currently need is willing (by their choice) to license to you, or, you can design around what is known to be publicly available. If you choose to design around, proceed immediately to Step 1. If you choose to see if the owner of the item you currently need is willing (by their choice) to license to you, proceed to Step 3.

    Step 3 – Check the record system to see if the owner of what you currently need has decided (by their choice) to make it easy to contact them or not. If they have made a choice to be easy to contact, that is their choice to make, then you can engage and begin negotiations. Even with this path, there is no guaranteee that the owner of the property you need will license to you. The beauty of our system RESPECTS this stick in the bundle of sticks. If the person whose property you need has not made it easy to contact them, by their choice, you still have a choice. You can proceed back to Step 1 and design around. You can put forth some of your own detective effort, locate the actual owner and attempt to commence negotiations, or you can willingly and knowingly infringe, balancing the risk of being caught with the attempted free ride over what you know is someone else’s property.

    The point throughout this is that YOU do not get to make the choice of the other party as to whether or not THEY decide to make it easy to locate them or not.

    The point throughout this is that the system does not require this knowledge of “who,” because the system, in order to meet its constitutional mandate, is merely concerned with the “what.”

    Professor Chien, in her paper, ASSUMES the premise that the “who” is not only nice to have, but necessary to have.

    It is an errant assumption.

    And outside of a few small and particular subsets (terminal disclaimer, no rejection to art owned by same party), simply has nothing to do with the real issue at hand: the desire, the extra-legal desire, to have things “easy.” The only problem is that this desire to have things easy overrides someone else’s legitimate choice as to making it easy or not. It is this trampling of someone else’s rights that should be the focus and should not be so casually discarded.

    6, for all your bluster about “try to think a little,” it is you that shows the lack of thinking, even a little. Get a little deeper than the surface of a perfect tracking system to the legal issues involved behind such a system. Your lack of sophistication is exactly what would produce the 1984 scenario because on the surface, you would only look to one desired object and you would not even recognize that you have trampled all over other rights.

  41. Evne if you were right on policy, Kharol, I hardly think that Congress will ever require the recording of assignments as a condition precedent for enforcing a patent.

  42. 6, I think you recognize that we would need legislation of some sort to force the recording of assignments. Until then, we cannot reliably tell what patents are held or controlled by a particular entity. But if the ownership is material to an opinion, a reliable opinion cannot be given.

    As to IV, just looking at this thread, if I were they, I would not record anything, ever, just to throw off the likes of EG and Bliss trying to “assess” the risk. IV needs as much uncertainty as possible, I think, for their business model to work.

    Regarding legislation requiring the recording of assignments, I wouldn’t bet on it.

  43. The entire conversation started out as being about the ‘who’

    The entire conversation that focuses on the “who” focuses on the wrong thing.

    “who” simply has no material effect on promotion (the progress) and 6 proclaiming otherwise is asinine.

  44. If I may suggest, EG, you and Gene Quinn should invest in security guards with postings like these from the MM wacko.

  45. We’re paying for security to be implemented and then paying to bypass it. Stupendous.

    Perhaps we should have just allowed profiling and called it a day before making the gigantic TSA.

    My childrens will ask me one day why we have the TSA and I will tell them: We have it because your fellow americans are idiots and scared nowadays instead of informed and brave as they were back in the day.

  46. I have an idea:

    Let’s have private commercial aviation where the government butts out. In order to participate, a member of the public must pass a government security check, register his biometric data, and the private commercial service must use registered biometric data before a passenger can board a plane.

    All luggage and carry-ons will still be subject to inspection and must be inspected.

    This way, a participating private commercial service would accept only passengers who had government clearance and who used biometric clearance. Of course, the service could charge a premium due to the added security and the ability to bypass big brother at the airport.

    I wound just how much people would pay to avoid big brother at the airport?

  47. “BTW, what system would you propose that would give a “99-100% certain result”? We await your response with “bated breath,” 6.”

    Well we have a pretty good system in place for determining who owns a house, land, cars or pretty much any other piece of property. I have not bothered to look up the specific statutes in quite awhile since I had to transfer the title of my truck when I bought it. I don’t think that drafting legislation mandating that who owns what patent be recorded (say within 30 days of sale as with a truck iirc) and available to the public would be all that taxing to one individual lawlyer on a given afternoon lunch break. If you guys can’t get it done with all your lawlyerly skills then I suppose I could do it for you. And if you really wanted to go whole hog you could find a way to outlaw “shell” corps and other such shinanigans. Where there is a lawlyerly will there is a way.

    In any event I see no reason why you lawlyers can’t implement such a system and then require recordation in the USPTO. I do however see a substantial reason why lawlyers resist such a change, because they like to play lawlyerly games, as always, as much as they can before the public gets so fed up with it they demand a change.

    And sorry for making fun of you EG, but you’re like constantly up on these boards not even understanding what the entirety of the conversation is about. I literally do not understand how you miss it so often. Are you just dicking around trolling a bit in your lunch hour or what?

    You’re not the only one, take for instance the tard up above that keeps saying it is about the “what” instead of the “who”. The entire conversation started out as being about the “who” and now he wants to switch it to the “what” so he arbitrarily switches it to the “what”. Why waste your breath trolling like that? Yes, we all know that the poster above his referring to “the progress” was mistaken, but it has nothing to do with the “who” and the “what” except perhaps obliquely. He just randomly inserts that nonsense to troll everyone. FFS people, stop the trolling.

  48. Actually, one cannot tell who the true owner is because there is no obligation to record.

    Ditto, reexaminations. The PTO knows who filed, but not for whom.

    In order to truly have reliable information on at least these two matters, we would need a statutory change.

  49. Why bother to ask Dennis to exert control, WATP? Malcolm has obviously “gone off the rails” (and with 6 not far behind him).

  50. I don’t mind you disagreeing with what I said in response to Bliss, but belittling statements like yours, 6, aren’t a persuasive subsitute for logic. The fact that you use insults instead of reasoning shows how little you understand the reality of law practice, and especially what attorneys have to address in making sure clients understand the limits of the legal advice given them in the “real world.”

    BTW, what system would you propose that would give a “99-100% certain result”? We await your response with “bated breath,” 6.

  51. “Your original hypo asks for the “perfect” patent ownership search for the client who can’t even afford it,”

    I think his original hypo calls for a perfect patent ownership search that is so cheap that the client who “can’t afford it” under our current regime can afford it. This is along the lines of the “original hypo” put forth by MM and the prof. If you weren’t an EGtard you’d understand this.

    I swear, it’s like every new idea posted on this board is met by someone who is so entrenched in their old ways that they literally cannot understand that there is a NEW proposal on the table and they have a really hard time telling what is NEW about it. For a bunch of lawltards supposedly concerned daily with “new” technology you’d think they’d more easily recognize the “new” ideas.

    “If the client can’t understand/accept the “scope” of a particular search/opinion after you’ve told them what it is, you’ve got a bigger problem than doing a “perfect” search/opinion, ”

    Specifically that problem is that the client is poed because you lawltards resist putting in place a system that would allow them to get a 99-100% certain result. Yeah, we know. That’s what this whole discussion you’ve been blabbering on and on about is about ya tard.

    The level of tard in this thread is simply amazing. Record and measurement breaking levels perhaps, although since the measurement was broken we can’t really measure this amount of tard against other levels of measurement breaking levels of tard in other threads.

  52. So, in a discussion about a situation where a person is specifically worried about what patents IV may assert against them you cite the proposition that ALL PATENTS THAT ARE PUBLIC KNOWLEDGE should be considered ones that IV may assert against the worried party?

    I mean seriously, I know you people on the webz are tards and all, but at least try to think a little before the urge to troll bites you.

  53. I don’t understand how I’m arguing your point for you, Bliss. Your original hypo asks for the “perfect” patent ownership search for the client who can’t even afford it, but then you change the hypo so that the client has an unlimited budget. Face the reality: there is no PERFECT search which will guarantee you can identify of all of the patents controlled by XYZ Company, especially those subject to licenses that are likely to be “confidential.”

    Part of properly advising clients is telling them what you can guarantee in such searches/opinions and what you cannot; that’s called establishing the “scope” of the search/opinion. If the client can’t understand/accept the “scope” of a particular search/opinion after you’ve told them what it is, you’ve got a bigger problem than doing a “perfect” search/opinion, be it of what patents are owned/controlled by a particular competitor or otherwise.

  54. Do you even recognize the point Bliss?

    The progress is the “what,” not the “who.”

    Maybe you and 6 can take a class in basic patent law together.

  55. You’re arguing my point for me. The client could have an unlimited budget, but you could still never identify all of the patents controlled by their competitor. How does that promote the progress?

  56. I’m not kidding, Bliss, are you? Beyond the patent records and assignment records, what more are you suggesting to check for patents assigned to Company XYZ?

    Also, are you aware that some companies, as a strategy, don’t even record the assignment until after the patent has issued? Sure, they take a chance against a potential boni fide purchaser, but they view that risk as small against notifying their competitors where their patent portfolio lies.

    Also, what’s so hard about doing a search of the assignment records for Company XYZ (assuming they do record the assignment), in addition to the patent records, if the client wants that? And if its IV, as you suggest in your example, my understanding is that the patent rights in specific technological areas are assigned to different patent holding companies. What do you propose to do in that circumstance?

    Let’s face it, nothing is perfect in this patent world, including finding each and every patent that is owned Company XYZ (and what about those patents that are exclusively licensed to Company XYZ?), and certainly for any price that is reasonable. That the search for such assigned patents may be difficult or expensive doesn’t mean the existing sources for such records are necessarily deficient. And saying that the client wants a “100% job, not a partially complete job” which they can’t afford is about as realistic as guaranteeing a 100% complete patentability search of the art without spending an exorbitant amount of time and money; the animal doesn’t exist.

  57. first in line to declare their support for laws requiring women to be pointlessly vaginally probed prior to obtaining an abortion.

    What the H has this to do with patent law?

    Dennis, can this shtt be controlled?

  58. Design around all those patents that you’re unaware of?

    ALL patents are public knowledge. Didn’t they cover this in examiner school?

  59. sockie Public policy justifications? Read 1984. How about the constitution and minimal government interference?

    Because Orwell was a notorious patent txxbxgger. LOL.

    Meanwhile, you can bet your life that “minimal government” sockie and his BFF EG will be first in line to declare their support for laws requiring women to be pointlessly vaginally probed prior to obtaining an abortion.

  60. From Krugman’s column in today’s NY Times:
    “…44 percent of Social Security recipients, 43 percent of those receiving unemployment benefits, and 40 percent of those on Medicare say that they
    ‘have not used a government program.’”

  61. I can not afford the Intellectual Ventures licensing cost

    What a great motivation to design around!

  62. I am pretty sure that to design around you do not need to know who owns the property.

    If the person who owns the property wants to be easily found (so as to encourage licensing), then that existing option can be taken. The owner of the property is under no requirement, however, to even offer licensing, much less making it easy to be found.

    It is enough to be able to see the “what” of a patent. The “who” of ownership belongs to that “who” unless that “who” decides otherwise.

  63. Even though he’s engaging in a very public commercial activity that owes its entire existence to a federal statute

    How does the notion of private property align with this “strawman?”

    Don’t hog all the straw, Malcolm should be along any moment.

  64. You’re kidding right? If a client says I’m worried about patents assigned to Company XYZ, how are you going to find their patents for your infringement opinion?

    It’s great for your malpractice rates that you can put an asterisk in the footer of your opinion that says you only looked at facially assigned references plus the piddly few in the Assignment Historical Database, but that is not so useful to the actual client. They want a 100% job, not a partially complete job.

    What if your client says ‘I can not afford the Intellectual Ventures licensing cost, what references could they assert against me?’ Who can answer that question?

  65. Oh but to publish by keeping my Mail and information to themselves so it could be published.. Is a whole different ball game. And WE thank you for that which most of us already knew.
    And by the way to “YOU” send my Files you lying sack of S@@T!

  66. Hey, I have a fun idea.

    To promote the creation and maintenance of roads, federal statutes should provide for toll booths all over the place. Not only will that reward people who build roads, but it will encourage other people to design around the toll booths by building more roads that also have toll booths on them.

    Only, a lot of them wouldn’t be manned at the moment, so you can’t actually pay. And some of those will randomly have cameras to see when you’ve driven through without paying, at which point you’d find yourself in court and liable for treble damages because you willfully drove through without paying.

    And of course the unmanned booths won’t have a phone number or anything to help you contact the toll booth operator and pay him a reasonable price to use that length of road. Because we have to protect his privacy. Even though he’s engaging in a very public commercial activity that owes its entire existence to a federal statute. Because that would somehow interfere with his right to exclude you from the road that he built at considerable personal expense, and that only turns a profit if you drive on it.

    It’s not perfect, but if we make the toll booths invisible I think we just might have something.

  67. I am pretty sure that “design around” is one of the aims of the patent system and not only would not be “subject []to the same infringement laws,” but should be actively encouraged.

    Of course, to be able to design around does require actaully reading what the Office publishes (and thus, guarantees the meeting of the constitutional mandate to promote).

  68. A discovery or an invention by a University may be one thing… But to allow a university to design around or claim a stolen Idea as their own should subject them to the same infringement laws as anyone else!

  69. Almost as fascinating as the banner of “paranoia” or the strawman of how you put the issue to be a choice of Troll or Big Government.

    Of course, what else would one expect from such an anti-patent academic? The notion of private property gnaws at you constantly, doesn’t it?

    Back to the tower with you!

  70. How about the constitution and minimal government interference?

    Minimal government interference in a right that is a creature of statute. Brilliant idea.

    Because nobody who is trying to start a business and maybe create a job or two really needs to know who to approach for a patent license. They can always find out who the owner is when they get sued.

    It’s always fascinating to see which one wins when patent troll paranoia is pitted against big government paranoia.

  71. Concur whole-heartedly, in-house. If you want to find this information out for particular patents, it’s accessible, just requiring a bit of your “sweat and toil” to fine.

  72. should not be enforceable for times where the proprietor is not correctly recorded

    Kharol, this is an unnecessary step. Enforcement is accomplished through court action. Court action already requires identifying the real party of interest.

    We do not, and should not, clutter the legal landscape with “more government.”

    “Convenience” is a poor excuse for the surrender of liberty.

  73. This is a difficult question, but in view of how the existence of patents is typicallly justified I’d say
    - a patent should not be enforceable for times where the proprietor is not correctly recorded at the office.
    Indirectly this might mean that exclusive licenses should be recorded as well..

    I’d really appreciate the extra convenience of expired patents being marked as such when searching USPTO. I wouldn’t mind having to actually follow the link in the search results table, but the current situation that it’s easier to check the legal status of a US patent at espacenet.com than at USPTO is really a shame.
    Or is the status quo just as it is to subsidize service providers?

  74. “Currently, you cannot search among only in-force patents, or easily tell who the owner of record of patent is, how many times it has been cited, how much longer it may be in force, whether it has been reexamined, who requested the reexamination, or whether or not the current owner is a large or small entity”

    All this information is available, just not readily available. Are we just complaining about how hard our jobs are?

  75. Stop and think for a second.

    Would we welcome such Big Brother intrusion on Who Owns What for any other property that anyone can buy and own? A patent is property. Once granted, is it really anyone else’s business who owns it (aside from aggregated anti-trust concerns – admittedly a possible acceptable driver – but htat is an exception that should not devour the rule).

    There are existing rules in place that call for parties of interest to be identified in a court proceeding. Shouldn’t that be enough?

    Public policy justifications? Read 1984. How about the constitution and minimal government interference?

  76. Well said Colleen Chien, and well said Malcolm Mooney. Are there any public policy justifications for the present reticence/secrecy?

  77. While greater applicant disclosure is worth considering, I believe that the PTO could do much more with the information it already has. Currently, you cannot search among only in-force patents, or easily tell who the owner of record of patent is, how many times it has been cited, how much longer it may be in force, whether it has been reexamined, who requested the reexamination, or whether or not the current owner is a large or small entity. Yet making this information, which already exists, more accessible and supportive of business decision-making, could go a long way to enhancing the public’s ability to assess patent risks and opportunities.

    ABSOLUTELY. This is the minimum additional information that should be made available, and could be made available relatively easily.

    Hey Kappos: just do it. Anyone who is interested in suppressing easy access to this information can be and should be shoved aside, including you.

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