Patently-O Bits & Bytes by Lawrence Higgins

Google's Executive Chairman Eric Schmidt Opinions about the Patent System

  • Schmidt suggested that the problem with the current patent system is that; in the early 90s and 2000s there were a lot of patents issued that were very broad, and that patent clerks are now spending a lot of time combing through and invalidating these older patents. Schmidt's suggest that the best way to address the problem is to take the patents as they're published and crowdsource them. Further Schmidt states that "the best way to potentially curb these patent wars, then, would be to publish the patents publicly and allow everyone to comment to see if there's any prior art." Schmidt is worried that "overbroad patents will somehow slow" the progress of the software industry down. [Link]

Applications to Law Schools Decline

  • Many students in the past couple of years came to the conclusion that law school was not for them. This year applications to law schools nationwide are down by almost 10 percent. It seems like potential students are being scared off by the recent legal job market for graduating law students. In 2010, only 87.4 percent of the graduating class had a job 9 months after graduation, which was a 15 year low. While many areas of the legal industry have suffered in the past several years, it seems that the patent law sector is still going strong. There has been an increase in patent lawsuits, as well as patent applications for many consecutive years. The patent industry is somewhat different from other practices of law; an individual that prosecutes patents must have a science, engineering, or computer background to be eligible to take the patent bar. While an individual does not need a technical background to practice the other areas in the patent field, (litigation or licensing) most practicing legal professionals have the technical background anyway. There will probably be no decline in law students who would like to practice patent law; there might even be an increase in future years. [Link]

A New Way to Win Patent Claim Construction

  • In a recent article I read by patent attorney David Orange, he discusses negative claim construction. David states that a classic example of negative claim construction is prosecution history estoppel, which requires the disavowal of claim scope "to be both clear and unmistakable." The article also discusses how to successfully defend against concerns of infringement. David states that, "we routinely look for definitional statements in patents and their prosecution histories… but finding positive definitions is hard because patent prosecutors are raised to never refer to "the invention" and speak only in nonlimiting examples." The article suggest that we should also look for negative statements, such as declaratory statements… [Link]

What Will Kodak Patents Sell for?

  • Kodak has announced that it is willing to sell 10% (1,100) of its patent portfolio, which could help raise a significant amount of money for the company. The sale will be handled by the investment bank Lazard. Lazard recently brokered 2 of the biggest patent deals ever, Google's purchase of the Motorola patents and the purchase of the Nortel patents. It has been reported that the Kodak patents will sell for at least 3 billion, which is a large amount for only 1,100 patents. Nortel sold over 6,000 patents for 4 billion dollars and Google purchased over 17,000 patents for around 12.5 billion. So, is 3 billion dollars for 1,100 of Kodak patents a reasonable or realistic amount, I would say probably no in this situation. Kodak has over 10,000 patents in its portfolio and they are selling 1,100 of them. This could mean the ones they are selling probably are not that important, since they have not decided to sell the total portfolio. Also, Kodak doesn't have that much room to negotiate, over the past several years Kodak has been struggling to stay above water and therefore, the potential purchasers would have more power in the negotiations. [Link] [Link]

Patent Jobs:

  • Thompson Hine is seeking an IP associate with 4-6 years of patent and trademark experience. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and an electrical engineering background. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a chemical background. [Link]
  • Maginot, Moore & Beck is looking for a patent attorney with 1-5 years of experience and an electrical engineering background. [Link]
  • Cooley is searching for a patent attorney with 2-3 years of experience. [Link]
  • Meyertons, Hood, Klivin & Goetzel is seeking patent attorneys/agents and software computer engineers. [Link]

Upcoming Events:

  • Mizzou will be hosting its annual Missouri Technology Expo on September 8th. The event is held as a way of uniting innovators with those who can advance, develop and commercialize technologies. The guest speakers include, Christopher "Kit" Bond, Gregg Scheller, Suzanne Magee and many others. Several investment groups will be on hand, such as The Incubation Factory, DFJ Mercury, Allied Minds and many others. This will be a great event for patent attorneys and many others to network and build business relationships. [Link]
  • The Intellectual Property Owners Association (IPO) will be holding its annual meeting in Los Angeles September 11-13th. Guest Speakers include CEO Chad Deaton (Baker Hughes) and Deputy Director James Pooley (WIPO). [Link]
  • IPO will be holding a conference in Los Angeles on September 14. The conference will discuss "Compulsory Licensing as an Emerging Global IP Issue". [Link]
  • 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]
  • 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]
  • 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]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

27 thoughts on “Patently-O Bits & Bytes by Lawrence Higgins

  1. 27

    Why are we still dealing with this tired, unsubstantiated, and largely disproven argument 30 years later?

    As long as people are being sued for infringing those patents, they will claim that their innovation is being stifled.

  2. 26

    Is Schmidt really this uninformed about the patent system?

    Looking at Google’s past patent policy, I fear this is indeed the case. Perhaps Larry Page understands patents a little better, having filed a few of them himself, and indeed Google is showing a little more guile in the patent game since he took over as CEO, but some of the musings by Schmidt or even Drummond on patents have left me scratching my head…

  3. 25

    FYI when you read the only Book form CERTIFIED File that wasn’t stolen on 5,560,312 coupled with the Oct 19, 1995 letter that I was sent from J. Wenzel….. I’d say between that and the “Fish Story” reissue, you have a mountain. But then I have said that a hundred times!

  4. 24

    David Stein Actually, evidence suggests that the degree of innovation in software is positively correlated with the availability of software patents. The two biggest legal changes in the eligibility of software for patents occurred in 1981 (Diamond v. Diehr) and 1998 (State Street Bank) – which preceded, respectively, the emergence of the personal computer and the growth of the internet.

    LOL. Actually I think the release of RAIDERS OF THE LOST ARK is primarily responsible for the emergence of the personal computer. ;)

  5. 23

    Ha. I had thought it was Al Gore who invented the internet. Now you’re telling me it was the CAFC. You cannot be serious.

    Perhaps you are also one of those who thinks having English as first language is what causes strokes. The evidence is the same. The correlation is just as indisputable.

  6. 22

    Why are we still dealing with this tired, unsubstantiated, and largely disproven argument 30 years later?

    Do you really want to know?

  7. 21

    Schmidt suggested that the problem with the current patent system is that; in the early 90s and 2000s there were a lot of patents issued that were very broad, and that patent clerks are now spending a lot of time combing through and invalidating these older patents.

    My basic response is: Huh?

    My more elaborate response is: Is Schmidt really this uninformed about the patent system? The PTO isn’t like a zoo or an Elizabethan garden, where caretakers carefully shape and prune the patent collection. It’s an administrative system, where functionaries are called on to apply a set of rules to determine an outcome, and then promptly forget all about it until called on to perform the next function on the matter.

    How can the CEO of one of the world’s foremost software companies be this uninformed about how the patent system works? Is anyone else out there as surprised, irritated, and concerned as I am about this?

    Schmidt is worried that “overbroad patents will somehow slow” the progress of the software industry down.

    …which is the same tired argument we’ve heard for 30 years, going back to Diamond v. Diehr (and further to Gottschalk, etc.), and yet the computer field doesn’t seem remotely stifled.

    Actually, evidence suggests that the degree of innovation in software is positively correlated with the availability of software patents. The two biggest legal changes in the eligibility of software for patents occurred in 1981 (Diamond v. Diehr) and 1998 (State Street Bank) – which preceded, respectively, the emergence of the personal computer and the growth of the internet.

    Why are we still dealing with this tired, unsubstantiated, and largely disproven argument 30 years later?

  8. 20

    the public is not going to solve any significant number of bad patent problems by large numbers of volunteer prior art submissions

    LULZ

    Yet we still have Malcolm and his occasional Tuesday offerings that somehow will solve the “bad” patent problems…

  9. 19

    As I said, a current Protest is only for limited situations. But Paris Convention foriegn application normally requires a copy of the parent priority U.S. application as well as its application number, and normally also has a very similar spec and claims in order to have valid Paris Convention benefit. Also, an indicated continuation or divisonal application number found in litigation discovery or othewise means, of course, that it must have the same spec as the priority-claimed [and normally already published] parent application.
    BTW, the Protest Rule is 1.291.
    Public use [or on sale] proceedings are in 1.292, and are not even expressly precluded by publication of the application. But very few patent attorneys have ever tried one or even heard of them, even though they have existed for many years.

    Remember that the point of this thread was to demonstrate that the public is not going to solve any significant number of bad patent problems by large numbers of volunteer prior art submissions in large numbers of pending applications, as demonstrated by the extreme lack of use of all the exisiting systems for doing so, which systems were being publicly denied above as even existing.

  10. 18

    Correct, Andrew.

    And also you’ll be happily excluded from most of the bxxxshxt that law firms require of associates.

  11. 16

    “Only in limited situations where one knows or can find the application number before it is published. Examples: a Paris Convention foreign equivalant of it “laid open” promptly after its filing date [before 18 months], litigation or interference disclosure or discovery, disclosures in related application files”

    knowing a number does not mean knowing the application disclosure/claims!and knowing a foreign “equivalent”does not mean that you know the USSN because it s not available!(or you would have it!);
    just give me one practical real example and we talk again!

  12. 15

    Sorry, let me fix that:

    Anonymous (not James) said – As a law grad with tech background, you can find a job at $100K+ (and more on the coasts)…

    Actually, it is quite difficult to find a good patent prosecution job with a mechanial engineering backgroud. Most of the jobs want EE or computer engineering. If there are jobs for ME’s out there that start at over $100k, please tell me where so that I can go get one. I did excellent in law school (third-tier toilet), have 5 years of experience as an engineer, and am licensed before the PTO. I haven’t been able to find one of these jobs….

  13. 14

    James said – As a law grad with tech background, you can find a job at $100K+ (and more on the coasts)…

    Actually, it is quite difficult to find a good patent prosecution job with a mechanial engineering backgroud. Most of the jobs want EE or computer engineering. If there are jobs for ME’s out there that start at over $100k, please tell me where so that I can go get one. I did excellent in law school (third-tier toilet), have 5 years of experience as an engineer, and am licensed before the PTO. I haven’t been able to find one of these jobs….

  14. 13

    might also set up an IC defense if the prosecuting attorney ignores it

    Not likely – you would have to prove knowledge of the item and I know we have policies for screenign unsolicited mail.

  15. 12

    Ned, certainly an examiner could, but how many examiners have nothing better to do with their time than to check such a website for every application they examine and study all the art that could be listed on that website by claim-clueless people who are unlikely to suggest truely relevant prior art?

    The interesting question is whether a prosecuting attorney would feel any obligation, to the client or otherwise, to check such a website before responding to an office action?

    BTW, another reason for a third party not to use Rule 99 (or its coming equivalent) to cite art directly to the PTO is that the alternative of sending the art via a certified letter (with a detailed explanation of the art’s relevance) to the application’s prosecuting attorney might also set up an IC defense if the prosecuting attorney ignores it.

  16. 11

    What if Google linked a “wiki” type site every published patent application/patent for anyone to update with references to prior art published not? Would it be unethical for patent examiner to look at such a site?

  17. 10

    (Sigh) – patents are always published. Patent applications may be published 18 months later (then again, they may be not published).

    Try to keep up.

  18. 9

    Only in limited situations where one knows or can find the application number before it is published. Examples: a Paris Convention foreign equivalant of it “laid open” promptly after its filing date [before 18 months], litigation or interference disclosure or discovery, disclosures in related application files, etc.

  19. 8

    How right you are, Paul.

    One question, though. How can; and who’s able; to make a protest before publication, since the app’s not public yet?

  20. 7

    In the end, I recommend against law school to anyone who is going for the money. Of course, if they really want to be an attorney, that’s a different matter.

    For over a decade, that’s been my advice to anyone who will listen. With few exceptions, people go to medical school because they are confident that they want to practice medicine. It should be no different for law school.

  21. 5

    As a law grad with tech background, you can find a job at $100K+ (and more on the coasts) but that’s with $100K – $200K in debt. With a tech / engineer degree, you can probably start at $60K.

    So, if you don’t go to law school, you’ll have those three years of salary (and $100-$200K less in debt). Plus, with raises you’ll be up higher (maybe $70K? I’m not sure). Additionally, my friends who didn’t go to law school work substantially less hours.

    In the end, law school doesn’t really seem to pay off economically. Maybe it does if you stick with it 10 years+, but at that point, you might be burnt out and want to go to a lower paying legal job anyway. Anyone have better numbers to figure out whether law school is economically worth it for tech / engineer grads? I’d be interested in seeing it (especially if it calculates wage per hour).

    In the end, I recommend against law school to anyone who is going for the money. Of course, if they really want to be an attorney, that’s a different matter.

  22. 4

    Besides confusing patents with published patent applications, I find it disturbing that another major company, Google, has bought into the myth that “crowdsourcing” patents [third party volunteered prior art] is a solution to the patent problem.

    First, the PTO does not even have any jurisdiction over patents except by reexaminations or interferences.

    Secondly, contrary to this speech, there already are four systems for adverse parties to submit prior art against pending patent applications (and one will be expanded under the pending legislation): Protests before publication, public use proceedings, interferences, and 37 CFR 1.99 prior art submissions after publication. They are almost never used!

    With half a million published applications a year there is simply not the incentive to undertake the costs to properly read and understand the claims and find and cite actually relevant prior art for more than very small percentage of patent applications per year. Furthermore, it has been proven that patent office examiners rarely apply the prior art cited by the applicants themselves. Patent Office examiners clearly do not have the time to wade through piles of materials sent in by patent-claim-reading-illiterates (rooting for truffles).
    Furthermore, the most common result of a third party sending in even good prior art against someone’s pending application is to cause the subsequent patent claims to be strengthened and/or improve the appearance of patent validity. With no “intervening rights” protection. It also dangerously “tips off” the patent owner that the application is of value to someone, so that they should put extra efforts into it, not abandon it, and pay maintenance fees. These are excellent reasons NOT to “crowdsource patents!”

  23. 3

    Further Schmidt states that “the best way to potentially curb these patent wars, then, would be to publish the patents publicly and allow everyone to comment to see if there’s any prior art.

    Should Google investors be concerned that it is apparent that the Executive Chairman does not know that patents are “publicly published’ already?

  24. 2

    Indeed, James, and an often overlooked “viable alternative career” for those with the technical background is to be a patent agent. Take a prep course, pass the patent bar and viola! You’re licensed to do exactly what patent lawyers are doing most of the time. Work a year or two with an experienced patent lawyer/agent to learn the ropes and you’ve got yourself some very marketable skills, and all without the $200,000+ in law school debt.

  25. 1

    “In 2010, only 87.4 percent of the graduating class had a job 9 months after graduation, which was a 15 year low.”

    True, but only 68.4% had a job that required a JD, and only 71% had a job of any kind that was both full-time and permanent. And 23% of graduates with a full-time job reported that they were still looking for work (i.e. that they weren’t happy where they were). The bottom line is that nearly 1 in 3 law school graduates can’t find employment as an attorney, and many who can have to take jobs they don’t want.

    The situation may be slightly better for patent attorneys, but I don’t think it’s better enough to make law school a rational economic choice for most law school applicants, technical background or no. Patent law firms still want applicants in the top quarter or top 10%, so the majority of fledgling patent attorneys will be unable to find work in the field (unless you want to posit that the top quarter is disproportionately made up of would-be patent attorneys). Having a technical background is not a golden ticket.

    In fact, given that people with a technical background have a viable alternative career almost by definition, one would hope to see far fewer people trying to make it as patent attorneys, not more.

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