• Follow the Money: Is the U.S. patent system is fostering investment and risk taking?

    PTAB proceedings have radically changed the time to money for patent owners asserting U.S. patents against infringers. Additionally, the value of U.S. patents has dropped substantially since its peak in the 2012… Like many others, I applaud Director Iancu’s stated focus on the PTAB process and his concern about whether the U.S. patent system is fostering innovation investment and risk taking, especially for inventors, universities, and small to medium enterprises.

    The post Follow the Money:…

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  • OxFirst webinar on "IP indicators for business performance"

    OxFirst has announced a webinar on the always challenging topic of “IP indicators for business performance.” The webinar will take place on April 12, 2018, 15:00 British Standard Time and the speaker will be Mr. Terry Adams, former Assistant Vice President of Intellectual Asset Management at Nestle.

    The topic– Connecting intellectual property metrics and key performance indicators (KPI’s) to business relevant metrics and KPI’s is critical to gaining and holding the attention of executives within an organization. The relevant information typically exists within disparate systems, but data are rarely properly integrated to generate meaningful perspective.

    The speaker–Terry Adams has vast experience across numerous product categories, including food, beverages, home care, and personal care in the fields of scientific research and product development. He began his career at Procter and Gamble, where he became a Group Leader in 1991. In 1994, Mr. Adams joined the Dial Corporation (now a company of Henkel), where he eventually was appointed Manager of International Technology Coordination, covering all of Dial’s product categories. In 1998, Mr. Adams joined the Kimberly-Clark Corporation, where he was eventually appointed the Senior Research Manager of the Global Intellectual Asset Management Team, providing strategic coordination of Kimberly-Clark’s 3500 patent families and other global intellectual assets. Mr. Adams joined Nestlé in July 2006 as Assistant Vice President and head of the Technology Intellectual Property function, a matrix network across 28 technology centers in 10 countries.

    For registration, see here. OxFirst notes that the number of places is limited and that only registrations undertaken from professional email addresses are accepted (no registrations from Yahoo, Gmail or similar private accounts will be accepted).

    By Neil Wilkof

    Photo by Robert Cutts and is licensed under the Creative Commons Attribution 2.0 Generic license.

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  • OxFirst webinar on "IP indicators for business performance"

    OxFirst has announced a webinar on the always challenging topic of “IP indicators for business performance.” The webinar will take place on April 12, 2018, 15:00 British Standard Time and the speaker will be Mr. Terry Adams, former Assistant Vice President of Intellectual Asset Management at Nestle.

    The topic– Connecting intellectual property metrics and key performance indicators (KPI’s) to business relevant metrics and KPI’s is critical to gaining and holding the attention of executives within an organization. The relevant information typically exists within disparate systems, but data are rarely properly integrated to generate meaningful perspective.

    The speaker–Terry Adams has vast experience across numerous product categories, including food, beverages, home care, and personal care in the fields of scientific research and product development. He began his career at Procter and Gamble, where he became a Group Leader in 1991. In 1994, Mr. Adams joined the Dial Corporation (now a company of Henkel), where he eventually was appointed Manager of International Technology Coordination, covering all of Dial’s product categories. In 1998, Mr. Adams joined the Kimberly-Clark Corporation, where he was eventually appointed the Senior Research Manager of the Global Intellectual Asset Management Team, providing strategic coordination of Kimberly-Clark’s 3500 patent families and other global intellectual assets. Mr. Adams joined Nestlé in July 2006 as Assistant Vice President and head of the Technology Intellectual Property function, a matrix network across 28 technology centers in 10 countries.

    For registration, see here. OxFirst notes that the number of places is limited and that only registrations undertaken from professional email addresses are accepted (no registrations from Yahoo, Gmail or similar private accounts will be accepted).

    By Neil Wilkof

    Photo by Robert Cutts and is licensed under the Creative Commons Attribution 2.0 Generic license.

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  • How Employers Can Better Protect Trade Secrets

    Today, the biggest reason to have a strict regime in place to protect trade secrets, according to Gambhir, is because technology has made misappropriation of trade secrets so much easier than ever before. Compare the days when trade secrets resided in physical forms (blue prints, coca cola formula etc.) and were stored in locked file cabinets, safes etc. with the trade secrets in the digital world. “In most situations, they may be stored in a computer file that has restricted access on a secure…

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  • Ex parte Gershfang (PTAB 2018)

    PTAB Affirms Patent Eligibility of Virtual Reality Advertising Claims By James Korenchan — In a decision issued last month, the Patent Trial and Appeal Board reversed the final rejection of all the pending claims in U.S. Application No. 12/628,383. Th…

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  • Affirming on Other Grounds at the Federal Circuit

    Droplets v. Iancu (Supreme Court 2018) A new petition for writ of certiorari questions the extent that the Federal Circuit can affirm a PTAB IPR decision on grounds different than those relied upon by the Board. The rule in the Federal Circuit yes, affirmance-on-other-grounds is allowed so long as the Federal Circuit does not need […]

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  • Some Worst Case Scenarios as the Trade War with China Escalates

    As the trade war and tension with China escalates, I am thinking about some worst case scenarios—particularly in the academic context concerning intellectual property/valuable information.  At least one commentator has made the allegation that the Trump Administration may attempt to restrict students from China.  This will greatly hurt some universities who are deriving a substantial amount of revenue from Chinese university students—and will benefit universities in other countries without such a restrictive policy such as Canada.   It is not too much of a jump to think the Trump Administration may also attempt to restrict Chinese professors and researchers from visiting academic institutions or being hired by academic institutions.  There have been quite a few interesting allegations raised concerning Confucius Institutes at U.S. universities.  I am wondering whether the United States and other countries will attempt to restrict the travel and employment in China of their academics who are citizens of their respective countries.  For example, let’s say a top researcher who is a U.S. citizen at Stanford University is offered a position at a major university in China or another country.  Could the U.S. government attempt to restrict the academic from moving (or even giving academic presentations)?  Does that happen already?  Certainly, we do have U.S. export control laws that would restrict certain technologies from being disclosed to a national of another country even in this country.  Perhaps a distinction will be made based on whether the research is funded by the government.  What about publication?  Will the Trump Administration also attempt to restrict academics from publishing certain research–there are some rules concerning national security and publication of patents?  Ultimately, does it matter if we do not have adequate cybersecurity protections?  

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  • The Importance of an Accurate Assessment of Patent Valuation and Potential Market

    A recent article in the Saint Louis Post Dispatch by Christopher Yasiejeko describes a patent-related dispute between two academic institutions.  Two major research universities, University of Wisconsin (through its technology licensing arm, Wisconsin Alumni Research Foundation (WARF)) and University of Washington, Saint Louis (WUSTL) are engaged in litigation concerning royalty payments over a jointly invented patented invention that was licensed to Abbott Laboratories.  The inventors included a researcher from Wisconsin and one from WUSTL. 
    One of the issues with university developed technology is who will cover the patent prosecution costs.  Here, WARF apparently agreed to cover the costs for a higher royalty rate.  The dispute concerns apparent representations made by WARF concerning the value of the patent—allegedly representations were made that the value was not very high by WARF.  WUSTL appears to assert that WARF made representations to others that the patent was actually quite valuable and eventually important to the pharmaceutical, Zemplar, which according to the article “generated $409 million in sales in 2011.”  This appears to be a case where fraud in the inducement in entering the contract is relevant.  However, it seems strange that WUSTL was unable to arrive at their own valuation or understand the potential market for the invention—perhaps they did not have the resources at the time invested in technology transfer.  WARF was likely well financed at that time and certainly experienced.

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  • Tun-Jen Chiang: Can Patents Restrict Free Speech?

    Guest post by Jason Reinecke, a 3L at Stanford Law School whose work has been previously featured on this blog.

    Scholars have long argued that copyright and trademark law have the potential to violate the First Amendment right to free speech. But in Patents and Free Speech (forthcoming in the Georgetown Law Journal), Professor Tun-Jen Chiang explains that patents can similarly restrict free speech, and that they pose an even greater threat to speech than copyrights and trademarks because patent law lacks the doctrinal safeguards that have developed in that area.

    Professor Chiang convincingly argues that patents frequently violate the First Amendment and provides numerous examples of patents that could restrict speech. For example, he uncovered one patent (U.S. Patent No. 6,311,211) claiming a “method of operating an advocacy network” by “sending an advocacy message” to various users. He argues that such “advocacy emails are core political speech that the First Amendment is supposed to protect. A statute or regulation that prohibited groups from sending advocacy emails would be a blatant First Amendment violation.”

    Perhaps the strongest counterargument to the conclusion that patents often violate free speech is that private enforcement of property rights is generally not subject to First Amendment scrutiny, because the First Amendment only applies to acts of the government, not private individuals. Although Professor Chiang has previously concluded that this argument largely justifies copyright law’s exemption from the First Amendment, he does not come to the same conclusion for patent law for two reasons.

    First, unlike with copyright, every issued patent is the product of governmental action. Since the only state action for copyright “occurs at the level of the overall copyright system, the proper First Amendment question is whether the copyright system as a whole contravenes First Amendment principles.” Conversely, state action occurs twice in patent law: first in the creation of the statutory patent system, and second during the examination and issuance of individual patents by the PTO. Thus, First Amendment scrutiny can reach each individual patent. And second, even property law must yield to the First Amendment where any given actor occupies so much property that the actor forecloses all reasonable alternative avenues for expression, as in Marsh v. Alabama. Copyright law includes doctrinal limits that restrict ownership power, such as idea/expression, fair use, and the copying requirement. But patent law includes no such limits.

    Professor Chiang concludes with two proposals to reduce free speech concerns in patent law. He first proposes that we should simply apply conventional First Amendment scrutiny to patents as if the claims were a statute or regulation. He believes that this proposal works best where patent claims facially restrict content (such as in the example provided above). But the proposal is less desirable where the problem is excessive ownership power coupled with discriminatory enforcement, because (a) the only remedy would be to completely invalidate the patent, and (b) the First Amendment may not apply because the problem is power with discriminatory enforcement, not the PTO’s decision to issue the patent (as described above, First Amendment scrutiny can only reach the analytical levels at which state action occurs).

    Professor Chiang’s second proposal accommodates this problem of excessive power coupled with discriminatory enforcement. Drawing on First Amendment jurisprudence related to time, place, or manner regulations, Professor Chiang argues that patent law should be modified to include a fair use doctrine as well as a broader misuse doctrine. His conception of the misuse doctrine would cover discriminatory enforcement of patents based on the infringer’s speech content or viewpoint. I strongly urge readers to take a look at this terrific article, including Part IV, which outlines his persuasive proposals in greater detail.

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  • The Accounting Benefits of Legal Finance for IP

    There are many reasons that it makes sense for companies, law firms and other entities with valuable IP assets to utilize legal finance. Most are well understood: The cost of litigation is rising, the IP landscape continues to be ever more fraught with risk, and fewer firms are willing to take IP matters on contingency… However, there’s another, less understood but quite compelling reason for IP litigants to use legal finance: Its positive impact on accounting outcomes. The accounting and…

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