U.S. IP Brokers: No Ethical Regulations and No Standards
- In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]
Will Research In Motion (RIM) Sell Its Patents?
- Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]
Paul Graham's Patent Pledge
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Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:
No first use of software patents against companies with less than 25 people.
Is this a good idea and could it possibly work? [Link]
Patent Jobs:
- Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
- The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
- The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
- Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]
Upcoming Events:
- The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
- The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
- The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
- American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
- Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
- American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
- C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
- Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
- American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
- Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
- The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.
NWPA, “According to the holding of Cybersource a new sort program that would sort say numbers represented in a computer and require 100 million steps would not be eligible for patentability because a human could take a pencil and paper and perform the sort.”
I disagree that that is what Cybersource held.
So, I claim 1 + 1 = 2. Why should this be patentable if I claim to calculate the number using a machine rather than a pen and pencil?
Would a claim to any abstract concept be patentable if I added to the claim that it be automated using a machine?
I think this whole discussion took place once upon a time in Wyeth v. Stone, where the claim was to cutting blocks of ice by any machine, the application disclosing one such machine. Here, at least the claim did something physical, but still it was held to be unpatentable subject matter.
Processes are independent of apparatus, even though they may use them. What is required is that they do something non abstract, something physical. This has been the law for nearly 200 years. Manipulating abstract concepts like risk, price, quality, quantity, or simply calculating numbers from numbers, is not and never has been the stuff of patents.
NWPA, all I think Benson and Cybersourse stands for is that inventions that do no more than manipulate abstract concepts are unpatentable. Business concepts are in that class. So are mathematics. Both have been with us since long before Cochrane v. Deener. Yet no one thought the patent system should cover such inventions.
Inventions that make the machines operate better or faster are still patentable, I think. Had the Benson BCD->binary claim been limited to its used as a microinstruction in a computer, for example, I am sure the result in Benson would have been different.
Turning to data compression, correction, encryption and the like, I think these are still patentable as they physically alter the data into new compressed forms. I think In re Lowry would be good precedent here to affirm their continued viability.
What are clearly in peril, though, are BMPs. They do not improve machines or transform anything. They manipulate things like risk, price, quality, timeliness, security, and the like, all abstract concepts. I think, as a class, they are all in peril.
“Cybersource did not have before it a method.”
Check again.
You don’t even have to go far: Patently-O’s headline:
If the software method is not patentable, then neither is the “computer readable medium”
Nevermind
Compare “at times the Supreme Court will ignore Congress”
and
“When judges act like this we are getting close to a reboot of the country.”
and
“What are you talking about?”
One could read the anguish in NWPA’s post to that effect.
I think BMPs have been doomed since In re Bilski. Any wise practitioner specializing in BMPs should have long ago abandoned that sinking vessel.
Check my post below with the legislation quoted in full.
Just as an aid to further discussions, here is pertinent language from the pending legislation.
“g) Definition-
(1) IN GENERAL- For purposes of this section, the term `covered business method patent’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
(2) REGULATIONS- To assist in implementing the transitional proceeding authorized by this subsection, the Director shall issue regulations for determining whether a patent is for a technological invention.
(h) Rule of Construction- Nothing in this section shall be construed as amending or interpreting categories of patent-eligible subject matter set forth under section 101.”
Note that current 273 is limited to “methods.” Cybersource did not have before it a method.
Second, the new legislation specifically excludes amending or interpreting 101.
I see nothing in 273 or in HR 1249 that has any effect on Cybersource. Congress has gone out of its way not to suggest that it was endorsing the concept that Section 101 actually embraced business methods.
To suggest otherwise to to bootstrap an express disavowal into an endorsement.
“and Cybersource is clearly saying that business method patents are not covered under 101.”
Well, to be sure, so did Bilski. It’s just that some people chose not to hear that from it.
In other words, it invalidated more of NWPA’s patents than any other decision.
Wootles!
Alun, and even where Congress fully intends to overrule them, at times the Supreme Court will ignore Congress. Witness 103 and what the Supreme Court said about it codifying its case law in Graham v. John Deere.
NWPA Cybersource is clearly saying that business method patents are not covered under 101.
Oh, so Cybersource defined the term “business method”? Cite please.
Cybersource is inconsistent with 35 USC 273. I believe that’s what Ned means, anyway. I’m inclined to agree.
A new statute can override old precedents, so not a problem. Mind you, business method patents are mentionned in the old law too. That leaves us with only the old axiom that the Supreme Court are only infallible because they are final, and not final because they are infallible.
NWPA, I see.
Let's start with legislation. What legislation is inconsistent?
That’s exactly what you do in comp sci class. You just stop before 100 million.
“patent reform”
Just because they call it “reform” doesn’t mean it is.
The patent bill is nothing less than another monumental federal giveaway for banks, huge multinationals, and China and an off shoring job killing nightmare for America. Even the leading patent expert in China has stated the bill will help them steal our inventions. Who are the supporters of this bill working for??
Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large multinational corporations maintain their monopolies by robbing and killing their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. The bill will make it harder and more expensive for small firms to get and enforce their patents. Without patents we cant get funded. Yet small entities create the lion’s share of new jobs. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs. Those wishing to help in the fight to defeat this bill should contact us as below.
Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Yet Congress has almost completely ignored the testimony of inventors. Congress tinkering with patent law while gagging inventors is like a surgeon operating before examining the patient.
Please see link to truereform.piausa.org for a different/opposing view on patent reform.
link to docs.piausa.org
Bravo. Thanks for that gracious remark.
I think you make my point. You can tell me exactly what to do, to thread the EPO needle eye. However “nonsensical” the EPO criterion is, you know exactly what it is. Stressful, I grant you, is shaping the inventor’s contribution so that it will indeed pass through the eye. But please don’t blame the EPO for that self-imposed stress.
And BTW, I’m not seeing any appreciation in your answer of the difference between Art 52’s “technical character” eligibility test and Art 56’s “technical problem” test. But I expect that’s just me, not reading you right.
Although, Max, I will say that the EPO at least has a statutory policy and the judges at least try to be intellectually honest and try to apply the law.
I enjoy working with european patent attorneys.
And, I would add that there are many large corporations that make hardware (and guess what software as it is impossible to separate the two and very easy to get around any patent by putting some in software and some in hardware) that agree with me. I have worked on cases where the biggest corporations in the U.S. fight the EPO because of this issue.
Cybersource, by the way, stands for the proposition that you better put a data structure stored in a computer memory in all your claims.
The EPO jurisprudence is not worthy of respect. In fact in my practice the attorneys lambast the EPO jurisprudence for it being arbitrary and encouraging gamemanship.
The entire EPO jurisprudence is built around the notion that we do not want to exclude all EE patents, but only software. The problem with this is that as anyone who understand the disciplines of ee and cs knows, the two fields have merged.
So, the EPO goes through this nonsensical inquiry as to whether or not the software lessens the burden on the hardware. There are whole articles on how to game the EPO system by writing the claims to highlight the efficiency of the methods.
Sorry, MaxDrei, but what the EPO has done does not reflect the underlying technology and encourages gamemanship and creates massive uncertainty as to whether or not claims are going to be elgible under Art. 52.
And, I have spent many, many dollars of my clients money at the EPO playing these games.
Look, NWPA, it was me who wrote that I find the pencil and paper argument unconvincing, so don’t harangue me please.
What I do find convincing is:
1) the list of things excluded from patent-eligibility in Art 52, EPC (including “mathematical methods” and “methods for performing mental acts, playing games or doing business”), and
2) the way the EPO decides which Beauregard claims and which business method claims are fit to issue, and which are not.
and I’m looking for signs of an emerging US jurisprudence on software, methods for performing mental acts, playing games or doing business, or performing mathematical methods, which is also deserving of respect.
Just assume for the sake of argument that there is no issue of a person’s brain infringing. Then why should a method on a computer be ineligble for patentability because a human brain could perform the method with pencil and paper even if it took the human a billion years? According to Cybersource this is for public policy reasons. That these methods are the tools of inventors that they need. That argument does not hold water as discussed above.
Max: I don’t care what goes on in your brain. Do you not understand what I write? Deener stands for the proposition that merely because a human could perform a method does not mean that the method should be excluded from patentability.
What bothers me is the holding of Cybersource.
According to the holding of Cybersource a new sort program that would sort say numbers represented in a computer and require 100 million steps would not be eligible for patentability because a human could take a pencil and paper and perform the sort. That is the holding of Cybersource which appears to be a wish fulfillment of what the panel wanted the SCOTUS to hold in Bilski. So, according to our modern times you do what you want regardless of the law–if you can do it. So Judgesters, when a flash mob robs you remember that you are part of what started that flash mob by disrespecting the law. Thank you so much for contributing to the lawlessness of this country.
Anthropomorphication runs amuck again – MACHINES MACHINES MACHINES
This “I could do it with a pencil” argument is for me unconvincing. What are the “grains” in my head when I process information? If I invent a new method of processing information in a computer, it is patent-eligible and might be patentably new and not obvious. But when I watch a new play and process new information, what is new about the method my brain is using, to process that new information?
>>Information processing is what happens within the brains of >>folks watching a play or listening to music. Are they >>infringing?
Information processing is what the computer does, which is also what our brains do. Do we want to exclude all machines that perform information processing methods because it just so happens that is what our brains do?
I confess that I just do not understand why this is so confusing for people. Deener is interesting because it is performing a method of processing grain that could be performed by a person’s body and yet we do not say that we are going to exclude the method in Deener because it would prevent a human from performing the method.
The fact is that just as in Deener almost all information processing methods for machines are just like the method in Deener. A person could do it theoretically, but would not want to.
So, this whole issue of a person could do something is a red herring. The fact is that information is transformed just as the grain in Deener is transformed.
The issue of whether or not to include infringement for what a person does with their brain is a red herring few if any methods on a computer would ever be performed by a person and bringing them up as representative methods is misleading at best.
NWPA writes, immediately above:
“What does that mean? It means the class of information processing methods that is referred to in Benson and Cybersouce do not fit into this tools of an inventor category.”
Does anybody know what he means? I confess I don’t.
Information processing is what happens within the brains of folks watching a play or listening to music. Are they infringing?
Ned: Cybersouce cannot be squared with recent legislation, with Fed. Cir. case law, nor with SCOTUS case law. Cybercource is the most disturbing opinion from the Fed. Cir. I have ever read.
Consider too that the public policy stated in Benson and Cybersource is outdated and nonsensical when applied to information processing methods for machines. The information processing mehtods are adapted for a machine. They are usually methods that no humna would ever want or could perform. In fact, the analogy with physical machines is striking. The methods that machines use to process phyiscal objects are adapted to the machines that can be used to process the physical objects just as the methods to process information are adapted to machines that can be used to process information.
What does that mean? It means the class of information processing methods that is referred to in Benson and Cybersouce do not fit into this tools of an inventor category.
Consider the method in Deener for processing grain. Here the method is adapted for machines (though it recites no machine). No human would want to perform the method of processing grain in Deener and there is no concern of limiting human behavior. Why? Because the method is adapted and strange. Not something a human would want to do. That is in general the case with information processing methods for computers. There are some cases where this isn’t true, but 102 and 103 are far better tools to deal with these problems.
So, the stated public policy in Cybersource is simply wrong and nonsensical. I won’t look up the quote but Benson as I rember it disparaged computers as some small market. Real forward thinking. The fact is that Benson’s public policy was conceived of in a time when these methods were performed by hand.
What are you talking about?
Agreed. If there was any remaining doubt that business methods are not patentable despite reciting the physical hardware on which they are practiced, that doubt has now been removed.
Regardless, and laughably so, the Supreme Court majority led by Kennedy will probably still continue to say that even though a business method is not patentable as under any known test, they are still not categorically excluded from patent eligibility simply because they do not like per se tests and do not want to appear to agree with the liberal wing of the court. Something about the appearance of impropriety in all that.
When judges act like this we are getting close to a reboot of the country.
I would also ask the panel of judges to seriously consider the question that if you as judges do not respect the law what motivation does anyone in the country have to respect the law?
Expanding the holding of Benson after Bilski is clearly outrageous behavior. I think we need a name for judges like Banksters. The Judgesters of Cybersource.
How does the Cybersource opinion possibly square with H.R. 1249 when H.R. 1249 refers to “covered business method patents” and Cybersource is clearly saying that business method patents are not covered under 101. The holding in Cybersource is if you can perform the method in your head with pencil and paper then it is not eligible for 101 regardless of whether or not a machine is performing the method and regardless of whether or not the method is embodied as a component of a machine.
Thanks Anon for that clarification.
Simon – The original author (Mr. Millien) was formerly the “General Counsel of Ocean Tomo, LLC, a leading IP merchant bank” (from his bio). He is noting that 80% of IP Middlemen are not attorneys and that those 80% are under absolutely no ethical rules. I bet he could tell some juicy ‘off-the-record’ stories about either his own former employer or their competitors.
A “bit” far you say Simon. I’ll say. I expect to hear from the general public that lawyers are “not governed by any ethical regulations” but I did not expect to have it confirmed by a law school student.
Call me naive and gullible if you will but, readers, please tell me it isn’t true.
Its a bit far to say that there are NO professional or ethical standards for IP middlemen that are attorneys. Ever heard of discipline by the bar? Its one thing to argue for some sort of body that can provide a stamp of approval, but an entirely different thing to assert that attorneys are without ethical or professional standards.
The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience.
This seems like potentially a very interesting gig as long as you’re cool with the Seattle climate.
Lawrence, you could break up your walls of text by more than a little bubble.
Graham proposes patent reform without the government. Graham states that, “one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products.” Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:
No first use of software patents against companies with less than 25 people.
Is this a good idea and could it possibly work?
No and No.
My prior post was eaten. I described Graham as a cretin in terms of his braying madly at the moon, or some such.
Comments are closed.