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The Perspiration of Patenthood

From IEEE.USA Today's Engineer Online
March 7, 2007

By Robin Peress

Marconi and Tesla's bitter race to own the patent for radio seems almost quaint compared with the blatant exploitation on today's IP landscape.

Statistics show that infringement cases are at an all-time high and climbing. They range from matters settled out of court (over 70 percent of all claims) to the high-stakes hairsplitting that reaches the U.S. Supreme Court.

So-called patent trolls (trollers, really) are using predatory tactics and threats of injunction to extract licensing fees from unwitting companies.

Meanwhile, changeable rules at the U.S. Patent and Trademark Office (PTO) and redefining of such terms as "nonobvious"further bedevil the quest for patenthood.

In spite of a risky environment, would-be inventors still deluge the PTO with a growing number of applications "more than 400,000 received in 2006. And, despite evidence that most patents yield few if any financial rewards, applicants continue to harbor naïve hopes of fame and wealth "like an Achilles"heel.

More than one IEEE member had a reality check to share.

"That's not the way the world works,"said Dr. Gabriel Robins, a Professor in the Department of Computer Science at the University of Virginia. Robins's long experience on patent infringement cases proved useful when it came to floating his own two patents. "New inventors think the world will beat a path to their doorstep. Even if you're issued a patent, you have to argue it, market it, raise capital, have a business plan, manufacture it. The idea itself is maybe one percent of it,"he said, paraphrasing Thomas Alva Edison's famous quote, "Genius is 1percent inspiration and 99 percent perspiration."Inventors would do well to take a lesson from history, he said. "Edison went through hell. Even with the light bulb he tried thousands of combinations. It took years for him to see any money. The best way to disabuse yourself of any illusions is to read some case studies of what others had to go through."Robins consults as an expert witness in major software and IP litigations, and serves as Associate Editor of IEEE Transactions on Very Large Scale Integration (VLSI) Systems.

Lawrence Kamm, IEEE Life Senior Member, is a consulting electro-mechanical engineer in San Diego, owner of 38 patents, an expert witness, and author of a book called "Adventures of an Engineering Entrepreneur."He says: "Independent inventors who try to market their own patents usually do so without success. The most probable financial benefit from owning a patent is in starting a business based on the invention. My most serious recommendation is to take an MBA and then start a business."Kamm's Web site is a trove of straight talk, friendly reassurance, wry observations and indispensable resources for novice patent seekers: see www.ljkamm.com/inventor.htm. In one section encouragingly titled "Failure,"he writes about unfulfilled promises made by invention marketing companies. "There certainly have been a few spectacular successes,"he says, "but I usually suggest going to a racetrack and betting on horses; the odds are better and you get fresh air."/p>

Sound deflating? Think of it this way: Stocking up on experts"free advice before you forge ahead might help save you time and mileage. After all, why reinvent the journey when there's prior art?

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Waiting periods of three or more years, and the granting of iffy patents by underfunded, overwhelmed examiners lacking relevant expertise: these are woes most often attributed to the U.S. Patent and Trademark Office. To begin offsetting this backlog and ensure better-quality patents, the PTO has instituted time-saving policies and a hiring push. Not only will there be more examiners "1,200 each year for the next five years "but they will include 700 more electrical engineers in three key technology centers "computer architecture, software and information security; communications; and semiconductors, electrical and optical systems. A lower allowance rate in 2006 over previous years implied fewer but better patents issued.

The Accelerated Review Option, announced last June, allows applicants to obtain a final decision on their applications in just 12 months in exchange for performing a search for prior art themselves, which is typically the domain of examiners. The application must be filed electronically using the USPTO's electronic filing system (EFS) or EFS-Web, and must contain three or fewer independent claims and 20 or fewer total claims. For more information, see www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm.

Another provision, announced in January 2006, provoked IEEE-USA's ire and touched off a barrage of complaints to the PTO. The Changes to Practice for the Examination of Claims in Patent Applications set out to limit the number of representative claims to 10, and to require an examination support document "to share the burden of examining the application"if the number of representative claims exceeds 10. The Intellectual Property Committee responded in a position statement: "Because software-based inventions require claiming in a variety of ways to get full protection, such patent applications need to have four or five times the number of claims as other technologies …IEEE-USA calls on Congress to…ensure that patent applicants who must use multiple claim forms to protect their inventions are not penalized."

"We aren't looking to penalize anyone,"said Commissioner for Patents John Doll. "Before, the examiner might have had to look at 20 claims before making a determination. If these 10 representative claims are enough to make a patent allowable, the examiner doesn't have to read the rest. The applicant can still request to have more claims evaluated. The point was to improve efficiency and quality by helping the examiner do a better job."Commissioner Doll acknowledged the resistance. "We received over 600 comments, the vast majority of which were negative. We're working to find a compromise."/p>

The agency also has a prodigious Web site "www.uspto.gov. A minimum of clicks connects users via compact drop-down menus to hundreds of usefully organized sections and documents. It is also vital for performing patent searches,

"Our Web site is very user-friendly,"said Doll. "It gives inventors the opportunity to search through our database, see what has been issued in the past, learn what a typical patent layout looks like, and come up with ideas on how to fine-tune your own words and illustrations."(Google.com is also a prime site for performing due diligence with your patent search, says Robins; with the right key words and phrases, it will lead to you to all 7 million patents issued by the U.S.)

Several must-read sections for first-time applicants include "Proposed Rule Changes to Focus the Patent Process in the 21st Century"and the Manual of Patent Examination Procedure, www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf. The site index is your best friend for pinpointing individual topics. Commissioner Doll also directs applicants to the Inventors Assistance Center at www.uspto.gov/web/offices/pac/dapp/pacmain.html, a service that puts you in touch with a "real human being."Other good starting points: an Inventors Resources page with faq's and downloadable brochures, and a Help page that offers support by e-mail for certain questions. For the lighter side of patenting, if there is one, check out "Mumbo Jumbo Gumbo,"a very humorous kids"feature accessible from the Guides page.

Stay tuned for the PTO's announcement of the Peer to Patent Project/Community Patent Review, a pilot program in collaboration with the New York Law School's Institute for Information Law & Policy, headed by Professor of Law Beth Noveck. The lead sponsors "General Electric, Hewlett-Packard, IBM, Microsoft and Red Hat "will allow some of their patent applications to be reviewed by experts in the scientific community who, perhaps moreso than examiners, may be able to identify relevant prior art and thereby improve issued patents.

"Some of the leading companies recognize the importance of providing information to the Patent Office to yield better quality patents,"said Dr. Noveck. "But smaller entities, especially, stand to benefit from the help provided by the public in searching for prior art. The better the research, the stronger the resulting patent will be, leading potentially to higher licensing revenues and lower litigation costs."Project Manager Rahan Uddin said custom-designed Web-based software will allow the public to research, find and annotate the prior art before submitting it to the PTO. "It builds off of existing technology that fosters online collaboration and lets us create communities engaged in the review of patent applications."/p>

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In patenting, one person's divine inspiration is another's bargaining chip. A prominent trend today, says Robins, is strategic patenting, in which companies use patents as a business tool. "In an infringement case, the settlement isn't always about money,"he says; rather, the two sides may opt for a reciprocal cross-licensing agreement. Pre-emptive patenting is also coming into the mainstream, he said. This is the filing of patents "not because you feel you'll use it directly or exchange it with anyone else, but just to block others, to deny everyone else use of the idea."According to Jules J. Jelinek, a consulting engineer in San Francisco with expertise in intellectual property and patent analysis, another kind of strategic patenting happens "where a company buys or licenses exclusive rights to an invention to protect their own product line, but the company never makes a single one and the patent holder ends up with no money for his troubles."Robins also notes that using intellectual property this way is considered as much a tool as advertising and branding. Then there's what he calls legal blackmail "an infringement lawsuit in which the plaintiff knows they're not going to win but they sue "to besmirch their opponent's name, to make them concerned, to divert their attention from running their business."/p>

Some of the most incisive reporting on trends and cutting-edge issues in patenting comes from a familiar source: IEEE Spectrum. For an especially polished overview of recent debates and suggested remedies, read Patent Prescription (December 2004). Or just type patent in the search field and sit back for one good read after another.

IEEE-USA keeps members on top of the issues and represents their concerns with position statements on proposed IP legislation, rule changes at the PTO and occasional controversies. To access these statements, go to www.ieeeusa.org/policy/positions/#ip, where you'll see such titles as Reverse Engineering and Invention Rights for Employees (www.ieeeusa.org/policy/issues/inventorrights/).

The Intellectual Property Committee also serves as the voice of IEEE-USA members by providing testimony to, and communicating with, the U.S. Congress, and monitoring legislation. Its Web page " www.ieeeusa.org/volunteers/committees/ipc/ "has an abundant list of links to government sites (U.S. Copyright Office; the House Judiciary Subcommittee on Courts, the Internet and Intellectual Property; and the Federal Register, among many others.

Just a few more Web sites might be pivotal to your search for patenting wisdom. They are:


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