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10/18/06 Breakfast with Experts – Patent Strategies: How to avoid adding to the pool of valueless patents
Teqcorner
1616 Anderson Rd.
McLean, Virginia
7:30 AM - 9:30 AM
Panel:
Cost: Free. Please register, space is limited.
Register here.
The panel will present and discuss a disaster-prevention checklist for use in preparing a strategy for patent protection and reviewing the work of attorneys. We promise, the checklist is interesting, because it doesn’t present problems that are unlikely to be present; it shows what is almost certain to be wrong with your patent procurement process. In a system in which, by estimates, over 97% of the products – issued patents – are worthless, it shouldn’t seem far-fetched that serious deficiencies are the norm rather than the exception.
The checklist includes the well-honed ideas on patent strategy by an experienced patent strategy expert, John Cronin from ipCapital Group. To discuss some of the issues that arise due to differences in foreign and domestic law, which apply to priority applications filed domestically, the panel includes Mark Catan of Proskauer Rose, specializing in US practice, Armin Kühn of Viering Jentschura and Partners, specializing in European practice, and David Tarnoff if Global IP Counselors, who is expert in Japanese practice. It should be noted that, for legal reasons, heeding the requirements of foreign patent regimes will improve domestic patent applications so they are relevant even for companies that are not interested in foreign-filing.
A good patent strategy should combine varied perspectives and expertise, such as marketing, technical-domain, and legal expertise. Owners, not lawyers, are usually the experts in two-thirds of that equation. So the question is, are the clients contributing to the process all that they should? If they are any reflection, typical invention disclosure forms, inventor-interviews, and instructions for reviewing draft applications, the answer is probably not. The idea of a checklist was inspired by a desire for patent owners to become more involved in the patent process by helping them to contribute useful critique and additional substantial contributions to the process.
A list of possible points (which will inevitably be modified in the run up to the panel) is:
- The need to involve varied expertise and perspectives; e.g., marketing, technical domain, end-users, trainers, sales, etc. Tools to extract knowledge, know-how, and creativity.
- It’s the market, stupid. Goal is to protect market space, not technology. Devices to probe and flow into to patent application process.
- Combine trade secrets, defensive disclosures, and licenses with patents.
- Driving the invention process in combination with the patent process. Big picture such as technology evolution, supply chain, allied industries, end-user applications, etc.
- First Disclosure requirement for priority claim.
- Same Invention – Invention-as-a-whole-from-priority-document requirements.
- General (abstract) terms must be supported by examples. No species supporting a genus. How-to.
- Essential features.
- In the examination process, you get only two bites at the apple, so an applicant needs to ensure the first review by the Japanese examiner covers substantive issues, not formalities. The best way to address this concern is two steps: first to make sure the application addresses the priority document addresses the following three issues and second to ensure a Japanese counsel reviews and revises the document before or preferably, during translation.
- In Japan, the story counts. In Japan, ideally, the “story” of an invention – a burden suffered by mankind and finally lifted by a flash of genius – should actually be told by the patent application. However, this kind of story can hurt in other regimes so we’ll provide a strategy for presenting the problem/solution approach without colliding with such conflicting requirements.
- Infringement: Close coupling between features of the claimed invention and working examples presented in the application. JP courts notorious for construing claims narrowly, so it is advantageous if an embodiment resembles the accused article. These additional embodiments can be economically provided by identifying variations in the manuscript – they need not be supported by drawings or expansive discussions.
- Japanese claims should be written so that they are functional. Rejections for lack of clarity are not such an issue as in Europe and the US. Claims need to contain an operational effect or advantage. Arguing the operational effect or advantage in an amendment is often given little weight by the Japanese Examiner.
John Cronin is Managing Director and Chairman of ipCG. Capitalizing on a lifelong study of creative and inventive thinking processes, business strategy development, and transaction negotiations, John has created the unique ipCapital System® methodology, which extracts and documents invention, identifies opportunity and risk, drives transactions to completion, and creates significant market value from intellectual property (IP). Over the years, he has become a respected thought leader among executives who wish to align business issues and IP, and translate strategies into actionable financial results.
John has led ipCG from a small consulting practice to the largest professional services firm of its kind, serving over 350 clients since 1998. The primary architect of ipCG’s proprietary IP strategy tools and best-in-class transaction methods, John has also negotiated deals for ipCG clients, including out- licensing agreements, asset sales, and mergers and acquisitions. Working closely with the entire staff, John continues to lead consulting assignments for a wide variety of clients.
Prior to founding ipCG, John was a distinguished inventor at IBM for 17 years. During his tenure, he patented 100 inventions, published over 150 technical papers, received IBM ‘s “Most Distinguished Inventor Award,” and was recognized as IBM’s “Top Inventor.” As a member of the senior technical staff and the prestigious IBM Academy, John led an intellectual asset team that spearheaded efforts to produce and manage the development of IP. Eventually known as “The IBM Patent Factory,” this select group supported the division that increased IBM’s annual licensing revenue from $30 million in 1992 to more than $1 billion in 1997 and every year thereafter.
Armin Kühn, partner in the firm of Viering Jentschura & Partners, born in 1970, graduated from the Technical University in Munich as a mechanical engineer (Dipl.-Ing.) with particular emphasis on technical aeronautics. Apart from a general knowledge in the field of mechanical engineering, he has particular expertise in the fields of flight mechanics, jet engines, aerodynamics, flight construction and control engineering, as well as civil engineering.
Mr. Kühn joined VJP in 1996. He deals with all kinds of industrial property rights, i.e. patents, trademarks, utility models and designs. His work is mainly related to German, European and International patent applications, and to opposition and nullity proceedings.
Mr. Kühn is registered as a German Patent Attorney, a European Patent Attorney, a European Trademark Attorney, and as a European Design Attorney.
Mark A. Catan is a patent attorney in the Litigation and Dispute Resolution Department of Proskauer Rose, LLP Washington, D.C.
Mark has twelve years of experience in the development and implementation of creative and effective patent strategies for clients in many different business and technical fields. His practice includes counseling clients on patent validity and infringement issues, licensing, patent prosecution -- including the preparation of new patent applications -- and litigation.
Mark has worked in many electronic, mechanical, and computer-related fields including MRI, forward imaging sonar, radar, optical and electronic communications including the rudiments of signal processing. He has a background in image and video processing and pattern recognition, event recognition and classification, neural networks, and other applications of machine intelligence, including neural networks. Mark is familiar with software and computer hardware including input/output systems, storage devices, network systems, data compression and encryption, and computer security. His mechanical work has involved fluid mechanics and medical devices.
Mark has an AB in physics and an MS in fluid mechanics and is a former Principal Investigator of several alternative energy research projects at Brookhaven National Lab.
David L. Tarnoff is a U.S. patent attorney and one of the founders of the Washington firm in the Shinjyu Global IP Group. Mr. Tarnoff holds a B.S. in mechanical engineering from Cornell University as well as a J.D. degree from Catholic University. Mr. Tarnoff started his career in intellectual property in 1982 as an examiner for the United States Patent and Trademark Office, where he worked until 1986. Mr. Tarnoff examined U.S. patent applications relating to agricultural machines and medical devices. Mr. Tarnoff is a frequent lecturer in Japan on U.S. patent practice. He is a member of the District of Columbia Bar, The Virginia State Bar, American Bar Association (Patent, Trademark, and Copyright Section), and American Intellectual Property Law Association.
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