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Patent Strategies in Light of the New Rules September 21, 2008

Posted by mais in claim analysis, India, IPM Strategies, patent intelligence, USA.
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Courtsy Russ Krajec’s Anything Under The Sun Made By Man

In Patent Drafting and Claim Writing, Patent Drafting Theory, Practical Tips for Patent Drafting, Patent Strategy, Patents in Business, Business Theory for Patents, The USPTO

The latest rules from the US Patent and Trademark Office are quite sweeping.  The new rules have several facets.  On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE).  On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.

Another twist is that the Examination Support Document may be forced where two applications are filed nearly simultaneously.  The PTO may assume that they cover the same patentable material and force an Examination Support Document unless you can prove that the applications do not cover the same material.

(As a side note, I have spoken to several patent attorneys/agents about the new rules and I have not yet found one who would even agree to write an ESD, no matter what the cost.  The reasoning is similar to why I will not file accelerated examinations.)

Each of the various requirements put on the applicant presents several problems, including the specter of patent invalidity and possibly inequitable conduct if the various support documents and petitions are not properly done.

In some situations, I used to espouse a kitchen sink approach to patent prosecution, where you load up a patent application with as many ideas as possible, get an early filing date, and file many continuation applications as possible.  This strategy can blanket an area of technology very effectively and makes the best use of early disclosure.  The strategy also could be used to tailor claims to an infringer so that lengthy and costly court battles may be averted entirely.

In view of the new rules, I think another strategy may be better suited.

This strategy is very targeted and narrow, and looks to find specific areas that may be infringed in the future, but does not include any more than it needs.

The targeted strategy is driven from the need to avoid overlapping applications and avoid the potential that a continuation application may need to be filed.

The steps are as follows:

1.  Define a very specific strategy for patent coverage over the entire scope of the technology you wish to cover.  The strategy must be driven by the current and potential business needs of the client, as well as the possible turns a technology may take.

2.  Draft a complete set of claims for each targeted area.  Each element of the claims should be carefully and thoughtfully considered for the language, the scope of coverage, any way the claims may be construed or misconstrued, how an infringer may infringe, and for how it differentiates from the known prior art.

3.  Only after the claims are completed, analyze the claims with the inventor and the business manager, reviewing the areas described in step 2.

4.  Draft a specification that addresses each and every claim and every feature of every claim, and avoid any additional material if at all possible.  Each feature must be described completely, but avoid adding other ideas that may be patentably distinct and that you may wished were a stand-alone patent.

One interesting twist to the new rules is to attempt wherever possible to force a restriction by including patentably distinct sets of claims.  Each divisional application is a separate family of applications for the purposes of continuation applications and RCEs.

The new rules may tend to force less disclosure and much more tailored specifications that may stand or fall on the first couple Office actions, rather than specifications with all sorts of material that may keep an application alive through several continuations.  This may lead applicants to perform good searches based on the claim set of step 2 prior to drafting the specification of step 4.

The net result is a shift from large, comprehensive patents that may disclose a broad range of concepts to those which are very narrow and even skeletal.  Instead of ‘promoting the progress’ by encouraging as much disclosure as early as possible, I think the new rules encourage the exact opposite.

This discussion is by nature very broad and sweeping, but based on the strategies that the new rules seem to favor.  I am sure that many situations may cause other strategies to be used within the new rules, and I will discuss them as they come up.


Intel faces trademark litigation on “Dual Core” September 9, 2007

Posted by mais in IP Systems, IPM Strategies, Litigation.

California-based ultramobile PC firm DualCor Technologies filed a suit accussing Intel of misappropriating the DualCor trademark.  DualCor applied for a trademark on its name in May 2004 and was granted the same by the U.S. Patent and Trademark Office in July 2006. read more on this from google news

India 2nd best innovation facilitator places in the World May 17, 2007

Posted by mais in IPM Strategies.
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India emerged as the country with 2nd best conditions for innovation, after the US. UK ranked third and Japan at the fourth.

Japan has emerged as the world’s most innovative nation in terms of business practises, followed by Switzerland, US and Sweden. India has been ranked at 58th position, ahead of China’s 59th position in a ranking of 82 economies, based on their level of innovation during 2002-06. India fared marginally better on a study of innovation enablers (or the ability of a country to facilitate innovation), coming in at No. 50.

The Economic Intelligence Unit, The Economist, survyed 485 senior executives worldwide and analysed data collected between 2002 and 2006. 

A forecast by the agency for 2007-2011 expects China to improve its rank by five positions, while India is expected to move up by two. Hence, India will give away its lead over China as an innovative country in the next five years.

The top four will maintain their positions, according to the forecast, while China will move up five places to 54th and Mexico will climb six places to 39th.

The secret to successful use of technology in a corporate setting January 31, 2007

Posted by mais in IPM Strategies, Patent.
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The secret to successful use of technology in a corporate setting

By Ernest Svenson on Legal Tech

It’s sad how much money is wasted on technology. If you need transportation and you buy a car then you aren’t wasting money. But if the car doesn’t run properly so that you don’t use it then you have a problem. Corporations buy lots of technology. Amazingly, most of that money is wasted because they don’t know how to use technology properly.

What’s the secret to using technology well in a corporate world? I don’t really care, because I gave up on the corporate world. But, if I ever went back to that world, then it would have to be a company that understands this principle.

IP leveraging-A Strategy Article from Mckinsey September 30, 2004

Posted by mais in IP/Patent Valuation, IPM Strategies.
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The McKinsey Quarterly: Intellectual property: Partnering for profit: ”

Intellectual property: Partnering for profit
Patents and proprietary processes represent an untapped source of revenue for many companies. McKinsey research shows that in lots of cases, companies could earn 5 to 10 percent of their operating income from the sale or licensing of intellectual property, yet most earn less than one-tenth that. Too often, they don’t know what they have, what it is worth, or what other industries could do with it. The solution is to build a network of outside specialists who can identify the best market for each asset and use their industry contacts and experience to negotiate a sale. The authors describe the five kinds of specialists needed, their likely terms of engagement, and the keys to managing the network.
The take-away
Most companies’ attempts to make money out of their intellectual property suffer from the mistaken belief that it is an easy source of revenue. But capturing the full value of these assets requires systematic effort, a well-managed network of outside partners, and active senior-management support. ”

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Accounting intangible patent portfolio September 15, 2004

Posted by mais in IP/Patent Valuation, IPM Strategies, Patent.
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Intangible Property is property that has value but cannot be seen or touched. Generally, you can either amortize or depreciate intangible property.You must amortize certain intangible property over 15 years if you meet the following conditions:
You acquired the property after 8/10/93, (after 7/25/91, if elected)
You use the property in connection with a business or for the production of income
If you meet these conditions, amortize the following intangibles:
Patents and copyrights
Customer or subscription lists, location contracts, and insurance expirations
Designs and patterns
Agreements not to compete
If you created any of the intangibles listed in item (1) through (3), you can amortize them only if you created them in connection with the acquisition of assets constituting a trade or business or a substantial part of a trade or business.For more information on amortizing these and other intangibles, refer to Amortization in Publication 535, Business Expenses.
Generally, you can depreciate any of these intangibles acquired before August 11, 1993, or that do not qualify for amortization. However, they must have a determinable useful life.
Agreements not to compete, lists, contracts, and expirations are sometimes confused with goodwill, which is not depreciable. Therefore, you must be able to determine their value separately from the value of any goodwill that goes with the business.
If you can depreciate the cost of a patent or copyright, you can use the straight line method over the useful life. The useful life of a patent or copyright is the lesser of the life granted to it by the government or the remaining life. If it becomes valueless before the end of its useful life, you can deduct in that year any of its remaining cost or other basis.
Straight Line MethodGenerally, if you can depreciate intangible property, you use the straight line method of depreciation. It lets you deduct the same amount of depreciation each year.
To figure your deduction, first determine the adjustment basis, salvage value, and estimated useful life of your property. Subtract the salvage value, if any, from the adjusted basis. The balance is the total depreciation you can take over the useful life of the property.
Divide the balance by the number of years in the useful life. This gives you your yearly depreciation deduction. Unless there is a big change in adjusted basis or useful life, this amount will stay the same throughout the time you depreciate the property. If, in the first year, you use the property for less than a full year, you must prorate your depreciation deduction for the number of months in use.
Example: In April, Frank bought a patent for $5,100. It was not acquired in connection with the acquisition of any part of a trade or business. He depreciates the patent under the straight line method, using a 17-year useful life and no salvage value. He divides the $5,100 basis by 17 years ($5,100/17=$300) to get his yearly depreciation deduction. Because he only used the patent for 9 months during the year, he multiplies $300 by 9/12 to get his deduction of $225. Next year, Frank can deduct $300 for the full year.
Intangible Property That Can Never Be DepreciatedThe following are two types of intangible property that you can never depreciate.
Trademark or trade name
Goodwill is the value of a trade or business based on expected continued customer patronage due to its name, reputation, or any other factor.
You can never depreciate goodwill because its useful life cannot be determined. However, if you acquired a business after August 10, 1993 (after July 25, 1991, if elected), and part of the price included goodwill, you may be able to amortize the cost of the goodwill over 15 years. For more information, refer to Amortization in Publication 535, Business Expenses.
Trademark, trade name or franchise is a section 197 intangible. In general, you cannot depreciate the cost of a trademark, trade name or franchise. However, you may be able to amortize over 15 years the cost of a trademark, trade name or franchise you acquired after August 10, 1993 (after July 25, 1991, if elected).
You must amortize its purchase or renewal cost, other than certain contingent payments that you can deduct currently. For more information, refer to Other Expenses in Publication 535, Business Expenses.
If you buy a trademark, trade name, or franchise you can deduct the amount you pay or incur as a business expense only if your payments are part of a series of payments that are:
Contingent on productivity, use, or disposition of the item
Payable at least annually for the entire term of the transfer agreement, and
Substantially equal in amount (or payable under a fixed formula).
When determining the term of the transfer agreement, include all renewal options and any other period for which you and the transferor reasonably expect the agreement to be renewed.
The tax treatment of goodwill, a covenant not to compete and a consulting agreement can be summarized as follows:

Amortize 15 years
Capital asset
Covenant not to compete
Amortize 15 years
Ordinary income
Consulting agreement
Deduct as incurred
Ordinary income
Additional Resources
Publication 535, Business Expenses
Publication 946, How to Depreciate Property
IRS Code Section 197
From: Crouch, Dennis [mailto:crouch@mbhb.com] Sent: Tuesday, September 14, 2004 3:59 PMTo: PatentLawPractice@yahoogroups.comSubject: RE: [PatentLawPractice] Use of patents
I agree, you need more info before he gets the ax. It is likely that the IRS and accounting rules relating to patents do not follow any logic.

In terms of being in use, you should also include inventions that have not even been written up as patent applications — these would be considered trade secrets.

— Dennis

—–Original Message—–From: Pyle, Jeffrey [mailto:jpyle@wmalaw.com] Sent: Tuesday, September 14, 2004 2:53 PMTo: PatentLawPractice@yahoogroups.comSubject: RE: [PatentLawPractice] Use of patents
You never know…I wouldn’t be surprised if the IRS is sufficiently obtuse about patents to realize there’s even an issue. Or, they might not care, and just assume that for accounting purposes only the “in use” patents can get amortized since you can’t value the patent that are not “in use.”

I guess I’d just get a second opinion from another accountant on this narrow issue.

—–Original Message—–From: N. Stephan Kinsella [mailto:kinsella@ao-inc.com] Sent: Tuesday, September 14, 2004 2:49 PMTo: PatentLawPractice@yahoogroups.comSubject: [PatentLawPractice] Use of patents

An accountant who was trying to decide how to amortize the costs of our patent portfolio for tax or auditing purposes wanted to know how many of our patents “were being used”, were “in use”. I told him that patents and apps in our portfolio have a variety of classifications: pending, published, allowed, issued, abandoned. But that I don’t know what it means for a patent to be “in use”. He replied that he assumed “in use” means an issued patent, since “when it issues you start selling product and getting licensing revenue.”

I cannot believe this is correct. Not all patents cover the owner’s products or even competitors’ products. And of course not all of them are licensed. It is not even always objectively clear (or at least, the owners don’t always have an up to date chart showing which patents do, and do not, “cover” the owner’s products; or are generating licensing revenue). I cannot believe IRS or relevant accounting rules require such records to be kept. It seems to me that any issued patent that you own is “in use” since it sits there as potential ammunition or asset, at the ver least. Moreover, it seems to me that at least published apps are also “in use” in a sense given that their claims are published and putting competitors on notice for possible back royalties in the event of a future issuance.

My guess is this guy is an idiot. My question is, should I fire our accounting firm?

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