Patently-O Bits and Bytes by Juvan Bonni

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56 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

  1. 5

    Hey Anon – your efficient infringement is getting some notice.

    “Now, before some of our readership becomes dizzy by the prospect of an uptick in their fortunes, I should point out that Joe Nocera (this time writing at Bloomberg) has been quick to predict that even if Sonos wins in court the damages will do little to cover its real losses. Which, of course, is what efficient infringement is all about.”

    link to iam-media.com

    1. 5.1

      Thanks iwt, but I cannot take credit for initiating the view of Efficient Infringement (although I have been a keen observer of its actual implementation).

    2. 5.2

      I have to chuckle – given the next article on the blog.

      (It’s a sad chuckle, given how so many seem rather nonplussed by the denigration)

  2. 4

    I Echo all the comments about prosecution cost. It has nothing to do with technical expertise. Honestly, technical expertise is picked up when you work with the client’s technology for a certain amount of time—not from school or industry.

    Attorneys are more expensive than agents/scientists and have to go on the partner track. Agents can do the work at lower salaries and billable rates.

    Knobbe is notorious for evaluating attorneys/agents based on profit versus hours, so that is also evidence that this is about cost, not technical expertise.

    I do think the doom and gloom about shipping work out to India and patents being garbage is overstated, but I would say that certain firms and clients, especially those in EE/software are in the “quantity” business. The clients are spreading ideas about cost-cutting that are becoming uncritically accepted by execs in other tech areas. This is driving costs down across the board.

    I am on the younger side and I don’t see how prep and pros in a big firm is sustainable in many areas.

    The work is all going to go in house.

    Eventually alternative providers like Cardinal and virtual firms (versus India with the foreign filing license issues) will handle the overflow/commodity prosecution. Outside counsel will be retained for general counseling, opinions, and PTAB work, but outside counsel will do less prep and and pros and will have leaner teams as there will be less actual “work” for partners to do and more counseling type work.

    1. 4.1

      Re: “I don’t see how prep and pros in a big firm is sustainable in many areas.” Agree, except as a “loss leader” or favor for some clients, or handling important patent applications for start-ups and others NOT written and prosecuted under severe client billing constraints. Some large firms now also refuse to handle applications for individual inventors as too suit prone.
      Re: “The work is all going to go in house.” I have observed the opposite trend. In house patent prep and prosecution employees have too many overhead burdens – rent, admins, health insurance, etc., etc. and less billing production pressure. I have seen increased outsourcing to smaller low overhead firms outside metropolitan areas and to individual PTO practitioners [as well as to India]. But all of this may vary by areas and technologies to some extent.

      1. 4.1.1

        re: “[as well as to India]

        Again, actual examples and methods of dealing with the BIS issue would be helpful as opposed to off-the-cuff anecdotal sound bytes.

        1. 4.1.1.1

          Lots of big companies have/had drafting done in India. Ford. GE. HP. Motorola. Philips. Etc. The C-suite types were all told that they could get the same quality as U.S. drafters at 1/10, or 1/20, the price. And they believed it.

          Your concern over BIS is overstated. As long as the subject matter is not export controlled the drafting can be done outside the U.S.

          1. 4.1.1.1.1

            Alas, you don’t know if the subject matter will fall into a BIS controlled item until after the Office evaluates your submitted application in its processing.

            What a corporation may decide to do IS simply a different point than what a law firm may decide to do.

            You may want to check with your malpractice carrier if you think that this point is “overblown.”

            1. 4.1.1.1.1.1

              If the subject matter is not export controlled, there’s no issue sending it to India for drafting. You can kick up all the dust you want but it’s not going to change anything.

              1. 4.1.1.1.1.1.1

                Pointing out the required timing is not ‘dust-kicking.’

                Usually (and for good reason), attorneys are more risk averse than you appear to be.

                1. I’m an attorney and I know the law and the rules. As do many other attorneys. That’s why thousands of U.S. patent applications are being drafted outside the U.S. every year.

                2. You jump to a conclusion as if that conclusion was the reasoning to support the conclusion.

                  As an attorney, I would expect you to catch that.

        2. 4.1.1.2

          Anon, one is not normally going to identify or discuss on a public blog without permission the legal practices, law firms, or business relationships of specific companies that may not be clearly public information.

  3. 3

    The media article above “Sonos vs. Google: Amazon Won Patent for ‘Distributed Speaker Synchronization’ Four Years Ago (Source: Geek Wire)” is an example of how a major patent suit brings out comments in the nature of “how can that be patentable – look at all these other patents on this subject?” In some cases that might well be prior art missed by the application examiner. But all too often I doubt if the media reporter is comparing original application filing dates or distinguishing limitations in the claims being asserted.
    Furthermore, frequently not even citing the patent number or other identity of the subject patent in a media report on it strikes me as violating one of the things they used to teach in freshman journalism classes?

    1. 3.1

      Muheim, Men, and Philipp Blum. “On the Performance of Clock Synchronization Algorithms for a Distributed Commodity Audio System.” Audio Engineering Society Convention 114. Audio Engineering Society, 2003.

      Not cited (just checked one patent), but appears very relevant to the claims in a couple of the patents. At least four months before the US priority date.

      Most of the cited art appears to be more synchronization *in general*, while this is specific to multiple speakers.

  4. 2

    Interesting that 4 of the above job postings are for “Patent Scientist” [and not in biotech]. Is this a new [non-legal] job title now in widespread use? The job description includes evaluating inventions for patenting, writing patent applications and being trained to become [not required for hiring] patent agents.

    1. 2.1

      Interesting questions Paul.

      I haven’t bothered to check to see if those positions are in any of the states ‘leading the charge’ to abrogate control of the practice of law from attorneys that have actually passed a state bar exam in the ‘interest of access to justice’ (states like California, Utah, and Florida, come to mind).

      There is certainly an unstated battle waging, with several fronts (access to justice being one, pressure from the Big 5/Big 4 [however many now] accounting corps being another).

      1. 2.1.1

        I would guess that the pressure for such “Patent Scientist” or “Patent Engineer” positions in IPL firms is coming from the financial squeeze between client corporations wanting to pay less for prep and prosecution work and firms needing to cut costs to maintain partner incomes? Also, to some extent, large corporations wanting to reduce O.C. billing costs with internal hiring for subjects like litigation discovery responses, prior art searching, etc? Also, current potential inventions can be increasingly technically complex, benefiting from more specialized technical expertise than an old undergraduate engineering degree.

        1. 2.1.1.1

          Not sure that I can agree that any invention is “increasingly” more complex so as to change any underlying dynamic. It’s the nature of the industry (and pretty much always has been) that innovation be complex.

          I also don’t see the OC driver here (KM is not an entity that would turn to other OC, so the hiring pattern at point is different than your supposition).

          If this is but ‘cost conscienceness’ then the impact of ‘access to justice / non-attorney practice of law’ is yet to be felt (which of course means that even more pressure on law firms as OC is forthcoming). Partners ‘seeking leverage’ may well want to be aware that today’s leverage may invite tomorrow’s wide-scale business model changes.

    2. 2.2

      Seems to me that the only way to satisfy the ever dropping price of patent applications is to people with BS’s in the area that become patent agents.

      My guess is that is where it will go as long as patents are crippled with very little worth. If Congress restores some patent dignity, then this may go back up. As it is now, I continue to see clients demand more and more for less and less and continue to see fewer people want to become patent attorneys (for good reason) and continue to see patent attorneys go inhouse or find other careers.

      I think asking for a 50 page patent application for $5k (which is what many now want) is not sustainable for attorneys.

      1. 2.2.1

        Re; “My guess is that is where it will go as long as patents are crippled with very little worth.” It’s not that draconian, and I wonder if some of this personnel change is part of the cause? I have heard of examiners complaining about declining application and prosecution quality. I wonder if increasing application preparation and prosecution by personnel with less training and less supervision by senior patent attorneys is part of the problem? [Assuming that they have been keeping up with the relevant case law requirements for more enforceable patents.]

    3. 2.3

      Hmmm . . . patent “scientist,” eh? Sounds to me like some folks and their employers may be improperly entering the realm of the practice of law . . .

      What are the differences, if any, between patent agents / patent attorneys . . . and patent “scientists?”

      Inquiring minds . . . the patent office . . . and the state bars may want to know.

      1. 2.3.1

        Given that State bars may not control practice under the Office (see the Sperry v Florida case), State bars may not be paying as much attention.

        1. 2.3.1.1

          State bars are oblivious to the issue. Only if someone files a complaint would they even bother to notice.

          1. 2.3.1.1.1

            Patent agents are (largely) immune to state bar influence… (even if someone does raise a complaint).

      2. 2.3.2

        The scientists will work under attorneys and become patent agents.

        It won’t be an issue. My guess is, though, that the structure of the large patent firms is going to change to a model of senior attorneys supervising like 5 patent agents and doing things like writing the claims.

        The problem is that the big corporations have market power and keep pushing down the prices they will pay for patent prosecution. The clients I know of that are huge corporations have dropped what they are will to pay 1/3 in the last three years and about 1/2 in the last 10 years.

        Some have gone further and dropped the it by 2/3 in the last 10 years and with inflation more like 3/4. Prosecution work is constantly trying to strip out costs to deal with the ever dropping price.

        It is funny, though. There is actually a huge difference in quality. And it is also weird that the big corporations have hired all these in-house attorneys where they are each allowed to set their own standards for patent applications. So they are acting as experts when in reality few of them are.

        But it is the model of quality control. So the big corporations by us say x dollars to write a patent application and then .2 x to have someone at the corporation perform quality control on it.

        What is true is that things are very dynamic right now. Prices are dropping. Lots of people are dropping out of prosecution.

        The thing is that at the big corporations they hire the in-house attorneys and they are acting as the control to quality. In my opinion, the quality has dropped significantly and there are large portfolios that are junk, but it doesn’t matter as patents are all junk paper at this point anyway.

        Senor management is looking at patent work more and more as unnecessary and you hear things like why not just cut it by 80 percent.

        China has floated the PTO through this with all the applications they have filed, but if there is a recession and China pulls out of the US patent process, then expect massive layoffs at the PTO (maybe 50%).

        You see China may stop paying for all these applications. They are experimenting. And likely will cut way back once they understand the process better. They may also figure out other ways of protection or go more to the EPO.

        But the biggest driver is that there are like 10 corporations that have huge market power and they feel they are contracting out a commodity with in-house people controlling the quality. So the 10 big corporations are going to continue to push down the price and they won’t care who is writing them.

        Many of the big corporations already have experimental shops set up in India. The idea is to train them to write the patent applications for like $500 and then have one in-house person responsible for quality control and teaching. Many corporations are already doing this.

        And the other big thing is too that people like Lemley continue to win. The patent system continues to get weaker and weaker and the big corporations are happy about that and they have enormous power.

        1. 2.3.2.1

          The other thing that is odd that is going on is what is happening in general in our society.

          The federal government workers continue to get raises and great benefits while workers in the private sector are under constant pressure of reduction in salaries and reduction in benefits so that the federal workers in many cases are making more than the private sector and working 1/2 the hours.

          This is becoming more true at the PTO. Fewer people want to leave the PTO because it so bad in the private sector. It is getting so the fees are more than what the corporations pay us to perform the substantive work. That is reality. Not sure what is going to happen, but it seems unbalanced and unsustainable to me.

          1. 2.3.2.1.1

            Going into patent prosecution would be a huge career mistake for any attorney as it is something that will continue to decline.

            The only way this won’t be true is if there is some giant change where corporations stop controlling everything, which is highly unlikely.

            Corporation have exactly what they want now. They can get some junk patents and harass start-ups and start-ups can’t assert their patent against them with endless IPRs.

            1. 2.3.2.1.1.1

              It is now even less true under current IPR practice that a company being sued can file “endless” IPRs against the same patent. More than one IPR by the same party against the same patent is highly unlikely. Also nearly roughly half of all the most recent IPR petitions never even get to first base [IPR Petition denied – no IPR.] [Citing the same few old odd chestnuts does not overcome actual statistics from thousands of IPR petitions and IPRs.]
              Of course if a patent owner decides to sue several different [plural] companies at about the same time they could get hit with plural IPR petitions, because those added defendants have a constitutional right to defend themselves by asserting their own defenses [something not always understood in comments here]. They are not bound by the failure of other companies to put on an adequate defense.

          2. 2.3.2.1.2

            What may come to haunt the European attorneys is that the US corporations are developing shops in India to write the applications.

            1. 2.3.2.1.2.1

              “What may come to haunt the European attorneys is that the US corporations are developing shops in India to write the applications.”

              US companies been doing that for decades. Not aware of any EP patent attorneys been affected.

          3. 2.3.2.1.3

            It is unbalanced and unsustainable.

            It must be some 15 years ago or so, but the firm I was with back then actively investigated the ‘write in India” option. The biggest problem then (and still in place today) is that writing an original application outside of the country runs smack into BIS export control violations (with foreign license being granted only after the filing of the application).

            The firm that I was with decided that the pain and potential consequences nixed the ‘write in India’ model.

            Further, that firm and my current firm handle enough ‘transfer in’ work that the inside counsel we deal with recognize the ‘pay later’ impacts during prosecution that so often accompanies a ‘quick and dirty’ starting point. If you run into a no new matter’ type of roadblock only a couple of times, most inside counsel learn the lesson (mileage may vary if the client is aiming for a ‘pure numbers’ puffing up of portfolios and proliferate the pipeline to compensate for a sizable number of abandonments along the way — think IBM and Microsoft).

            1. 2.3.2.1.3.1

              I recently considered two in-house positions with big corporations where the job was supervising Indian drafters/prosecutors.

              Kind of a snarky comment about price. We have top shelf clients and large corporations. :) I’ve written portfolios for start-ups and got funding for them. Written claim chart for licensing, litigation, etc.

              The bottom line is that all the prices have been dropping. You seem to be saying the prices you are getting aren’t falling. You would be about the only person I have heard say this.

              1. 2.3.2.1.3.1.1

                No snark intended and certainly no indication from me as to price movements.

                My point was strictly on the “write-in-India” aspect, as I was on the team that investigated – and canned – consideration of that option. Now, times may have changed (although BIS controls have not), so there may be a way that these people are properly accounting for the rather drastic consequences of sending work out of country before a foreign license is obtained.

                Would love to hear from someone actually doing this…

              2. 2.3.2.1.3.1.2

                “I recently considered two in-house positions with big corporations where the job was supervising Indian drafters/prosecutors.”

                I was going to ask why you didn’t just do this and stop whining. Not enough pay or what?

    4. 2.4

      Paul, KMOB is a firm that routinely instructs patent law firms outside the USA. I’m sure I don’t need to tell you that the USA is unusual in the organisation of its various patent practitioner professions. I presume there is pressure on KMOB from its clients, world-wide, to arrange its categories of fee-earners more in line with everywhere else in the world.

      My career path is typical for Europe. First, a university degree in a science or engineering speciality. Then recruitment by a patent law firm looking for a trainee patent attorney in exactly my special field of engineering. Then study, to pass exams, to get on the Patent Attorney Register, in my case, UK and EPO.

      Clients in Europe expect from their patent attorney deep and up to date knowledge and experience in exactly the technical field where their inventions are made. How else can one draft an adequate patent application, these days? Entrusting the job to a non-specialist is, these days, worse than useless.

      On whether KMOB’s is a good idea, in the jurisdiction of the USA, I am not qualified to opine. But my first impression is that KMOB, in this regard, is ahead of the pack.

      1. 2.4.2

        My guess is MaxDrei that KMOB is ahead of the game and that all patent firms will start to have a structure of like 5 patent agents supervised by an attorney. I don’t think it is about technical expertise, but about cost.

        Example: one corporation I know set their prices at $14k per application in 2008. Then it dropped to $12K in like 2012? Then it dropped to $9 in 2015. Now they have dropped it to $5K.

        The fact is that patent prosecution for attorneys is not sustainable. It is not worth getting a law degree to be able to generate $300-$400K in revenue for a law firm. The corporations are continue with price pressure. There is no reason to think that large corporations are going to drop it to $2500 per application in a few years.

        And as to Europe. My understanding is that in Europe you continue to get a pretty decent price for a patent application.

        And it really doesn’t have to do with expertise as the US firms are using in-house people to be in charge of quality control.

        1. 2.4.2.1

          “The fact is that patent prosecution for attorneys is not sustainable. It is not worth getting a law degree to be able to generate $300-$400K in revenue for a law firm”

          It is if you own the law firm. Start up your practice brosef.

          1. 2.4.2.1.1

            I can readily see that you have no idea what you are talking about, 6.

            Owning your own firm provides no such ‘free ride,’ and quite in fact provides a bevy of additional risk and calls of sweat equity.

            I am not sure who you are talking to to generate this viewpoint of yours, but I can assure you that you do not have a complete picture.

            1. 2.4.2.1.1.1

              “Owning your own firm provides no such ‘free ride,’ and quite in fact provides a bevy of additional risk and calls of sweat equity.”

              Ain’t not one person said life is ez bruh.

              1. 2.4.2.1.1.1.1

                … and neither have I. On the other hand, my comment is a direct rebuttal to your (errant) view as to “It is if you own the law firm

                You simply have no clue of what you assert.

      2. 2.4.3

        Plus, Max, I hope you realize that most of the US patent attorneys have masters degree in their areas of expertise and worked in the industry before becoming an attorney. So most of us are highly qualified.

        In fact, the typical patent attorney I have worked with in large IP firms in the US (and I have worked at some of the top ranked ones) is a person that dropped out of a Ph.D. program in their technical area with a masters degree.

        What this is about is cutting the cost. Pay the patent agent $120K. So five to ten patent agents will be supervised by an attorney. That is what is happening. And that may not even be enough as the corporations are putting a huge amount of work into developing India for prosecution work.

        1. 2.4.3.1

          I’d like to see some substantiation for the ‘write-in-India’ notions that you are using as sound-bytes.

          1. 2.4.3.1.1

            How many comments for how many years from experienced patent attorneys on this blog telling you that U.S. applications are being prepared in India by large U.S companies that they personally know about does it take?

        2. 2.4.3.2

          Yes, of course, Night, it is all about “cutting the cost”. Whether that is a false economy, saving money at the wrong point, is debatable.

          I recall that anecdote about IBM visiting some hapless competitor and inviting a licence on 5 patents, the hapless responding with a detailed invalidity opinion on those Five and the sad suits from IBM sighing and quietly explaining that IBM has another 595 patents they can pull out if necessary, if the target continues not to see reason.

          When you have 600 patents you can assert, who cares about the “Quality” of any one of them. For as long as business people set greater value on quantity than quality, the price for drafting a patent application will continue to fall.

          Isn’t it a bit like the situation farmers face, when they offer for sale a commodity like milk or grain? No alternative but to squeeze costs down at any price, just to survive, even if the fertility of the earth is destroyed. There might not be quite as many patent application writers as there are farmers, but their market power isn’t any greater, is it?

          Then again, what about sub-assemply suppliers to the auto makers. If there is only one (or two) seat makers, which all auto makers have to buy from, those seat makers can make good money. But patent scribes are not like seat makers are they. More like farmers, no?

          Here in Europe, you have to get your drafting right first time. FtF gives you no second chance. That might be why drafting quality is still given weight.

          1. 2.4.3.2.1

            FtF is not the only driver towards “you have to get your drafting right first time.

            That is not a “Here in Europe” kind of thing.

            Do you really think that the US patent system has some type of built-in mulligan?

            1. 2.4.3.2.1.1

              Mulligan? Yep. I’m thinking of i) the grace period and ii) the provision that debars earlier filings by the same inventor from counting as prior art that can be cited against the patentability of a claim.

              I agree with you that FtF is not the ONLY driver towards getting your drafting right first time. Did I say that it was?

              1. 2.4.3.2.1.1.1

                Did I say that it was?

                You certainly made that impression.

                Also, how exactly are those items you mentioned here a form of mulligan?

                Perhaps you are not understanding what the term mulligan means…

          2. 2.4.3.2.2

            “When you have 600 patents you can assert, who cares about the “Quality” of any one of them. For as long as business people set greater value on quantity than quality, the price for drafting a patent application will continue to fall.”

            Exactly. But this also needs to be reflected in the expectations on the office churning through all this as well.

            1. 2.4.3.2.2.1

              But this also needs to be reflected in the expectations on the office churning through all this as well.

              How?

              (no snark)

        3. 2.4.3.3

          I’ve never heard of anyone with a college degree being impressed by a dropout master’s before. Curious.

  5. 1

    While not being critical of any particular ISM, today’s Bit’s and Bytes certainly reflects a rather large dose of virtue signaling.

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