LegalStar is offering its electronic patent filing software free until Labor Day 2004 (normally $50 per filing). I have not used their software yet, but am planning to try soon. The USPTO also offers EFS software here.

There are two reasons why I am convinced that electronic filing will be standard operating procedure for the majority of new filings within the next 18 months. First, it is likely that electronically filed applications will be given a hefty discount on filing fees. Second, attorneys will appreciate the peace of mind that comes with the immediate confirmation of filing.

It is difficult to predict whether practitioners will end up using USPTO’s filing software or that of a company like LegalStar. Any software company will need a compelling argument to show that its software is better than the USPTO’s free version. In the long run, electronic filing software will likely be tied to prosecution docketing programs and sold as a bundle.

Read the USPTO’s memo on the legal framework for electronic filing.

The CAFC is expected to hear oral arguments today in the patent infringement case against RIM, the maker of the BlackBerry. The district court issued an injunction against RIM and awarded over $50 million in damages to NTP. The injunction was stayed awaiting the results of the appeal.

NTP’s patents are directed toward an “electronic mail system with RF communications to mobile processors.” (e.g., U.S. Patent No. 5,436,960).

NYTimes Article (Free Subscription)

For what it’s worth, RIM’s patent drawings are much more interesting.

A new working paper by Juan Alcacer and Michelle Gittelman (Both at NYU) examines prior art citations in patents. One interesting finding:

On a per patent basis, 2/3 of all cited art was discovered by Examiners rather than submitted by Inventors.

Alcacer, Juan and Gittelman, Michelle, “How do I Know what you Know? Patent Examiners and the Generation of Patent Citations“

Washington Times is reporting that the inventor of the portable stereobelt (Andreas Pavel) may sue Apple over its iPod technology. Mr. Pavel holds several patents including US Patent No. 5,201,003. The ‘003 patentissued in 1992, but claims priority to a 1978 application.

Reportedly, Sony recently paid Mr. Pavel several million dollars after a long dispute and settlement negotiation over Walkman technology.

Link here and here. Thanks to macsurfer for the backlink.

Xenia Kobylarz at the daily journal has written a new article discussing the failure of the inter partes system.

The inter partes procedure has been attempted only 42 times, according to the patent office. And the office has written the procedure out of its new 21st Century Plan – its five-year strategic blueprint – in favor of yet another experimental administrative proceeding based on a process used in European nations and Japan.

A couple of public interest organizations (e.g., EFF and the Public Patent Foundation) are stepping in as guinea pigs for the system.

The outcome of Public Patent Foundation’s highly public request for reexamination may determine the future use of the procedure.

A few years ago, the the Federal Judicial Center (FJC) created a video providing an introduction to patent law for judges and juries. The video is available here (Windows Media, Quick Time), and provides a very good (although general) introduction to patents and the patent office. I would recommend that anyone coming to work in a patent firm should watch this video as part of new employee orientation.

A sample patent used in the video is available here.

The video is used by some judges as a replacement for the testimony of a “patent law expert.”

I think that everyone in the field is or will soon be feeling the pain of malpractice insurance rate hikes. Diedre Greg in Seattle has the story: Patent lawyers are slammed by insurance rates

Amity Insurance has developed their list of the top ten most common causes of attorney malpractice. Although the order may be somewhat different for patent attorneys, all of these are real issues.

1. Missing Deadlines
2. Lawyer Stress and Substance Abuse
3. Conflicts of Interest
4. Ineffective Client Screening
5. Inadequate Research and Investigation
6. Poor Client Relations
7. Overzealous Efforts to Collect a Fee
8. Poor or Inadequate Documentation
9. Inappropriate Involvement in Client’s Business
10. Unwillingness to Believe You Might Be Sued

Link

Samuel Oddi (UAkron), has a working paper discussing the recent increase in malpractice claims and provides an analysis of the exposure of patent attorneys to malpractice claims.

In other insurance news, Universal Security has sued its insurer (the Hartford) for failing to cover patent litigation costs. (Article).

Professor Jessica Lichtman’s working paper and music sharing proposal is titled “Sharing and Stealing.”

My specific proposal is inspired by an impulse to see whether an architecture like the one that has permitted the Internet to flourish as an information space can define a thriving music space. The U.S. recording industry’s recent enforcement campaign seems to seek to move us in a very different direction.

This paper is a fun read.

Edward Felton, Martin Schwimmer, and others have already noted Professor Mark Lemley’s new paper that disparages the justification for ex-post IP incentives.

At the very least, Lemley misses the necessary ex-post first-publication incentives. Any coherent IP system gives an incentive to both create (ex-ante) and show your creation to the public (ex-post).

Federico Etro (Harvard): Etro proposes a new rationale for the persistence of monopolies based on a precommitment of the incumbent monopolist to invest in R&D. In other words, the monopolist stays on top, not by unlawfully exercising market power, but rather by continually investing in new technology.

Economic Journal, Vol. 114, pp. 281-303, April 2004

It looks like the job market for patent attorneys is still good. Need a job offer?

Update: A friend of mine has been a patent agent for several years in Chicago and also has a MolBio PhD. For family reasons, he is moving back to Northern California (Tiburon). He would like to continue doing patent work but does not want to commute to silicon valley. Please e-mail me patent@gmail.com with any leads or to request his info.

Patent law is traditionally justified as an innovation incentive. In a new working paper, Jochen Bigus (Hamburg University) argues that patent law also serves a second goal:

Namely, mitigating conflicts of interest in the venture financing process, thereby making innovations more likely.

Essentially Professor Bigus argues that the clear milestones provided by patent law allow for a better relationship between investor and innovator.

I just ran across another prime resource. Daubert on the Web is entirely devoted to the law of expert witness testimony and has an up-to-date blog.

Those struggling with starting an in-house IP department should look here.

The absolute first thing you should get is your own customer number from the PTO. Immediately request it, listing only your reg. no. and listing the company address as the correspondence address! Changes can later be made depending on how you decide to handle things.

Harry has further advice if you want to push around the outside counsel.

Phil Albert’s advice:

What is the safest advice an intellectual property attorney can give clients concerned about potential litigation? “Do absolutely nothing.”

Unfortunately, your clients will not make money by doing nothing. Short of doing nothing, Phil discusses the need to examine how much risk your client is willing to endure, and how to balance that risk level with the needs of the business.