Post a CES picture and you may win a $50 check and complimentary, autographed copies of my IP trilogy:

The Pocket Idiot’s Guides for: Patents, Trademarks and Copyrights.

How the contest works:

(1) Take a picture and put it up on twitter using the hashtag #cespic

ie. #cespic <link to you photo or twitpic>

(2) I will post all* of the pictures on my blog at www.mindminer.wordpress.com

(3) All pictures must be received by January 12^th at 12:00 midnight.

(4) I will set up a poll on my blog to allow the community to vote on the best picture

(5) Voting will end by January 15^th and, the votes will be tallied and the winner announced.

*The pictures can be of cool products, displays, interesting characters, funny happenings, etc., however, any pictures of questionable character or moral decay will be filtered from the contest.

Why this contest?

For all of us that are not able to attend this year, I have created this contest that will help spread some of the CES excitement around. To me, this is a highlight of the year and any way to virtually be there is great. In addition, even if one attends, he or she would not be privy to all the potential pictures that can be posted.

We look forward to seeing your pictures.

Gregory Scott Smith

Send questions to gsmith@lavagrouplaw.com or twitter DM to @MindMiner

Total patents issued in the United States (utility, design, plant, reissues, reexams)	185246
Total Utility Patents issued in US	157774
Assignees of Issued patents
Microsoft	2310
Apple	254
Google	60
AOL	82
Cisco	727
IBM	4166
Matsushita	1854
Intel	1778
Texas Instruments	768
Ebay	19
Disney	23
Toshiba	1854
Dell	178
Sony	1987
Country of Assignee
US	82375
Non US	102871
China	1170
HongKong	521
India	267
Israel	783
Iran	3
Iraq	0
Japan	37065
Canada	2657
UK/GB	2248
German	9242
France	3217
Australia	1297
Other interesting facts
Mention Social Networking	29
Mention Solar Energy	334
Mention Nuclear Energy	32
Mention Homeland Security	154
Mention Terrorist	318
Mention Mickey Mouse	13

]]> http://mindminer.wordpress.com/2008/12/31/patent-statistics-for-2008-a-variety/feed/ 0 mindminer http://mindminer.wordpress.com/2008/12/30/34/ http://mindminer.wordpress.com/2008/12/30/34/#comments Tue, 30 Dec 2008 15:40:35 +0000 mindminer http://mindminer.wordpress.com/2008/12/30/34/ ]]> Okay, so everyone takes this time of year to reflect, set goals and make changes.  And maybe I am just jumping on the band wagon but, I really feel that this is a message that needs to get out.  This is the top 5 things that I share with all my clients and, this is what I do for a living – I am very passionate about it.  This may seem simple but I just don’t think that most technology companies really sit down and consider these issues.  DON’T let your most valuable assets and opportunities slip away. Building IP is an investment in your future, it is your technology realty.

So, please take a moment and ponder these 5 strategies and if it makes sense, apply them in 2009.  You may not see any immediate results but just like exercise and eating right, this is the correct road to travel and it will lead to a great destination.

(1) Don’t set a goal for a number of patents filed, set a goal for the number of inventions to be generated and then, pick and choose which ones to file for patent protection.

This can be quite a motivate-sucking maneuver for your engineers and innovators.  These folks are your greatest assets and they are smart.  They see through the horse-apples and don’t want to be bothered by trying to get patents on bogus junk just to meet some management WAG for how many patents should be filed in a year.  And furthermore, it is a waste of your time and resources.  But, you can set up a program in which your innovators are rewarded by submitting their innovative ideas to help encourage them to come forward.

Submitting an idea is much less taxing than supporting the filing of a patent application.   Setting a goal for the number of inventions to be identified is quite reasonable – a simple three to five sentence submission may be all that is required of your innovators. Who wouldn’t do that for a chance to get some walking-around money in their pocket?

Now, once the innovative ideas are received, you can then analyze, prioritize and choose what inventions should be protected, what should be published as a defensive move, and what should be held as a trade secret.

(2) Don’t focus on patenting products, patent innovation.  Much innovation is unused in pushing a product out the door-innovation your competitors may use.

I spent 13 years in technology companies and I know that a lot of innovation is edited out during the development process.  Once marketing and sales go through the functional specification, once management looks at the budget, once the customers provide feedback, great innovations that were part of the original plan get cut out.  But, just because today is not the season to include such technology in your products, don’t forget that tomorrow may be.

So, if you don’t protect the innovation today, your competitors may get the jump on you.  Wrapping up the protection of innovation before it is ripe for deployment is the optimal situation.  The time lost by crunching through the patent process for ripe technology is not a factor for growing technology.   How ideal is it to have a patent issue just about the time that your innovation becomes the technology norm!

(3) Re-evaluate your incentive program.  It is a bad economy – make it work for you by creatively encouraging your employees/innovators to build you assets.

It is a bad economy – make it work for you by creatively encouraging your employees/innovators to build you assets There is nothing more to be said here other than to direct you to my previous blog posting – “Bad Economy Benefits your IP Portfolio” at http://mindminer.wordpress.com/2008/12/16/bad-economy-benefits-your-ip-portfolio/

(4) Spend your budgeted dollars wisely – evaluate your foreign filing practices by applying the 10-10 rule. (see blog http://mindminer.wordpress.com/)

What is the 10-10 rule? My rule of thumb is that if 10% of your revenue is generated in a particular country, it may make sense to file but, only if your total revenue in that country would be at least 10 times the cost of the patent. Thus, if the quote is $10K for a foreign patent, your revenue from that country should at least be $100K to simply cross the threshold point of considering to file in that country. I have a more complete analysis in the blog entitled “When does it make sense to file for foreign patent protection?”

(5) Look at buying IP assets.  In a down market, companies may be very willing to sell IP assets that could be valuable to your company.

This is such an overlooked tactic that can be so greatly beneficial in a down economy. IP assets are realty. Today is a buyers market. If you do proper patent searching anyway, you will identify some really great IP assets that are either pending or already patented. Certainly, your competitor is not the best store to shop in but, there are so many individual inventors that seek patent protection but don’t know what to do from there. You can pick up some very valuable assets for cheap. This is especially true if the assets are pending applications.

So there you have it, the best advice that I give to my clients and you just got it for free. I challenge you to take 15 minutes this week and really ponder these points and how you can apply them to your business. Remember, every step you take is on a path that leads somewhere. To borrow some of Andy Stanley’s intellectual property from one of his sermons, consider these five points in view of these statements:

There is never an immediate, realizable result by NOT doing something that you should do (that is why it is so easy to miss a workout)

There is never an immediate, realizable result by taking a necessary step you need to take to reach your goal (that is why it is easy to get discouraged from working out)

You can’t cram for life, you can’t make up the lost ground over night (you can’t work out for 24 hours straight to make up for the lost time)

Gregory Scott Smith,  www.lavagrouplaw.com – gsmith@lavagrouplaw.com

Am I a troll? No. I am an engineer, trapped inside the body of an attorney, and smart enough to realize that billing by the hour means that I don’t make money while I sleep – although some may argue that point.

What do I do? I identify slick inventions, and I write incredibly solid patents and prosecute the heck out of them until they are allowed. I greatly abhor having to write great patents on crappy inventions but alas, sometimes I am forced to do so. But when I see a fantastic idea (such as those developed by ZapMedia) it is a rush to jump on board. And, well, sometimes along the way, I find that I am willing to take a risk on an invention and do some free legal work. Of course this always includes taking an equity position. At that point, part of the patent is mine. And just like you would not let someone tailgate in your front yard, I certainly am going to assert my patent rights.

And so, yes, I go after companies to assert my government granted monopolistic patent rights and, sometimes I do that on behalf of a client’s patent rights for a contingency fee. At other times, we look for parties that would benefit by taking a license or purchasing an intellectual property asset.

So, call me a troll if you will but, the bottom line is – its my bridge so get off of it  

Gregory Scott Smith

www.lavagroup.net

gsmith@lavagrouplaw.com

The 411 on Foreign Patents

There is no world-wide patent. Many people ask about a world-wide patent but the bottom line – there is no such animal. What confuses people is the fact that you can file a single application under the Patent Cooperation Treaty (PCT) of which over 100 countries are members. You can see which countries are members by visiting the URL listed at the end of this article. However, this is not a patent! Filing a PCT application only gives you the right to file a patent in one or more of the member countries at the appropriate time (30 months from your earliest priority date).

Losing your foreign filing rights – public disclosure. To file a foreign patent application, you must file either a US or foreign patent application BEFORE you publicly disclose your invention. In the US, if you publicly disclose an invention you have one year to file your US patent application. This is not so for most of the rest of the world which require absolute novelty – meaning you must file before you publicly disclose or you lose your filing rights.

Losing your foreign filing rights – failure to timely file. If you file a US application before you publicly disclose your invention, then under the Berne Convention, you have one year in which to either file a PCT application or to file directly in a country in which you desire protection. Failure to do so is almost always an immediate loss of patent rights.

Losing your foreign filing rights – failure to go national. Going national is what happens 30 months from your earliest priority date when you have filed a PCT application. At this date, you need to file in the individual countries of desire or you may lose your patent rights. However, there is some grace in many countries if you miss this date – although it will cost you extra money. For instance, in the US, you can file a petition to revive based on unavoidable or unintentional abandonment. In China and Canada, you can pay a fee to extend the filing date. In the EPO you actually have 31 months from the earliest priority date. However, in some countries – such as Japan – there is no grace – you either file or lose your patent rights.

When does it make sense to file?

I generally ask clients the following questions to help make this determination:

(1) what percentage of your expected revenue is generated in each particular foreign country and what is your total expected revenue?

My rule of thumb is that if 10% of your revenue is generated in a particular country, it may make sense to file but, only if your total revenue in that country would be at least 10 times the cost of the patent. Thus, if the quote is $10K for a foreign patent, your revenue from that country should at least be $100K to simply cross the threshold point of considering to file in that country.

(2) do you have a presence in that country – such as offices, employees etc.?

If you are simply shipping product to a country from which orders come, it may be much more difficult to police the market and to enforce your patent rights. If you have bodies that are physically present in the country, and you have met the minimal requirements of question 1, you may still want to consider foreign filing.

(3) do you anticipate setting up an office in a particular country or greatly increasing your revenue from that country?

I simply ask this question to make sure that the client did not answer questions 1 and 2 by only looking at the current situation. It can take a few years for a patent to issue and the patent will be valid for a period of time and so, you should look into the future – at least 10 years – for making this determination.

(4) do you think you will actually be willing to police the market in the country and file a law suit?

This is the big question. Patent infringement law suits in the US are expensive and time consuming. Typically you are looking at well over $1M and usually quite a bit more. They require many resources, time for some of your employees, and the outcome is never certain. Now, if you take this and plop it down in a country in which there are language barriers and the fact that you are simply not on your own turf – filing a patent law suit in a foreign country can be quite daunting. Now, I am not saying that it is not wise. I am just saying that you need to make a good financial decision based on a realistic cost/benefit analysis.

(5) are your concerned with people that would sell an infringing product in that particular country or you just concerned about them making the infringing product and importing it to the US?

You need to remember that a US patent grants you exclusive rights to make, use, sell, offer to sell, import or offer to import a product that incorporates the invention IN THE US. This means that if someone makes a product in China that infringes your patent, you can do nothing. But if they try to import it into the US, you have grounds to file suit.

(6) can you police the market – is infringement discoverable?

This is an interesting question and not many consider it. Gaining a patent on an invention is one thing. However, to enforce the patent is quite another. I describe a patent as being similar to locks on your doors and windows or a fence in your yard. Good citizens will honor it. However, bad people will not. For this latter class of people, you can’t just call the police, you have to file a suit to enforce your patent. However, the main question is can you identify if someone is actually infringing your patent? In some cases it may be easy. However, if the technology is such that it is hidden, deeply embedded in a product, or is actually performed behind closed doors and never in the open (such as a process for making or doing something), even if you have a patent you may not be able to identify infringers. This by the way, is also a question I ask even with regards to filing in the US. If you can’t identify an infringer, is the patent necessary (albeit in many situations it is as a patent by itself can add value to your company as an asset?.

Conclusion

The cost for filing a foreign patent application ranges from $2000 to $10,000+. Then there are usually annual cost that are also associated with the application as well as attorney fees to get the application to issue as a patent. This is a business decision that must be looked at from several angles. Foreign protection can be an absolute necessity in some circumstances but in others, it just does not make financial sense.

Link to identify what countries are members of the PCT

http://www.uspto.gov/web/offices/pac/dapp/pctstate.html.

Gregory Scott Smith

Gregory is an intellectual property attorney and patent broker. He co-authored the Pocket Idiot Guides for Patents, Trademarks and Copyrights. Gregory has a masters in engineering with 13 years of industry experience, as well as a Juris Doctorate and 14 years of being a practicing attorney. You can learn more about him and his firm at www.lavagrouplaw.com or shoot him an email at gsmith@lavagrouplaw.com.

You have no requirement to search

Please understand, there is no legal requirement to conduct a patentability search. The only legal requirement imposed upon applicants and attorneys is that if you KNOW of some prior art that would be material to the patentability, you must disclose it. You have no affirmative duty to go out looking for it.

It is a good business practice to search

Preparing, filing and prosecuting a patent application to issue, although cost beneficial, is not an insignificant cost. As such, it makes very good business sense to at least try to get the lay of the land with regards to prior art.

You test drive cars, try on shoes, date a potential spouse, and interview a potential employee.  It is a great move to do all these things as well as to conduct a patentability search. In addition, the more related art you find and disclose to the United States Patent Office, the stronger the examination of your patent application will be. As a result, you will end up with a better, more valuable and more enforceable asset.

What is a patentability search?

A patentability search is an art. It is designed to identify any documents, patents, patent applications, publications, products, etc., that may beat your date of invention or, beat your filing date by more than a year (prior art). If such a monster exists, and it fully discloses all of the patentable aspects of your invention, you can’t get a patent (well, you can but it will be worthless and if you are deceptive in getting the patent and hiding the discovered art – you may end up in big trouble).

A patentability search is simply a process to search for and identify any prior art. It is also referred to as a prior art search.

It is an art because it is quite impossible to conduct a full search of all possible prior art. There could be publications in another language in another country that you may miss. Further, there may be pending patent applications that are not yet published to which you simply cannot gain access. And so, the art aspect arises by trying to conduct the widest and most accurate search without expending unreasonable resources.

What is the best way to conduct a patentability search?

This is where I may get in trouble. In general, there are two ways to conduct a patentability search: (a) do it yourself or (b) hire someone else to do it for you. Hiring the service out can be done in a variety of ways including hiring a professional search firm, requesting your patent attorney to conduct the search, or hiring a consultant.

Professional search firms. Every opportunity I get to question these professional search firms, I ask them the following question: what do you do and how much does it cost. The answers usually come out like this:

• we go to the patent office and talk with an examiner to help identify the class(es) that the invention would fall into
• we then search the patents/applications in the appropriate class(es) to find any that are material
• we then conduct a key-word search for other patents
• some even say they do an internet search for other documents
• package the information up with a summary letter and send out

This is all done for a cost of $500-1000. I always say to my self – right. The reason is that I simply don’t think that a company can do all the work that is necessary for a patentability search – and especially all the work that they describe they do – for that cost and still be a viable, profitable company. As such, I think that what they actually do is the following:

Maybe talk to an examiner

scan the titles of patents that are in the related class

maybe scan the title of patents that pop up in a key word search

pull a few related patents and send it out in their report

Patent attorney searches. Well, first of all, I would be more than happy to provide what I described above as what I believe search firms actually do, for the $1000 price. But, as always, I would advise you to not use my services for this. It is a waste of your money and you can certainly spend it much more wisely.

Consultants. This search option is the only one that I would really recommend if you are very serious about conducting a patentability search and you don’t want to do it on your own. The approach is more expensive but, you can get a decent search out of it. One of my favorite guys to use is Greg Aharonian because, not only is he a character but he conducts a very thorough, heartfelt search. You can check out his website at http://www.bustpatents.com.

Doing it on your own. I generally push this final option quite hard with clients – both corporate and individual. For corporations, the reason I push it is that you have a captive group of consultants right there in house. Especially if you have an incentive program, you can make the patentability search a requirement for receiving the incentive reward. Further, my opinion has always been that if your engineers or R&D group is on the cutting edge, they are out there and aware of what your competitors are doing. For individuals, I simply explain that they are financially more motivated to conduct a thorough search than a search firm would be.

In both cases, I explain that the tools available are quite sufficient to conduct the task on your own. The United States Patent Office has a great search engine for searching issued patents and published pending applications available at www.uspto.gov. In addition, Google has an awesome search engine available at http://www.google.com/patents?hl=en. Do key word searches for the patents. Look so see how the relevant patents are classified and then do class searches with broader search terms or no search terms if the class is not too crowded. You can also find international applications at www.wipo.int. Finally, keep records for everything that you do find and make sure you provide it to your attorney for filing with the patent application.

If this is the last paragraph you read, then at least read this twice. It is a simple principle but in an econopanic, only the wise IP strategist capitalizes on this principle. Here is the principle: Patents and other IP increase the net worth of your company – no if, ands or buts. The cheaper you can obtain IP, the greater the net worth increase. And, since technology lawyers are not immune to being impacted by a bad economy – try something new for a change – take advantage of the hungry lawyers.

Less work for the lawyers means, greater willingness to reduce fees, work at lower fixed-price arrangements, or simply give more bang for the buck. No brainer income generation from mediocre patent is $30K. Well written patents for actual novel inventions easily bring in quite a bit more. There is a reason why patent attorneys have some of the highest malpractice insurance. Patents are worth a lot of money and if a patent attorney screws up, the damages can be quite high.

Scrutinize your R&D

You pay tens or hundreds of thousands of dollars to develop great technology, why not spend a few more thousand to make sure it is protected – especially when dollars are cheap?

Your company pays significantly for its R&D efforts. Not all of what your think-tank comes up with actually gets implemented into your product lines. Once management, marketing, quality and control, etc. get hold of the functional spec, stuff just gets lopped off. What is the result? You paid top dollar for some smart folks to invent some novel solutions and, the inventions are tossed in the can because for today, they may be too expensive, too big, too slow, too complicated, too whatever. But, you should remember that tomorrow Intel will come out with another chip because, that is what they do. Hard drives get bigger, RAM gets cheaper, plastics get lighter, and before long, those tossed away inventions are doable. And in fact, your competitor just came out with a new product that includes them. Ouch, would have been great to have spent a few thousand dollars to file a patent on that awesome idea that you already spent tens of thousands on developing. If you had, it may be able to turn into hundreds of thousands or even millions.

Incentivize your engineers

Hard times can be exploited to geneate great motivation in your engineers if the payoff potential is there.

During a bad economy, everyone gets a little nervous. That savings account does not look as cushy as it once did and your engineers are probably hoping to find a little bit more income. This is a great time to offer incentive awards to motivate your engineers to come up with some great patentable or other IP related ideas. Make sure you implement a program that protects you from bogus ideas extracting valuable funds but, implement a program. Desperate times cause for desperate measures and, an engineer needing a bit more cash will be much more likely to stay up at night writing up an invention disclosure if there is an expectation of a bit of a windfall. I have developed tons of IP incentive programs for companies and you can easily devise them in such a way to generate a great flow of ideas without having to blindly payout big bucks. Believe me, your engineers are buying lottery tickets when the numbers get high – they will do the same with submitting patent disclosures.

Expand your view – don’t just focus on your product line

A lot of IP is tossed away because a tech company does not see it benefiting their product line. These are great IP assets to sell or license.

As I said in the previous section, you have paid quite a bit to develop technology, why not spend a few thousand more to try and recoup some of those costs. The problem with paying top dollar to have very smart people working for you is that they keep coming up with great ideas. Many times, these ideas are not related to you main product line and so, they are just tossed out. However, these are the ideas that can generally generate significant value and revenue. Take for example the young line man working for Georgia power that came up with an idea to keep squirrels off of the power lines. Certainly not a core product for a power generation and delivery company but, someone was smart and said “lets protect it”. They did, a patent was obtained and that idea generated significant revenue for the company.

If you need some consulting tips more specific to your company, give us a call at (404) 643-3430.

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I will tell you what the real problem is. Too many patent attorneys trying to prosecute patents that are not inventive. Have you read the claims in Bilski? I have to admit I have prepared and filed claims just as bad. And generally the results are about the same – no patent. Look, just shoot straight with you clients. Tell them that this is a bogus idea at best, and that the chances are they are not going to get a patent. And if they do, it is not going to be very beneficial to them. And then, if they want to keep pushing it forward, who are you to refuse their money. And if they want to push it all the way to the Court of Appeals – whatever. My advice would be you are spending your money like a fool, but since a fool and his money are soon parted, I may as well be the recipient of it.