Tag Archives: Intellectual property

New Developments USPTO & Why You Should Reconsider Your Patent Appeal

“User-centered design will be a top priority” announces the U.S. Patent and Trademark Office (USPTO), which has made plans to develop a new online patent filing and viewing system, said agency CIO John Owens to FedScoop. The USPTO hopes to get feedback from intellectual property lawyers, firms and other users before it starts creating its eCommerce Modernization, or eMod, platform, Owens said.

Announced last month, eMod aims to improve how patents are submitted, reviewed and appealed. Once the office receives feedback, a special team will review suggestions about what stays and what goes, explains Owens. See, the patent-seeking process today is just too long, too confusing, too convoluted to keep. Even the USPTO is investigating its organizational process. Perhaps your firm should, too.

Among changes at the USPTO office, there are myriad reasons your firm may consider waiting to write that long list of grounds for appeal–and most of them involve re-organization–including:

1. Assume Backlog Means Quicker Consideration Of Your Arguments

To begin, the Board of Patent Appeals and Interferences (BPAI) is severely overloaded. In fact, the BPAI is behind on opinions for more than 20,000 pending appeals—a number that is only increasing, reports the Patently-O Blog.

To catch up, each case will need to be read more quickly and efficiently than before. With so many appeals to review, there will be little tolerance for errors or frivolry. Thus, if you aim to join the appellate fight and win, your legal arguments better be, well, appealing.

2. Mimic The Concise Style of BPAI Opinions In Your Appeal

In addition, since 2009, the number of words per BPAI opinion has declined at an alarming rate. In just two years, the average number of words per opinion has dropped from over 3,000 words to almost 2,000 words, according to Dennis Crouch of the Patently-O Blog.

Not only has the average words per opinion changed drastically, but the median words per opinion has also changed notably. The median opinion from February 2009 contained 60 percent more words than the median opinion from January 2011, says Crouch. This means the board has become less and less verbose, and likely prefers you to be as well.

3. Determine If A New Chief Judge Means Changes In Your Patent Appeal

Finally, there’s a new lawmaker in town. The United States Patent and Trademark Office is still seeking a new Chief Administrative Patent Judge to serve as a member of the Patent Trial and Appeal Board (PTAB) of the USPTO. Where will he or she be from? What will their legal style be? Perhaps it’s worth a wait-and-see.

And, if you couldn’t tell from this blog post already, arguments are best understood in to-the-point, succinct lists. Unconvinced? Wired Magazine has frequently heralded the success of a list-making site, Cracked.com, and the fact that its various mobile app counterparts have ammassed 7.3 million unique users each month. According to Wired, the list-making site’s success is based on its ability to “crowdsource and filter and other buzz-worthy things.” 

It’s important to find a hook for your audience (say, a judge or patent board) and filter subject matter down to the most critical (content managers for cracked.com commission six article items in order to edit them down to the five best).

The result is a list of popular and prolific points that sell. So, with this in mind, you should be able to create a case that is equally captivating as “The 7 Most Ridiculous Cases of Misplaced Priorities” and “9 Words You’ve Used Today With Bizarre Criminal Origins,” read on Cracked.com.

In the end, when you’re rewriting your patent, your legal brief or a simple inter-office memo, don’t forget to express your ideas in short, succinct, eye-grabbing lists. That way, dear attorneys, you have time to get back to what you really want to read, “7 Items You Won’t Believe Are Actually Legal.”


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Reach, Engagement & Shareability: Metrics That Matter For Law Firm Social Media & Attracting New Clients

The Internet age. Upside, you get to work from home when you don’t feel like going to the office. Downside, you have to work at home when there’s a blizzard.

Alleviate your workload through social media, if not through a snow day (due to Juno’s underwhelming presence).

Social media has empowered businesses and consumers alike. Individuals have never held so much influence in changing the world with just one click of a button. At the same time, businesses are empowered to advertise their products and services to a market much larger than before.

At first, law firms were a bit slow to take advantage of digital days. Not anymore. Now it’s necessary to task young associates with managing your Facebook page, Twitter account, and—hopefully—blog posts, or risk your bottom line by falling behind.

Here’s how your firm gets noticed:

1. Publish your posts on media aggregators.

Upside: Websites like Reddit, Shoutwire, and Digg allow individuals to submit links to websites, blog posts, or any Internet-based page. The community of readers then votes up (or down) the link based on a review of its content. Create flashy titles and you’ll likely see in a flash the rise of your readership.

Downside: Comments by readers can be harsh. The anonymity of the Internet allows people to wriste down criticisms (NSFW) that may end up permanently cached on the World Wide Web.

2. Add website sharing buttons.

Upside: Your firm’s website should have links to all of your social media accounts, as well as ways to share your posts. Programs like “Click to Tweet” make this easy.

Downside: Your firm may need a small amount of Internet savvy to create buttons on your website and restore broken links.

3. Create interesting content.

Upside: Remember to write thoughtful arguments accompanied with eye-catching photos. There’s so much competition already when it comes to online content, your firm’s additions must stand out.

Downside: Yes, this requires a little more time and thought to write captivating posts and tweets. Consumers would rather see the “Yeti Seen Prowling the Streets Near Boston” than your tips about hiring Of Counsel at your company.

4. Do your research.

Upside: If you know what time your readers are logging on then you’ll know the best time to publish your posts. Maybe you’re getting a lot of hits first thing in the morning. People are remiss to start work at 8am and decide to read legal news or browse the web. With this knowledge, you can now set your social media to publish at certain times to target your audience.

Downside: Due diligence on your casework is no longer enough. Time to do due diligence on your business development, too.

5. Crossover multiple social media platforms.

Upside: Happy you finally mastered the art of blogging for your firm? Time to summarize that blog post on your LinkedIn and Facebook page and compile a 140-character hook for your Twitter account. Don’t be afraid to repeat the same ideas on different mediums.

Downside: Now you’ll have to memorize more usernames and passwords. More social media means more potential backlash.

In the end, it’s possible to get your firm’s name and reputation out there. In fact, the Social Law Firm Index, developed by the Above The Law Blog has a formula that measures social-media metrics. It looks at:

Reach. Represents the total number of unique people who had an opportunity to see the firm’s content. Reach would include number of followers on Twitter and/or LinkedIn, company page likes on Facebook, and followers or subscribers on other social media channels (for example: YouTube channel subscribers or Slideshare followers).

Engagement. Measures the actual interaction with the firm’s content via social media. This would include comments or likes (for status updates) on Facebook, RTs or mentions on Twitter, and likes on LinkedIn.

Owned Media. An assessment of the firm’s own site (including microsites) based on, among other things, the proportion of non-promotional content, frequency of updates, and shareability of content.

So, what conclusions were drawn from this study?

First, size matters. If you’re a small law firm, it’s likely that your reach will never meet that of a Top-20 firm. See, for example, the Top 10 ranking in this Social Law Firm Index here.

But, there’s still hope for small firms. There was a much lower correlation between firm size and engagement. That means small firms can still have high interaction by potential clients in terms of likes (for status updates) on Facebook and LinkedIn, as well as retweets on Twitter.

It’s quality—not quantity—that matters.

The next finding is that from 2013 to 2014, the largest U.S. firms improved both the reach and audience engagement levels by more than 60 percent, on average. That means firms are getting more savvy about their social media and—more importantly—people are listening.

For law firms looking for reasons why they should spend time and money on social media, this finding is especially pertinent. Consumers of legal services are reaching out via social media. Facebook, LinkedIn, blog posts, and Twitter are helping reach new clients at an increasing rate.

Finally, the last important finding worth mentioning is that many firms that were lagging behind in 2013 moved to catch up with market leaders. And this was achieved at rates much more significant than the improvement among already active firms.

What does this mean for you? There’s still time to push social media at your law firm.

Your firm won’t regret that embarrassing Tweet sent out to its thousands of followers; it will only regret not tweeting at all.

How can you maximize the potential of social media while ensuring the appropriate use of intellectual property and customer information? What can counsel do to proactively protect brands from infringement by social networking website users?

As more and more businesses incorporate social media into the promotion of their products and services, they’re also finding that unauthorized use of their trademarks, service marks and trade names are emerging through these same channels.

In fact, a global infringement that once took weeks, months or years to occur, can now take shape as fast as someone can hit “enter” on their keyboard. And, once the infringement is out there in cyberspace, there’s no way of knowing if the offending material is ever truly deleted.

Take the Center for Competitive Management’s audio course, “Copyright and Trademark Enforcement in Social Media: Policing and Protecting Against Brand Infringement,” to learn more.

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Supreme Court Rules Against Patent Trolls (Again): What Does This Mean For Your Firm or Clients?

Patent Trolls beware. There’s a Supreme Court-backed knight crossing your bridge, wielding a powerful verdict.

On Thursday, in a unanimous decision in Alice Corp. vs. CLS Bank International, the Supreme Court ruled that ideas are not patentable just because they are performed on a computer. Although the ruling still leaves plenty of ambiguity in the patentability of software, it is one step closer in the recent anti-NPE movement.

Non-practicing entities, or NPEs, have been on the minds of high-tech business owners and the lawyers representing them for decades.

Today, however, the trial court invalidated Alice’s patents, stating they were just concepts, not patentable ideas.

“Viewed as a whole,” wrote Justice Thomas wrote (via New York Times), “petitioner’s method claims simply recite the concept of intermediated settlement as performed by a generic computer.”

“[The methods neither] improve the functioning of the computer [nor] effect an improvement in any other technology or technical field.”

In the recent past, the court was weary of hampering innovation by restricting patenting requirements. Long advocates for protecting intellectual property of both the individual and businesses, courts worry that reigning in patent trolls means restraining creativity and invention.

What do intellectual property experts think?

Dana Rao, Vice President, Intellectual Property and Litigation, Adobe, wrote to Forbes:

“The Supreme Court added another nail in the coffin of patent trolls with a decision that reinforces the common-sense belief that patents can’t be granted for abstract ideas that have been around forever. Importantly, they made a critical distinction between those abstract patents and valid software patents that improve a technological process,” said Rao.

“This ruling supports true innovators while helping rein in the abuse of the system by the patent trolls. We’re pleased to see the judiciary acting where Congress would not. But we still need Congress to act, as only they can meaningfully change the economic incentives that are driving the abuse of the patent litigation system.”

If that happens, patent litigators—like patent trolls—might also find themselves without a job.

According to Bruce Wexler, partner at Paul Hastings, who wrote to Daniel Fisher at Forbes, patent lawyers shouldn’t fret quite yet. In fact, maybe the Supreme Court’s ruling just made their job easier.

“Chief Judge Archer’s dissent in In re Alappat some 20 years ago is now the majority rule,” writes Wexler.

“The mere recitation of some structure ‎in a patent claim is not the dispositive test for patent eligibility. Patent law demands more. The invention must reside in the application of an idea. While this can raise grey areas, the argument cannot simply be about whether or not structure appears in a patent claim.”

If anything, the Supreme Court ruling is one more reason innovators should contact patent pundits about what is, and is not, patentable. Law firm managers should keep their clients apprised of changes in patent law. Between the America Invents Act and recent rulings against NPEs, intellectual property practice areas will have their hands full.

If you haven’t done it already, consider alerting implicated clients of recent court decisions affecting their operations. A monthly newsletter to clients not only helps assure them you’re ready to provide assistance but it also cross-sells your services.

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David Beats Goliath In Patent Troll Lawsuit

Is there any hope for small start-up companies involved in patent troll litigation? Underdog company Newegg seems to think so. With a recent win against mega-giant Alcatel-Lucent, Newegg gives hope to the little guy facing large legal power in patent disputes.

“It is truly, truly tragic how the mighty have fallen,” says Chief Legal Officer Lee Cheng about the Alcatel-Lucent corporate trolling activity to ars technica.

In 2011, Alcatel-Lucent looked like it was dominating the e-commerce market. Not in market share, but in market power—the kind of muscle that beats its way to the top. After suing eight major retailers, as well as Intuit, Alcatel-Lucent had settled each suit, one by one.

Even though Kmart, QVC, Lands’ End, Zappos, Sears, and Amazon all eventually folded, Newegg (and Overstock.com) held out.

“It’s an operating company that happens to hold a patent,” said Cheng to ars. “But it does nothing at all to bring the benefit of that patent to society.”

On principle, Newegg pursued the case, and won. First at trial in Texas, then last Friday in Federal Circuit court appeal via summary affirmance. It took the judges just three days to uphold the Texas trial ruling.

Apparently Alcatel-Lucent was not earning $12 million from Newegg for nothing.

“These are the Bell Labs patents,” Cheng explains. “This company was once the pride of American innovation, a company that has roots going back to Alexander Graham Bell. And it ended up selling off its patents for a few bucks. What Alcatel-Lucent did was really offensive.”

Offensive in the strategy sense, as well as the moral stance.

Cheng refuses to let Alcatel-Lucent off the hook. He continues (via ars):

“They systematically sent thousands of letters out saying, ‘Hey, we own 27,000 patents, and here are some patents we think you infringe.’ They had a whole licensing group whose job was to monetize these patents, by threatening litigation and in some cases litigating. It didn’t actually matter if you did your own analysis and got back to them and said, ‘Hey guys, we actually think we don’t infringe.’ The response was something to the effect of, well, we have 27,000 patents—and you probably infringe something, so give us a licensing fee.”

It’s not just a message to patent trolls that companies are prepared to fight for their intellectual property; it’s also a message to attorneys that firms are capable of combatting these suits successfully. With just three days for summary judgment, patent troll suits can even be defeated within a reasonable timeframe.

For companies looking to legitimately protect their patents, Newegg’s experience is also a good lesson in boilerplate legal jargon. Sometimes it’s necessary to pay your lawyers to investigate individual patent disputes and customize letters to infringers. From small to large, companies are no longer afraid of legal threats to sue. In fact, many are looking for you to do just that.

Law firms and their corporate clients should work together on an IP strategy, where an offensive policy doesn’t have to be an offensive one.

Sometimes IP litigation seems more like slinging gunfights in the Wild West, as opposed to educated businessmen deliberating on the bench. For now, Newegg’s president in patent protection should keep bandits at bay.


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Change In U.S. Patent Requirements: Bane or Benefit To Law Firm Business?

Although the law doesn’t change until 2013, firms should consider rewriting their business strategy now.

In March, the U.S. will reconcile its previous patent system with the first-to-file system practiced by the rest of the world. Entrepreneurs can say goodbye to the first-to-invent method of protecting their intellectual property, and hello to the Leahy-Smith America Invents Act.

As a result, this Spring, American businessmen will be racing to the U.S. Patent and Trademark Office instead of the nearest law office to file their claims.

The race is seemingly to the benefit of corporations and the detriment of individuals. But, what does it mean for lawyers.

“In a race of established, well-funded businesses with defined intellectual property protection strategies (and patent attorneys in-house or working closely with the business) versus entrepreneurs that may not have any experience with the patent system and the funds to pursue robust patent strategies, the advantage clearly goes to the businesses,” claims Patrick Richards of Richards Patent Law PC in a recent article for Forbes.

Larger law firms or in-house counsel should be kept busy with new filings under this law for their ambitious corporate clients. This doesn’t preclude, however, attracting new business by offering affordable rates to navigate the new patent law for small businesses or individuals.

But, with this new streamlined and fast-tracked system, complicated and costly patent litigation is likely to decline.

In fact, some veteran entrepreneurs believe that the new law liberates individuals from seeking professional services. Because, for example, individuals will find the system easier to understand, they might also be motivated to file a patent on their own.

“In addition to aligning with international patent offices that are all on a first-to-file system, it is materially easier to operate. First-to-invent is just too hard to measure.  It is practically impossible to know if a prior invention is lurking that hasn’t yet been filed; as a result, a first-to-invent system inhibits investment in new technology areas,” says Chris Gladwin, founder and CEO of Cleversafe, also author to over 300 issued and pending patents relating to dispersed storage technology, according to Forbes.

With less cumbersome requirements for prior art searches, patent seekers may stop searching for intellectual property legal services, as well.

Despite these potentially ominous consequences within patent law, certain firms remain undeterred. Cisco Systems Inc., for one, is taking their strategy on the offensive.

The networking-equipment maker has drummed up new litigation by writing strongly worded legal claims against two patent troll companies.

Cisco’s current suit is against Chicago-based Innovatio IP Ventures LLC, which—unlike typical patent trolls—is targeting the customers of alleged patent infringers.

Cisco, based in San Jose, Calif., and co-plaintiffs Netgear Inc. and Motorola Solutions Inc., claim that Innovatio has sent 8,000 “threatening” letters to coffee chains, hotels, and other retailers using Wi-Fi equipment that includes the three companies’ technologies. The plaintiffs argue that the letters are “misleading, fraudulent and unlawful,” reports The Wall Street Journal.

Cisco’s lawsuit claims Innovatio’s actions amount to an extortion scheme and are therefore in violation of federal antiracketeering laws, reports The Wall Street Journal.

It turns out, when the going gets tough, the tough get going.

So, where does your law firm stand when it comes to the changes in patent filing requirements? And, how will your firm position its business strategy to attract (not dispel) new clientele?


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Remembering Columbus Day: Why Foreign Exchange And Outsourcing Legal Services Comes At A Cost

Can you imagine being on Christopher Columbus’s boat when he discovered the New World? To eat corn, potatoes, beans, hot peppers, tomatoes, avocados, cocoa, and turkeys for the first time?

Columbus Day is a federal holiday celebrating the discovery of the Americas by Christopher Columbus on October 12, 1492. But, it’s also a critical moment in history for free and open international trade.

Today, it’s often forgotten how the simple exchange of goods and services is responsible for supporting the U.S. economy.

In the case of law, outsourcing legal services to India has been a popular win-win solution allowing American legal services providers to lower costs and their Indian counterparts to reap a portion of the industry’s revenue. By 2014, India’s legal outsourcing firms are expected to surpass $1 billion, which is an increase of 38 percent from 2008, Valuenotes, consulting firm in Pune, India, estimates (via NYT).

Needless to say, both sides profit monetarily from this arrangement.

Nevertheless, just like small pox in the New World, sometimes the benefits of trade have drawbacks, as well.

Take, for example, a decision by the 2nd U.S. Circuit Court of Appeals against the company Glenwood, who operates a Connecticut-based medical billing business. Glenwood outsourced its operations to India, but instead of lowering costs and increasing revenue, the company alleges three former Indian employees used proprietary trade information to start competing companies in India and California (via Law.com).

To make matters worse, according to the suit, these new companies now serve some of Glenwood’s former clients (via Law.com).

However, the Court of Appeals ruled that the three alleged offenders in India could not be brought to court in Connecticut because the companies do not provide services for clients in the state. In sum, the court made it clear that U.S. law does not apply to business disputes overseas.

“In the face of an increasingly interconnected global economy and unbelievable advances in technology, the U.S. courts are going to resist any trend that leads to universal jurisdiction over commercial disputes,” said Attorney W. Glen Pierson, a partner at Wallingford-based Loughlin Fitzgerald, about the suit, according to Law.com.

“It’s unfair for any party that outsources to get the benefits of outsourcing while avoiding the risk of having to litigate whatever claims they may have overseas.”

Indian law already forbids foreign lawyers from practicing on Indian soil. So, if there’s further risk in terms of intellectual-property theft or increased competition by bringing your business abroad, suddenly the advantages to outsourcing legal services comes into question.

In a recession, firms nationwide are looking to cut costs, but is outsourcing to India worth the risk of client poaching?

In every decision about money, there are always hidden social and economic consequences to consider. Does the cost of hiring a few additional paralegals or an attorney outweigh the cost of losing a client, for example?

When managing a law firm, success is not always measured by the bottom line. Keeping services local or in-house can sometimes be an appropriate method for protecting your firm’s confidential information and legal strategies.


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Do Patent Trolls Discourage Innovation?

Lawyers tend to roll their eyes whenever a patent dispute is mentioned.

The process is lengthy, backlogged, tendious, and it seems no company can escape the claws of litigation. Motorola, Nokia, HTC, Apple, Google, Research In Motion (RIM), and Samsung are all currently involved in one or more patent lawsuits relating to their smartphones, according to John Tothill at Computing.co.uk.

Congress, itself, is entangled in the mess that is patent law, approving a complete overhaul of the system. Patents will soon be awarded based on a “first to file” rather than “first to invent” basis.

Proponents of this change, under the America Invents Act, argue that the bill will reconcile the U.S. patent system with patent legislation of other nations in Europe, as well as Japan. This would streamline the patent process for companies aiming to file patents in multiple countries.

But, are these patent laws and regulations preserving the true spirit of patent application in the first place? Maybe not if Google has its way.

Patents are intended to encourage innovation and invention. This way, a profit can be made on developing a good idea before giving free access to the rest of the business world.

So what happens when media mogul, Google, agrees to purchase Motorola Mobility for the use and legal access to its patents?

According to some, Google purchased Motorola Mobility soley to acquire its patents. It begs the question, should large monopolist companies be able to purchase good ideas just because they can afford to?

“It may be said that so-called “patent trolls”, or non-practising entities, which hold patents but do not themselves innovate or produce products, hinder the realisation of innovative products. However, again it may be debated whether the existence of such patent trolls discourages innovation,” writes John Tothill at Computing.co.uk.

Google’s acquisition of Motorola Mobility sends a message.

Technology startups and other companies should innovate and acquire their own patents. But knowing the caveat that, these days, large companies are trolling for savvy investments. And whether through litigation or purchase, one thing is clear: patents seem to be swiftly changing hands.

It’s a good time to be a small company with big (legally-backed) ideas.


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