Patent Law Practice Center

Institute Live Blog: Global Strategies for Managing Patent Portfolios

During the afternoon session, we will be breaking out into three groups: Prosecution, Litigation and Strategic & Transactional.  I’ve decided to sit in on the Strategic & Transactional discussion.  Marian Underwiser of  IBM Corporation will be discussing global strategies for managing and policing patent portfolios.

Invention Management –

1. Not just managing a collection of patents, need to consider all facets of Intellectual Property Lifecycle. 
2. It’s informed by corporate objectives –  What does the company need from its patent portfolio?  Why & how are inventions generated? What industries are most relevant? What is the market strategy? Who are the competitors?
3. A team sport – requires active participation from all parts of the company
4. A moving target – requires constant refinement and evolution

Leveraging IP for Business Value – IP rights are extremely powerful.  How do I make money on my IP in an area like open source?  Need to think strategically about your patents.  What services can I add on top of my platform. Building a service line on top of open source.  as you look at development of inventions, the flexibility of patent right allows you to use the patent right where you don’t think it’s even possible – can give you leverage as to where the development goes.  You need to be very connected to your business to figure out how to do that. Read the rest of this entry »

Institute Live Blog: Reactions To Bilski

Next panel  – “What Hath Bilski v. Kappos: Fallout in the Courts and the USPTO”.  The panel includes, Gary Hoffman of Dickstein Shaprio, David M. Rosenblatt of Thomson Reuters and Associate Prof. Michael Risch of Villanova School of Law.

– Gary Hoffman began with a discussion on how the Courts have reacted to Bilski.  The Federal Circuit has cited Bilski 7 times: 2 cases with substantive post-Bilski analysis: Prometheus (Court held MOT test is relevant but not the only test) & Research Corp. Tech (Court focused on whether the subject matter fails s 101’s requirement that it not be “abstract”); 2 references to the recency of the decision, 1 citation to the Supreme Court’s instruction that formulaic rules should be avoided,  1 metnion in dissent (Intervet), 1 case (King Pharma) where s101 analysis was passed over because the Fed Circ had already found the claims anticipated. Read the rest of this entry »

Patent Law Institute: Hon. Sharon Barner’s Keynote

The 5th Annual Patent Law Institute has just kicked off and we are lucky to have Former Deputy Director of Sharon Barner here to give the keynote address on her experience in the United States Patent Office as Deputy Director  including the initiatives taking place in the Patent Office today as per the USPTO Strategic Plan”.  Here are a few of the highlights of Barner’s remarks:

Barner began by saying that a lot of activity was needed at the USPTO to change things believed needed to change.  The number one goal is to  focus our resources and more effectively improve overall operations and the time it takes to get a patent.  As a part of focusing on timeliness, focus on quality of a patent.  PTO needs to be properly funded.  USPTO needs to have sustainable funding model and end to fee diversion.  However, money alone will not solve problems, needs to be well run and well managed.  Spent time crafting “Strategic Plan” at Patent Office. Barner urged all patent practitioners to review the USPTO 2010-2015 Strategic Plan which highlights the USPTO’s goals and initiatives.  Wanted to make sure resources focused on activities that will actually drive down backlog and drive down pendency and they did this by setting priorities.   How are you going to make priorities real when you’re predecessors couldn’t,  we’re going to manage the priorities the way a business would manage priorities.  Read the rest of this entry »

Life in the Fast Lane – Use of the Patent Prosecution Highway

Michael Davitz, Partner at Axinn, Veltrop & Harkrider and  Practice Center Contributor, recently sent in this article he wrote with colleague’s Drew Schulte and Jia Li discussing the Patent Prosecution Highway and the value that can be achieved for those practitioners willing to explore the new program.

In July of 2006, the United States Patent and Trademark Office (USPTO) established a trial program with the Japanese Patent Office, where an applicant with an allowed claim in one office could fast track the examination of a corresponding application filed in the other patent office.  This program paved the way for what would become known as the Patent Prosecution Highway (PPH).[1] Today, the PPH includes patent offices in many of the world’s largest economies and is growing.[2] Despite the USPTO’s estimate of a 94% overall allowance rate for PPH applications as compared to 44% for non-PPH cases when the United States is the Office of Second Filing,[3] practitioners have continued to be wary of using the new program, especially when it comes to leveraging entire patent portfolios.[4]

In part, the hesitation to embrace the PPH reflects a legitimate fear of comparatively untested methods when it comes to patent prosecution. Although patent practitioners deal every day with cutting-edge technology, which innovates constantly, they are often reluctant to try new approaches as patent prosecution is fraught with dangerous liability.[5] However, for those practitioners willing to explore this new avenue, the PPH offers potentially great rewards in terms of easier and faster prosecutions which can provide value-added leverage for a client’s patent portfolios. Read the rest of this entry »

Divided Infringement: Strategies For Drafting Claims

Dale Lazar, Partner at DLA Piper and Practice Center Contributor , sent in this article discussing divided infringement and how it generally pertains to large systems and corresponding methods.  Lazar will be speaking tat PLI’s Patent Law Insitute this Thursday, February 17th. The following is an excerpt from the aticle.

Divided infringement issues are most likely to arise in the context of large systems and corresponding methods, where multiple parties may contribute to or participate in the system.  A common instance where divided infringement is likely to arise is a network of computers where the functionality of the system is distributed across the computers of the network.  The network employed to connect the computers may be a LAN/WAN and/or the Internet.  Particularly where different computers perform different functions for the overall system, the different computers may be owned or operated by different parties, typically with each party not being controlled by other parties involved with the system.

Included at the end of this paper is a patent application directed to a “Reliance Server for a Transaction System”.  In many ways, the invention is typical of Internet-based inventions – inventions that are implemented over an open communications channel, such as the Internet.  The application has been simplified to focus on only a few of the features of the invention.  Please read the application as a basis for understanding the following remarks concerning divided infringement. Read the rest of this entry »