Inventions of Steve Jobs Define Us

Steve Jobs revolutionized our world through his inventions. There are very few inventors in the world that give us devices that change the way we live. There are not many households in the world that don't have some form of technology created by Apple. Steve Jobs

My house is littered with almost every generation of iPod, the iPad I and II, Apple TV and a couple laptops made by Apple. I remember my first computer was a Mac in the early 1980s.

Steve Jobs co-founder of Apple passed away at the young age of 56. It makes me consider my mortality. You can have everything in the world but you can't control your time here.

We all live on the edge of life and death every minute but no one ever considers that death is going to take them away right now. So I try to remind myself to live my life now.

Inventors attempt to come up with ideas to change the world but there are very few people that actually do it.

Steve jobs and Apple revolutionized our world through the electronic devices he and his company invented.

The personal computer. In 1976 the Apple I was one of the firapple iist rudimentary computers made available for computer enthusiasts at the cost of $666.66.

Throughout the next 40 years the Apple personal computer evolved to a point where everyone could interact with the computer in our own language in a seamless iconic way.ipod

 

 

The iPod forever changed the way we listen to music. It's iconic commercials of a young person listening to music with the earphone buds and long wire swinging to the music changed the music industry.

The iPad forever changed the way we interact with apps and the endless store of information on the Internet.

ipadI would guess this is just the precursor of screens attached to walls and other devices that we swipe and tap with our fingers to manipulate the electronic images and music and remote control of virtually all electronic devices.iphone

 

The iPhone the most popular smart phone in the world forever changed the way we communicate with each other. 

Steve Jobs has been compared to Edison, da Vinci and all the great inventors of all time and I agree he certainly deserves to go down in history as an iconic figure that changed the world forever.

Kodak Seeks to Profit from Patent Portfolio

Eastman Kodak Company announced that it is "exploring strategic alternatives related to its digital imaging patent portfolios, a move reflecting the current heightened market demand for intellectual property."

Does this mean they're going to try to leverage their patent portfolio against other competitors in lawsuits? Can you say "patent troll"? Some people think that maybe they will be putting their patent portfolio up for sale to help their cash flow.KODAK MAX Z990 FF

Does anybody still use film cameras? I can't remember the last time I printed up some of the pictures that I've taken with my digital camera. Because of dwindling film sales, Kodak has become more aggressive about licensing its patents.

Since 2008, it has generated almost $2 billion in licensing fees and royalties from intellectual-property battles, both in negotiations and the result of Patent infringement lawsuits.

Wednesday's announcement comes while Kodak is suing Apple Inc. and Research In Motion Ltd. (RIM), the maker of the BlackBerry phones, saying their phone camera features infringe on some of its patents.

The United States International Trade Commission (ITC) recently issued a favorable ruling in Kodak Patent Case against Apple and RIM. The ITC rejected a counterclaim by Apple that Kodak cameras infringe on Apple patents.

Eastman Kodak Co. (EK) shares have rebounded slightly as a result of this announcement and are currently selling for $2.50.

But today's price is close to Kodak's lowest level in more than 30 years.

Kodak’s portfolios include more than 1,100 U.S. patents pertaining to capturing, processing, storing, organizing, editing, and sharing digital images, as well as imaging monetization applications, which are fundamental to the digital imaging industry.

Those patents represent approximately 10% of Kodak’s patent portfolio. 

Kodak has retained Asset management firm Lazard LLC as its adviser in how to employ this new patent portfolio strategy.

“Given recent trends in the marketplace for intellectual property, we believe the time is right to explore smart, opportunistic alternatives for our digital imaging patent portfolios,” said Laura G. Quatela, Kodak’s General Counsel and a Senior Vice President of the company. "This effort reaffirms our commitment to the three pillars of our intellectual property strategy – design freedom, access to new markets and partnerships, and cash generation."

Kodak invented the digital camera and since then has pioneered many of the major advances in digital imaging devices, systems and services. The company’s portfolios of more than 1,100 digital imaging patents – plus foreign counterparts and related patent applications – comprise the world’s richest collection of imaging-related technology.

I wonder if they really want to sell 10% of their patent portfolio off or just use it as a weapon against all its competitors to start a series of patent infringement lawsuits?

Interview With PTIS Co-founder Brian Wagner

One of the things I enjoy about law blogging is my opportunity to interview thought leaders in the intellectual property arena. Recently I had the opportunity to be introduced to Brian Wagner who is a co-founder of a company called "Packaging & Technology Integrated Solutions"(PTIS).

PTIS is a group of “Global Management and Packaging Consultants.” I got a chance to discuss how packaging is relevant to intellectual property such as trademarks, trade dress and patents.

PTIS' serves nearly 100 Fortune 500 companies from around the globe, and from all areas of industry, trade organizations, government, and academia. Packaging is also vital to the sustainability of our environment. PTIS consults corporate America with regard to new and innovative ways to preserve both the IP rights of their clients and the environment without sacrificing profitability.

Thank you, Brian Wagner for participating in the interview. Here are the Q&A's:

What type of company is Packaging & Technology Integrated Solutions (PTIS)?

PTIS is a management consultancy providing strategic and tactical professional services.

Some areas of specialization include innovation, organization strategy and sustainability.

Can you tell me a little about your background and how you started in the packaging industry?

After graduating from Canisius High School, I left Buffalo in 1979 for Michigan State University to study business, intending to return some day to join my father’s Insurance Agency (R.A. Wagner Agency). A series of circumstances and dislike for accounting led to a program switch into the School of Packaging where I joined 1200 undergrads and a thriving program.

I interned with IBM in Rochester, MN learning I had made a great choice and learning a lot about a great corporation. When I graduated in 2004, the “rust belt” was earning its name and jobs in western NY and Michigan were scarce. IBM offered great opportunities, but an opportunity with consumer products and General Foods (now part of Kraft) was more enticing – so I moved to Cranbury, NJ to begin my career.

Since then, I have worked for great companies including Burger King, Multisorb Technologies (Buffalo, NY), Sara Lee and Kellogg’s. In December of 2000 I co-founded PTIS, and we have now led consulting efforts for over 200 leading companies and brands including many of the Fortune 500.

Why is the packaging of a product so important?

Packaging is estimated to be a $650bn global industry, though estimates range as high as $3tn. Depending on the industry and what is being packaged, packaging serves a number of functions – and quite often is “the product.”

When it works well, consistent with delivering the product and brand promise, we take it for granted. When something is wrong, we quickly recognize it and the product and brand value are damaged as well.

Some studies suggest that if all food could be packaged as it is in the western world, we would solve world hunger. The amount of waste, spoilage and disease that exists in much of the world’s food supply chain is due in large part to inferior or even no packaging.

E. Bryan Finison, Jr., in his monthly column on business concepts called the “Finison Corner" wrote a book review about Malcolm Gladwell's book Blink entitled "Finison Corner – Blink – The Power of Thinking without Thinking" (PDF) he highlighted the idea that "Package design will impact the consumers’ perception of how a product will perform, and even impact the way a product tastes."

I found this description of packaging on Scrib– it is simple and not bad:

  • Packaging is the science, art and technology of enclosing or protecting products for distribution, storage, sale and use.
  • Packaging is a coordinated system of preparing goods for transport, warehousing, logistics, sale and use.
  • Packaging helps the consumer quickly understand what the product is all about
  • Packaging is a silent salesman

How have you been able to use your own expertise in the packaging field to help other companies better market their products?

I have been blessed with learnings and lessons from some of the best researchers, designers and packaging professionals in the world – starting with consumer insight and understanding. We regularly teach companies how to do research on packaging and how best to extract meaningful and relevant insights that can be translated into successful package designs.

Much consumer product research focuses on products, brands and advertising – packaging is taken for granted and can be the reason a product succeeds, or fails. Over 150,000 new products are launched globally every year, and over 80% fail in 6 months. I believe poor understanding of packaging is one of the key reasons.

How can a company protect the packaging and display of its products?

As you know, the world of packaging design patents is very crowded. However, patents (design, utility and process), trade secrets and trade dress are commonly used to protect inventions in the packaging space. Of course graphic elements are protected with copyrights and trademarks.

Note that Trade Dress is increasingly used by major national brands to defend their package size, shape, and overall design versus private label competitors attempting to copy them in the marketplace.

Why is it so important for a company to protect its Intellectual Property? How does this relate back to the packaging industry?

Packaging is similar to other industries in this regard. A significant amount of time, resources and money are expended to invent and innovate – and without IP protection, it would be simple for competitors to copy package (and packaging machinery) designs and processes. In the end, without IP protection, innovation would likely cease.

Have you filed for patents or trademarks in the past?single-handed container for mixing

I only have my name on one patent (US Patent 6,641,854 PDF), but have been very involved in the process many times.

The kinds of companies we work with all value IP protection, with policies and processes, so being involved in these processes is unavoidable.

Why is it so important for a company to differentiate its product's trade dress? How does this contribute to its overall success?

As mentioned previously, the use of Trade Dress protection has increased in recent years, in particular where large national brands such as Procter & Gamble have worked to fend off copycat private label competitors.

In many cases, design elements such as shape, texture and color are clearly associated by consumers with a specific brand (ex. Coke red and their contoured can) – so these can be leveraged to protect brands through package designs. The best companies recognize these opportunities when they go to market, but Trade Dress is still largely underleveraged.

On your webpage, you asked the question "Are you fully differentiating your product's trade dress, and protecting its IP?" How does packaging differentiate trade dress of a company and how does that help in the overall profitability and marketing of the company?

My firm does a lot of work in “Experiential Packaging” recognizing that the more senses we engage, the more memorable a brand and product and the stronger the emotional connection. All consumers make purchase decisions with their emotional right brain and analytical left brain.

Shape, visual design elements, texture, aroma, taste and sound throughout the use experience are all critical – most companies focus only on graphics. Companies we work with have demonstrated sales increases and decreases when, for example, removing ridges and nubs on a bottle, intended to save cost. These elements became over time, part of the unconscious consumer experience.

As previously noted, national/global brands are under attack by companies with often inferior products, who simple develop copycat package designs and place them on the store shelf in close proximity but at discount prices. These copycat companies spend virtually no money on research and development, allowing them to charge less – an unfair advantage. So, identifying and proving trade dress protection is a valuable defense.

Sustainability is becoming a growing concern for many consumers and companies alike. How does PTIS help companies to balance both financial and sustainable goals? Have you come up with any new ideas regarding sustainability as it pertains to intellectual property law?

Sustainability is about considering unintended consequences on future generations. Responsible members of the packaging industry have always worked to minimize packaging relative to the use and distribution requirements of the product – and keeping the three Ps in balance.

 The Sustainability "three Ps":

  • People (Society, Equity),
  • Planet (Ecology) and
  • Profit (Economics)

It makes sense to minimize/optimize packaging and it is well known that packaging has a small ecological foot print, and in fact, more packaging can reduce product waste and spoilage, and most “products” have a far more significant environmental footprint.

Regardless, packaging is visible and receives significant negative press. The attention on packaging as well as on the world’s finite resources has led to new materials development (renewable resources, made from recycled materials, more recycleable, etc), new methods of automatically identifying materials for waste separation and recycling, etc. This is a great area for IP protection and innovation.

What is your position on Open Innovation?open inovation

Another topic worth mention and discussion is “Open Innovation.” For decades, companies have realized that regardless of how many dozens, hundreds or even thousands of smart people they have – there are millions more outside their four walls.

An MIT professor I have worked with, Eric Von Hipple, studied the source of inventions and innovations, and found that in many industries, less than 50% of the successes were actually invented by the company. Instead, they were acquired or discovered and commercialized.

In 2003, Henry Chesbrough published the first of three books (so far) on what he calls “Open Innovation.” P&G says “Connect and Develop” – and there are other names.

So now, at least hundreds of companies of all sizes are creating open innovation programs and web site portals that welcome new ideas and inventions. One of the biggest hurdles our benchmarking research has identified in innovation programs has to do with IP, and lack of willingness to share ownership.

My firm PTIS specializes in helping companies to build successful innovation and Open Innovation programs and processes – often starting with development of IP strategies and policies that lead to winning programs and efforts.

Interview with Creative Director Reagan Burns

reagan burnsWhen starting a new business one of the first things that needs to be done is to create a brand. Branding establishes the first impression that your target audience has of your business. Existing businesses sometimes need to re-create their brand.

I once asked an attorney "why does the public perceive you as the best personal injury attorney?" And he simply replied “because we told them in our advertisements.”

So if you're starting a new business or you own an existing business and your look is getting old and you need to upgrade or simply change and you need a fresh set of eyes to look at the situation where do you go?

I found Reagan Burns the owner and creative director at Lime Creative. Reagan and I had a nice conversation and she answered a few questions for me regarding marketing and branding issues.

What are some things a new business should be aware of regarding branding?

So when you're starting a new business you need to create advertising material, packaging, and trade dress of your actual place of business that says "this is who we are."

  • Branding
  • Advertising
  • Marketing

Branding equals "look and feel of the company." The logo operates to allow consumers to identify with the company. We help determine what the company needs such as a logo, slogan or tagline.

How do you come up with new ideas without stepping on other people's legal rights?

When coming up with new ideas we have to be aware of trademark issues and copyright issues. This is where it's important to find a trademark attorney to perform a trademark search and file an application for trademark or copyright registration. Our company will pass clients onto patent and trademark attorneys to determine whether or not a federal trademark has previously been registered.

How do you come up with new ideas?

Our job is to determine what theme you're looking for. For example, a modern versus traditional look in which the target audience can relate. What is the look and feel of the company? How do you present yourself to the world?  Who do you want to become?

You can worry about efficiency while we worry about branding. In fact, not only do we love branding, but we also love worrying about advertising, and marketing, and designing, and inventing creative ways to add a little pizzazz and flavor to your business.

What do you do as far as following up with your branding plan?

Once we come up with a marketing plan it's important to implement it with consistency. Advertising should be memorable and uniformly consistent. Things like color codes and JPEG pixelation's should be consistent throughout the branding. Everything should have a unified feeling and the marketing plan should repeat the trademark over and over.

What rights does the branding company maintain?

Our client maintains all rights to use their logos as they see fit, whereas we maintain portfolio rights in all our work. Portfolio rights allow our company to maintain examples of our work to promote our business.

New Intellectual Property Enforcement Advisory Committees Created by Obama

President Obama issued on February 8, 2011 an Executive Order called "The Establishment of the Intellectual Property Enforcement Advisory Committees," establishing two intellectual property enforcement advisory committees designed to improve the Federal Government’s intellectual property enforcement efforts.President Barack Obama

The Enforcement Advisory Committee shall develop a Strategic Plan as provided for in title III of the PRO IP Act.

The President's issuance of the Executive Order is evidence that there is a growing awareness of the commercial importance of intellectual property laws and the need to strengthen the enforcement of the laws designed to protect and foster America's inventiveness and creativity.

The executive order states that in the development and implementation of the Joint Strategic Plan, the heads of the departments and agencies shall share with the Coordinator of the Intellectual Property Enforcement Advisory Committee and the other members of the Enforcement Advisory Committee relevant department or agency information such as: 

  • (A) plans for addressing the Joint Strategic Plan;

  • (B) statistical information on the enforcement activities taken by that department or agency against counterfeiting or infringement; and

  • (C) recommendations to enhance cooperation among Federal, State, and local authorities responsible for intellectual property enforcement.

The Senior Advisory Committee shall be composed of the Coordinator, who shall chair it, and the heads of, or the deputies to the heads of: 

  1. The Department of State;

  2. The Department of the Treasury;

  3. The Department of Justice;

  4. The Department of Agriculture;

  5. The Department of Commerce;

  6. The Department of Health and Human Services;

  7. The Department of Homeland Security;

  8. The Office of Management and Budget; and

  9. The Office of the United States Trade Representative

The $64,000 question is whether not this committee will actually do anything. It seems like committees are constantly being formed to vote on things to do in the future. For example the Senate Judiciary Committee voted recently to send bipartisan patent reform legislation to the full Senate. This was announced by the Senate Judiciary Committee Chairman Sen. Patrick Leahy on February 3, 2011.

I spoke with Leahy press contact David Carle on the telephone today and I asked him when did he expect it to go to the full Senate. He said that Patent Reform has been kicking around for years and it was just recently voted on by the committee and he didn't appear to have any idea when it might actually go before the Senate. His tone of voice seemed to say that to ask "when" at this early juncture is a little bit ridiculous.

I guess that's just the way things work in Washington one committee after the next kicking it around. The wheels of progress keep rolling along. But at least the politicians that we've elected are discussing patent reform and the importance of protecting intellectual property rights.

IBM Awarded the Most U.S. Patents in 2010

The United States Patent and Trademark Office (USPTO) granted an all-time high 219,614 United States utility patents in 2010 – up 31 percent over 2009. All but one of the companies in the Top 50 are up from 2009, most shattering records and many posting double-digit percentage gains.

IBM continues to hold down the #1 patent rankings position, which it has done for 18 consecutive years, with a record 5,896 patents, up 20 percent from 4,914 in 2009. IBM is the first company to Break 5,000-Patent Mark in a Single Year.

IBM’s 2010 patent total nearly quadrupled Hewlett-Packard’s and exceeded the combined issuances of Microsoft, Hewlett-Packard, Oracle, EMC, and Google. More than 7,000 IBM inventors residing in 46 different U.S. states and 29 countries generated the company's record-breaking 2010 patent tally.ifi claims

IFI CLAIMS® Patent Services, a division of Fairview Research, compiled a ranking of global companies awarded the most U.S. patents in 2010.

I spoke with Darlene Slaughter, general manager of IFI CLAIMS Patent Services and she said that they provide statistical data to perform preliminary patent searching, infringement searches or freedom to operate searches." With that information companies can:

  • Determine which companies are key players in a particular technology
  • Identify strategic partners
  • Gain an insider's view of a competitor's patenting activity
  • Review the number of new patents in each category for the past year
  • Track patenting trends across industries

Darlene Slaughter, reiterated that protecting innovation through the patent office is not slowing down

"Companies with the most patents focus on their IP and believe that protecting the innovation through patent is important in maintaining an edge on its competition."

Is this increase in patent grants a sign that innovation is not slowed by recession? Or is it a sign that United States Patent and Trademark Office is becoming more efficient at prosecuting patent applications and the increased number of patent examiners are reducing the back log of patent applications?

I think the increased number of patent grants can be directly tied to the number of applications filed.

In his Director's Forum: David Kappos' Public Blog the USPTO director posted that "Improving Key Patent Processes and Sub-processes" is the big reason for the increased patent grants and he quotes a couple remarkable numbers:

For the year 2010 the USPTO Technology Center Technical Support Staff of 274 legal instrument examiners and legal document review clerks:

  • Entered more than 2.9 million documents;
  • Verified more than 264,000 allowed patent applications;
  • Reviewed and counted over 2,300,000 office actions; and
  • Processed more than 257,000 new patent applications.

These stats represented all-time records for the USPTO, reflecting all-time record workflow through the Agency including interviews conducted, office actions processed, notices of allowance, and final rejections. David Kappos

The bottom line is that the United States patent office has been swamped with a rising flood of applications over the past 20 years:

  • 174,711 applications were filed in 1990 and 100,975 patents were issued.
  • 478,649 applications were filed In 2010 and 219,614 applications were issued.
  • The 1990 gap between patent applications filed versus issued patents was 73,736 
  • The 2010 gap has grown to 259,035.

Okay we know it is not humanly possible for 6,000 examiners to keep up with the 721,831 backlog of patent applications... but have the examiners increased their ability to process applications?

patent application backlog

Dennis D. Crouch of Patently-O Blog posted a chart comparing the yearly number of patents issued per examiner over the course of the past decade. Dennis points out that apart from the “2007-2009 period where the grant rate dropped so precipitously” this chart does not suggest that the examiners are any more efficient today of disposing patents than they were in previous years.

So I would guess that the only solution to decreasing the backlog of patent applications is to hire more examiners.

John Schmid of the Milwaukee Journal Sentinel reports that despite efforts to improve, U.S. patent approvals are moving slower. And because of the huge backlog and the fact that the US publishes entire patent applications online 18 months after they are filed, “That puts American ingenuity up for grabs, free to anyone with an Internet connection.” In the article he quotes Paul Michel, recently retired chief justice of the United States Court of Appeals for the Federal Circuit, as saying

"In China, there are thousands of engineers who don't work in laboratories inventing new technologies. "They sit in computer rooms reading U.S. patent applications on the Internet. And they can use the technology anywhere in the world, including in America, for free.

But even with all the suppoed deficiencies of the United States Patent and Trademark Office, foreign and US corporations want to protect their innovations and have filed a record number of applications this year.

And as a result US companies own about half and the rest of the world owns the other half of the granted patents this past year. (see chart below World Wide Ownership of US Patents 2010)

Top-50 US Patent Assignees in 2010 (As reported by IFI)

  1. International Business Machines Corp 5896
  2. Samsung Electronics Co Ltd (Korea) 4551
  3. Microsoft Corp 3094
  4. Canon K K (Japan) 2552
  5. Panasonic Corp (Japan) 2482
  6. Toshiba Corp (Japan) 2246
  7. Sony Corp (Japan) 2150
  8. Intel Corp 1653
  9. LG Electronics Inc (Korea) 1490
  10. Hewlett-Packard Development Co L P 1480
  11. Hitachi Ltd (Japan) 1460
  12. Seiko Epson Corp (Japan) 1443
  13. Hon Hai Precision Industry Co Ltd (Taiwan) 1438
  14. Fujitsu Ltd (Japan) 1296
  15. General Electric Co 1225
  16. Ricoh Co Ltd (Japan) 1200
  17. Cisco Technology Inc 1115
  18. Honda Motor Co Ltd (Japan) 1050
  19. Fujifilm Corp (Japan) 1041
  20. Hynix Semiconductor Inc (Japan) 973
  21. Broadcom Corp 958
  22. GM Global Technology Operations Inc 942
  23. Micron Technology Inc 917
  24. Siemens AG (Germany) 873
  25. Xerox Corp 858
  26. Denso Corp (Japan) 853
  27. Texas Instruments Inc 829
  28. Honeywell International Inc 824
  29. Sharp K K (Japan) 818
  30. Toyota Jidosha K K (Japan) 802
  31. Infineon Technologies AG (Germany) 774
  32. Brother Kogyo K K (Germany) 771
  33. Nokia AB Oy (Finland) 760
  34. Silverbrook Research Pty Ltd (Australia) 752
  35. LG Display Co Ltd (Korea) 738
  36. Semiconductor Energy Laboratory Co Ltd (Japan) 734
  37. Mitsubishi Denki K K (Japan) 700
  38. Koninklijke Philips Electronics N V (Netherlands) 685
  39. NEC Corp (Japan) 680
  40. Boeing Co 662
  41. Qualcomm Inc 657
  42. SAP AG (Germany) 649
  43. Oracle America Inc/Sun Microsystems Inc* 646
  44. Bosch, Robert GmbH (Germany) 593
  45. Fuji Xerox Co Ltd (Japan) 574
  46. Apple Inc 563
  47. Du Pont de Nemours, E I & Co 509
  48. Sanyo Electric Co Ltd (Japan) 504
  49. 3M Innovative Properties Co 496
  50. Freescale Semiconductor Inc 494

*Sun Microsystems changed name to Oracle.

Do you think an increase in the amount of patents equates to an increase of productivity? Will that translate into bigger profits at the stock market? Here are the biggest percentage gainers on the 2010's Top 50 Companies Awarded a Patent List:

  1. Apple, +94%
  2. Qualcomm, +84%
  3. NEC, +74%
  4. SAP, +70 %
  5. GM Global Technology, +68%
  6. Hynix Semiconductor, +65%
  7. Silverbrook Research, +58%
  8. 3M Innovative Properties, +53%
  9. Toyota, +50%
  10. Brother, +45%
  11. Hon Hai Precision Industry, +44%
  12. LG Electronics, +40%

In 2010, American-headquartered companies collectively recaptured a lead on the total number of U.S. patent grants (just over 50%) after losing out slightly to foreign companies for the previous two years. In 2009, American firms received less than a majority at 49 percent. Here is a chart showing the ownership percentage number of patents awarded by country.

Market Sectors with the Heaviest New Patent Activity

  • Multiplex Communications (US class 370) 3.3 %
  • Solid-State Devices and Transistors (US class 257) 3.1 %
  • Semiconductors (US class 438) 2.72 %
  • Data Processing and File Management (US class 707) 2 %
  • Computers and Processing Systems (US class 709) 2 %
  • Drug Compositions (US class 514) 2.1 2 %
  • Biotechnology (US classes 435 and 530) 2%

 IFI's full report, which offers comprehensive 2010 patent information on more than 2,000 companies, can be accessed online through IFI's Patent Intelligence & Technology Report, available on its website in a free-trial version.

Five Major Post-recessionary Economic Realities

Guest Blogger: John Manzella

John Manzella is the author of “Grasping Globalization,” a frequent speaker on global business and policy, China, and today's new economic and political realities and the president of Buffalo-based Manzella Trade Communications, a strategic communications and public affairs firm with expertise in global and economic-based issues. This article was recently published as an editorial in the Buffalo News.

Rough Road Ahead

Companies Must Face Economic Realities, Adopt New Business Strategies

Five major post-recessionary economic realities are impacting America and Western New York. Unless our companies adapt, succeeding in the years ahead will be extremely difficult.

No. 1: Declining U.S. Consumption

Known as the “new normal,” the current and upcoming period is distinguished by less consumption and greater personal savings. Although beneficial, companies will undergo difficult transitions.

A drop in consumer spending, which generates the vast majority of American Gross Domestic Product, will negatively impact already declining growth rates, which fell from an annual average of 3.2 percent in the 1990s to 1.8 percent over last decade. In turn, the American retail sector is anticipated to shrink, forcing U.S. manufacturers to increasingly seek faster-growing foreign markets.

According to The Wall Street Journal, of the 30 companies that comprise the Dow Jones Industrial Average, the 10 with the largest share of international sales are expected to boost revenues by an average of 8.3 percent next year; the 10 with the least are anticipated to grow just 1.6 percent.

Corporate global expansion, especially in emerging markets—which are predicted to grow three times faster than developed ones in 2011—will be even more important in the future. On average, exporting firms employ almost twice as many workers, produce twice as much output, pay workers more, provide health insurance and pensions, and have higher productivity levels than non-exporting firms, says Howard Rosen of the Peterson Institute for International Economics, a Washington, D.C. think tank.

No. 2: A More Difficult China

For years, Ford Motor Company’s slogan was “quality is job one.” If China had a slogan, it would be “stability is job one.” The focus on social order, which will continue to trump other policy concerns, is reflected in the Chinese leadership’s level of control and intense focus on job creation.

But even though instability is feared, China has developed a new post-recession confidence for a variety of reasons. First, due to the global economic crisis that began in the United States, the credibility of the Margaret Thatcher-Ronald Reagan model of free market capitalism is questioned. In turn, many Chinese now view their economic model as superior.

Second, rising Chinese and falling U.S. domestic consumption means China may rely less on U.S. markets. Today, the American share of world consumption is 27 percent; China’s is 9 percent. By 2020, both countries’ share is projected to merge to 21 percent, according to Credit Suisse, a leading financial services company.

Third, China has become the largest holder of U.S. treasury securities, a position of enormous influence. Fourth, China recently surpassed Japan to become the world’s second largest market. And fifth, China is quickly advancing up the technology chain. It’s now the world’s largest manufacturer of wind turbines and is becoming a leader in solar panel, and hybrid and all-electric vehicle production.

This confidence is reflected in China’s more assertive focus on its own interests: the development of domestic technologies, the creation of national champions and the protection of certain strategic sectors, says InterChina Consulting, a management consultancy. Plus, it has become more aggressive in its quest to secure limited global energy resources and raw materials to support its soaring growth.

While analysts say the Middle Kingdom is following a typical economic development process, it appears less willing to accommodate the interests of foreign companies and governments, and increasingly is viewed as protectionist. From the Chinese perspective, America is closing its market and has a double standard. For example, stated in Fareed Zakaria’s new book, a Chinese official asks how his country’s support of a Sudanese dictator in exchange for oil is different than America’s support of a “medieval monarchy” in Saudi Arabia for its oil.

Looking ahead, the U.S.-Chinese relationship appears unpredictable, especially since the character of China’s anticipated next leader, Xi Jinping, who is to take office in 2012, is unknown. Nevertheless, in the long term, both economic superpowers recognize the tremendous downside of a cold war and likely will cooperate well into the future.

In the short term, however, tensions probably will rise over several issues, especially China’s undervalued currency, the U.S. trade deficit and intellectual property. In turn, doing business there likely will become increasingly difficult. As a result, U.S. corporations should ensure that their global expansion plans are diversified.

No. 3: Soaring Competition

As the deepest recession since the Great Depression recedes, firms are preparing for an ultra-competitive global business environment comprised of leaner companies. What are their strategies? Many companies are pursuing mergers and acquisitions, and large manufacturers are increasing their dependence on suppliers of components to streamline their operations to increase productivity. Why? As competition rises, manufacturers are forced to specialize to a greater extent in order to retain leadership in their core competencies. To achieve this, they are increasingly focusing on their strengths and outsourcing non-core functions.

This trend benefits smaller manufacturers by encouraging them to acquire new production functions and further integrate themselves into global supply chains. Plus, to boost competitiveness, many are becoming more entrepreneurial and offering customers value that low-cost country suppliers can’t match. This includes “proprietary high-technology products, a willingness to customize, extraordinary service and parts support, flexible production runs and fast turnaround times,” says the National Association of Manufacturers.

Additionally, smaller manufacturers should seek partners in research and development, manufacturing, and packaging, as well as concentrate on product design, quality, branding strategies, and a customer-centric commitment to build loyalty.

No. 4: Skill Shortages

Prior to the recession, the U.S. experienced a skill shortage at several levels. In fact, according to a 2007 survey by Manpower Inc., a leader in the employment services industry, 41 percent of U.S. companies had difficulty filling positions. This mirrored the global average.

But because the U.S. unemployment rate may remain exceptionally high for years and not return to the historically low rate of about 6 percent, the coming skills deficit is overlooked. However, once greater growth resumes, a skilled labor shortage will surface for several reasons.

The Bureau of Labor Statistics predicts labor force growth to slow significantly due to babyboomers retiring and participation rates of women declining. Jacob Kirkegaard, author of The Accelerating Decline in America’s High Skilled Workforce, says for three decades U.S. workforce skills have stagnated. He predicts a “broad and substantial skill shortages” this decade. This presents an enormous problem for U.S. firms, especially since a skill cycle that once ran for three years now lasts less than one year.

To a large degree, the future success of American businesses will depend on their ability to hire and retain talented employees who can quickly deepen their knowledge base and implement increasingly sophisticated technologies. To achieve this, employers will need to create more attractive working conditions, invest more in employee training programs, and work with local universities and community colleges to ensure graduates have the right skills.

No. 5: Rising Global Protectionism

For U.S. companies to successfully expand internationally, it’s essential that policymakers both here and abroad don’t craft protectionist policies. Unfortunately, protectionism is on the rise and is grasping globalizationincreasingly threatening the global economy, says Lawrence Summers, Director of the White House National Economic Council.

This post-recession trend, however, has not kept America’s competitors from forging new free trade agreements, which number over 300 without U.S. participation. This is putting the U.S., with only 11, at a competitive disadvantage.

In the absence of establishing more job-creating trade agreements, U.S. companies are wise to deepen economic integration with Canada and Mexico, our largest foreign buyers. This will promote the spread of technology and further boost investment, innovation, productivity and competitiveness while creating more good-paying jobs here.

Long gone are the days when finished products were shipped across our shared borders destined for each other’s retail shelves. Today, it’s not uncommon for all three countries to jointly produce products for overseas buyers. Hence, the U.S., Canada and Mexico don’t just make goods for each other, together they make goods for the world.

But the speed and efficiency at which North American supply chains operate—a critical factor impacting costs—are being challenged by a degrading U.S. transportation infrastructure that doesn’t only involve international bridges, like Buffalo’s Peace Bridge. A partial solution is to focus on rail, which is considerably more fuel efficient and greener than trucks.

Once normal global growth resumes, the demand for energy resources, especially in emerging markets, will skyrocket along with fuel prices and boost demand for rail. With this understanding, last year Warren Buffet’s company, which owns The Buffalo News, bought Burlington Northern Santa Fe railroad. China, a country investing heavily in rail, also understands this.

Patent Fundamentals (Part 2)

Guest Blogger: Arthur S. Cookfair, Registered Patent Agent

WHAT CAN BE PATENTED

The patent statutes (35 U.S.C. 101) specify four classes of subject matter suitable for the grant of a patent. To be patentable, an invention must be directed to a:

  • process
  • machine
  • manufacture, or
  • composition of matter

Often a close look at the creative efforts that led to one patentable invention, will disclose related inventions that may fall within one or more of the other statutory classes of invention. For example, the invention of a new composition of matter, such as a chemical compound, may also involve the invention of a process for making the compound.

Since the compound is probably intended for a specific use, there may at the same time be patentable inventions directed to the

  1. use of the compound in a process, or
  2. as a material for an article of manufacture.

In addition to falling within one or more of the statutory classes, a patentable invention must meet three requirements, it must be:

Novel

In general this means that the invention must not have been known or used by anyone in the U.S. or published or patented anywhere in the world before being invented by the person applying for a patent. Also, it must not have been published or patented anywhere in the world, or in use or on sale in the U.S. more than one year prior to the date of application for a patent.

Useful

The invention must have some identified use. The use may be very limited (this is often the case in the very early stages of development of an invention), but it must be present.

Non-obvious

When viewed against the prior art (i.e. public knowledge, prior publications, etc.) The invention must be non-obvious to a person of ordinary skill in the field to which the invention pertains. (Obviousness is a very subjective factor and is a common source of disagreement between patent applicants and patent examiners.)

THE PATENT APPLICATIONConstitution

Basic to the philosophy of patents is that, in return for the patent, the inventor must fully disclose the invention. In so doing, the disclosure becomes a part of the technical literature and “promote(s) the progress of...the useful arts" as required by the Constitution (Article I. Section 8).

The full disclosure of the invention insures that the public will have possession of the invention and how to make and use it after the patent expires.

The descriptive portion of the patent application (and of the subsequently issued patent) is called the “specification”. It is a description that is required by statute (35 U.S.C. 112) to be written in sufficient detail to enable those skilled in the art to which it pertains to make and use the invention.

For example, a specification of a patent (or a patent application) on a chemical invention should be sufficiently clear and detailed to enable an ordinary chemist working in the same subject area to make and use the invention.

Patents directed to mechanical inventions will commonly include drawings. Patents directed to chemical inventions will commonly include working examples which may be written in a “cookbook” style to guide other chemists in the practice of the invention. The specification concludes with one or more “claims”. The claims are statements that define the metes and bounds of the invention.

THE PATENTABILITY SEARCH

The patentability of an invention is measured against what others have done before. A patentability search is simply an attempt to find out what has been done before so that the best decision can be made regarding whether or not to file a patent application.

Referred to by various names -- novelty search, pre-examination search (or “pre-ex search”) or simply prior art search, it involves searching the literature to uncover any publications that might affect patentability of the invention. Patentability searches are often limited to searching the patent files. However, a thorough search should also include the non-patent technical literature in the field of the invention.

If the search shows that the invention is not new, or is obvious from the prior art, it may save the time and expense of preparing and filing a patent application. Even if the invention appears patentable over the prior art, the search may uncover references that will serve as a guide in the drafting of a patent application and help to determine the scope of patent protection possible.

PATENT PENDING

When the patent application is filed in the U.S. Patent and Trademark Office, the filing date is recorded and the application is assigned a serial number (sometimes referred to as an application number). The serial number and filing date are important in the identification of the application, and may be useful in relating that application (or the subsequently issued patent) to other related U.S. patents or equivalent foreign patents or applications.

The application is then sent to an Examining Division where it is assigned to a patent examiner who has expertise in the technical field of the invention. The examiner will study the application, make a literature search (i.e., a “prior art” search), and issue an “Office Action” rejecting or allowing the application. In most instances, the first office action will be a rejection, which may be based on formalities or on the Examiner’s opinion that the same invention is shown in the prior art, or obvious from the prior art.

The applicant may then respond by amending the claims to overcome the examiner’s rejection. The application will then be reconsidered and a second office action will be issued. Commonly, the second action will be a “final” action from the examiner, i.e., an allowance or a final rejection.

On receiving a final rejection, the applicant has the right to appeal that rejection to the Patent Office’s own Board of Appeals and Interferences who will consider the arguments and render a written opinion affirming or reversing the examiner’s rejection.

The “patent pending” process, from filing to issue of a patent, requires an average time of approximately eighteen months -- if the process goes smoothly. If there are problems, such as the need to appeal, the process may take considerably longer.

THE PATENT TERM

The term of a U.S. patent begins on the date of issue and ends 20 years from the date on which the application was filed (subject to the payment of maintenance fees). During that time the patentee has the right to exclude others from making, using, or selling the invention in the United States.

Related post:

Patent Fundamentals (Part 1)

Patent Fundamentals (Part 1)

Guest Blogger: Arthur S. Cookfair, Registered Patent Agent

 “A country without a Patent Office and good patent laws is just a crab and can’t travel anyway but sideways and backways.”

Declared Mark Twain (speaking through his character, Sir Boss, in a Connecticut Yankee in King Arthur’s Court). In his homey way, Sir Boss was simply restating the philosophy that guided the framers of the U.S. Constitution when they established the constitutional basis for the U.S. patent system.

 The Congress shall have the power...to Promote the progress of science and useful arts, by securing for limited time to authors and inventors the exclusive
rights to their respective writings and discoveries.

                  Article 1, Section 8, U.S. Constitution.

The Constitution not only provides the authority for the establishment of our patent system, but clearly establishes the purpose: “to promote the progress of [the] useful arts”. Thus, the basic purpose of our patent laws is not simply to protect inventors’ rights to their inventions. It is a broader, societal purpose: to promote the progress of technology. The purpose has been well served. The 235 year history of our nation is interwoven with invention and technological progress.

In 1790, three years after the drafting of the Constitution, Congress passed a bill titled “Act To Promote The Progress of The Useful Arts”. The bill was signed by President Washington on April 10, 1790 and the United States Patent System was established.

In that same year, Samuel Hopkins of Philadelphia received the first patent. His invention was a chemical process for making potash from wood ashes. The patent was signed by Thomas Jefferson (Secretary of State), Edmund Randolf (Attorney General) and President George Washington.

Technological innovation is linked to three-quarters of America’s post-WW II growth rate. Two innovation-linked factors—capital investment and increased efficiency—represent 2.5 percentage points of the 3.4 percent average annual growth rate achieved since the1940’s.

Since that first patent more than 7.8 million U.S. patents have been granted. Our nation has grown from a population of about 4 million to more than 300 million and the granting of patents, like every government activity, has grown correspondingly in quantity and complexity.

The U.S. Patent and Trademark Office (USPTO), a branch of the Department of Commerce, employs nearly 10,000 persons (6,100 are patent examiners) and issues patents at a rate of about 190,000 per year.

patent data

  

There are three types of U.S. Patents:

  1. Design Patents are granted for the protection of any new and original ornamental design for an article of manufacture.
  2. Plant Patents are granted for the invention or discovery of a distinct and new variety of plant.
  3. Utility Patents are granted for any new and useful process, machine, article of manufacture, or composition of matter.

Plant patents and design patents, although commercially important, are special categories of patents and account for a relatively small proportion of the U.S. patents granted. (There have been approximately 9,000 plant patents and somewhat more than 360,000 design patents granted, while more than 7,800,000 utility patents have been granted.)

The utility patent is the type of patent that most people associate with invention and is the type of patent to which the following remarks are directed.

WHAT A PATENT IS

The answer to the question “What is a patent?’ may vary greatly, depending on the person answering the question and that person’s association with patents or the patent system.

There are three basic characteristics commonly attributed to patents:

  1. The contractual characteristic. In viewing the patent as a contract, the focus is on the contractual exchange between two parties the inventor and the government. The inventor gives a full disclosure of the invention and how to make and use it so that when the patent expires, the public will be in possession of the invention. In return, the government gives the inventor the right to exclude others from using his/her invention for a limited period of time.
  2. The property characteristic. Patents have a right of ownership similar to real property that can be transferred in whole or in part. In a manner analogous to real estate, a patent can be sold, or it may be “rented” (licensed) and “rent” can be collected for its use (royalties).
  3. The monopoly characteristic. The “monopoly” associated with patents is limited in time and negative in nature (i.e., exclusionary).

 The U.S. patent law defines the patent grant as

“...a grant to the patentee... of the right to exclude others from making, using or selling the invention throughout the United States...”

In this definition, the word “exclude” is key to an understanding of patents. The patent grant provides the patentee with the right to exclude others from practicing the invention.

WHAT A PATENT IS NOT

A patent is not a license to make, use or sell your invention. It does not give the patentee the right to practice his/her invention.

The most common misconception concerning patents is that a patent gives one a right to practice his/her invention. In fact, it is not uncommon for an inventor to be granted a patent and not have the right to practice the invention.

The patent merely grants the patentee the right to stop or exclude others from practicing the invention. At the same time, the patented invention may be directed to subject matter that falls within the exclusive rights of someone else’s broader patent. In such an instance, the broader patent is said to dominate.

Such a situation commonly occurs when the second patented invention represents an improved version of an earlier issued, more basic patent. The owner of the earlier dominating patent may be free to practice the basic invention (but may not be free to practice the improved version of the second patentee). The second patentee may not be free to practice either invention without permission of the first patentee.

Related post:

Patent Fundamentals (Part 2)

Building Brand Recognition thru Trademark

What Inventors Need to Know...

Tom Demitry is an entrepreneur, an inventor, a salesman, a marketer, a man of ideas and as he will tell you first and foremost a father and a man of God. He is constantly coming up with new ideas and new ways to reinvent himself. His passion and enthusiasm are endless.

I met Tom about 10 years ago when I first became a patent attorney and he was looking for someone to help him file a patent application and get a patent for spiritdomeshis invention, the PaintMat (PDF). Little did he know that he was my first client! It was the beginning of a long term working relationship and friendship.

Although that product never really became a financial success, Tom took the PaintMat idea across the country selling the product he had patented, manufactured and marketed and learned a lot of lessons in the process.

Since then he started a new endeavor selling baseball caps and various styles of hats with a Christian theme and marketing the hats under the registered trademark (.PDF) SpiritDomes®. This time it seems that Tom is on his way.

I thought a blog post about him might give inspiration and guidance to other inventors and entrepreneurs who are starting out. Here are a couple questions and answers from our interview:

How did you establish a national brand and hat line in this difficult economic climate?

I have 30 years experience in the head-wear business and I received my vision in church on one fateful Sunday. I was thinking of ways I could spread the word of God and had an awesome idea that was very unique in the industry. 

The idea is to imprint a quote from scripture on the under-visor of my product and design the artwork for a hat around the particular quote from the bible; a "SpiritDome".

No one in the world was doing this so I wanted to establish my own unique niche. Being different than everyone else is what helped the brand really take off. The key is to be different and it is what our target consumer, the youth of today want to be- unique and different!

What have you done to protect your idea?

I thought the best way to protect my brand was by filing for a registered trademark. I filed a trademark application with the United States Patent and Trademark Office (USPTO) through KlossLaw and SpiritDomes was a registered trademark within one year of filing. I believe a registered trademark is the best protection available because no one can ever use it in business. It's also versatile in that I can create product line extensions with the brand and the new products would carry the same protection.

What else do you do to build brand recognition?

I've always felt that if a brand was started at the grassroots level and done consistently over a long period of time, that would be the greatest protection of all. Next, all consistent marketing done to promote building the brand such as signage, promo cards, websites, Twitter, facebook, Linkedin, labels, etc. helps to shape the brand properly as well. What's great about the times we live in is that network marketing to get the word out is affordable and effective. The internet is amazing!

Another thing we're doing is partnering with producers, directors, musicians, speakers, etc. to spread the word about our brand.  The value of word of mouth really adds up. We also label our products with SpiritDomes.com to promote our website so that the public knows of and has a direct link to us. The web page is the easiest way to learn more about what we do.

What is the value of Trademark and brand recognition?

Building a profitable company is what we all try to do. The company builds equity in assets like inventory, real property and cash which have a value or net worth. The beautiful thing about brand building is that the brand name itself has what you call Brand Equity. The brand and goodwill in the company itself has value that can be sold for profit depending how famous it becomes.  Just like real-estate appreciates in value when people recognize the great location, the brand gains in value as more people know and recognize the name and associate it with a company that provides a quality product.

"A patent is limited by time but a trademark can last forever if the brand is built consistently and properly over time."

 

"Burger King" Steals McDonald's McMuffin Recipe

How do you protect your intellectual property? What is intellectual property? Is a special sandwich that you make better than anybody else intellectual property? Imagine you are the owner of a new restaurant who has created a new edible masterpiece. And subsequently, to your surprise, you discover that a copycat sandwich is being made across the street, without your permission.What do you do? What are your remedies? Egg mcmuffin

In a new television commercial, Burger King's mascot breaks into the headquarters of McDonald's and steals the recipe to the Egg McMuffin.

I don't think they can register the work with the U.S. Copyright Office and obtain a certificate of copyright. Can they file an application for patent registration of the sandwich structure?

Remember for something to be patentable subject matter it must be a new, useful and a non-obvious improvement over something that's already out there. You don't see too many patents on food recipes and sandwiches. Maybe a design patent (.PDF), but I doubt that will give them much protection.

It may be argued that the business conduct of Burger King in this instance is actionable under federal unfair competition provision of the Lanham Act. While the Lanham Act, in general, focuses primarily on obtaining, maintaining, and enforcing trademark and service mark rights, Section 43(a), allows for suits for false designation of origin. But I don't think there is a false designation, Burger King comes right out and says we're making our own version of this old sandwich.

And it's not a copy of a trade secret (like the McDonald's special sauce) so I don't think there's any grounds for McDonald's to bring a suit. There is probably not much McDonald's can do to stop Burger King from making their version of the egg McMuffin.

 

 

What is protectable is the brand name or the trademark. What Burger King is tacitly saying in this clever breakfast commercial is that, McDonald's doesn't own the rights to eggs, sausage, cheese or English muffins. McDonald's owns the trademark "Egg McMuffin(.PDF)."

John DeVore, recently wrote a Special article to CNN entitled "Big burger boys burgle breakfast." about the commercial showing how Burger King's new BK Breakfast Muffin Sandwich's is just a copy of the classic Sausage McMuffin.

But are McDonald's executives upset with this campaign? Have lawyers been rallied and accusatory calls been made?"We haven't received any direct feedback from competitors," said Brian Gries, Burger King's vice president of marketing impact. Gries further defends his company's choice to be up-front about the similarities between the BK Breakfast Muffin and the McMuffin, saying, "We are not above taking a product that we know customers like and delivering it to our guests at a great price."

I love the guile of Burger King making a full admission in the commercial that they are copying this sandwich. I would love to see the internal memos from the lawyers arguing about whether or not they should allow this commercial to air. It is not like McDonald's has not been involved in a number of lawsuits involving trademark issues in the course of its history. But I think if McDonald's brings a lawsuit in this instance it would fuel of a lot of bad press and they would have little chance of success.

What Executives Make of Innovation

Tweet of the week

Thanks to @StrongerAmerica for tweeting this week about the importance of making innovation a top priority in corporate America.

James Andrew, senior partner and head of the global innovation practice at Boston Consulting Group, authors this article for Business Week.

The difference between a company whose CEO and leadership team have an "all-in" mentality regarding innovation, and one whose leadership supports innovation merely at an abstract level, is unmistakable—and so is the impact on the company's culture and results.

stronger America

"Patent Reform Act of 2010" and False Marking Rule Change

The latest edition of the proposed patent reform legislation was announced by the leaders of the Senate Judiciary Committee on legislation for patent reform. The act is now called the "Patent Reform Act of 2010" and is memorialized in the form of the Manager's Amendment (“Amendment to S. 515”).Senate Judiciary Committee

When will this bill become law? This is a good question because it is a follow-up to the Patent Reform Act of 2009, the Patent Reform Act of 2008, the Patent Reform Act of 2007, the Patent Reform Act of 2006 etc. etc. etc.

Among the provisions of this proposed legislation is a modification of the false marking statute. Presently, 35 U.S.C. 292(b) provides that any private citizen can bring a qui tam action on the government’s behalf against an entity that falsely marks unpatented products. However the proposed legislation amends 292(b) to read as follows:

"A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury."

The Senate bill, if enacted, would have retroactive effect even for still-pending but earlier-filed actions as it states the amendment would "apply to all cases, without exception, pending on or after the date of the enactment of this Act."

Is this another way to protect big business at the cost of the little guy? Or is it just a way stop the onslaught of potential litigation? A list of 75 false marking lawsuits filed in the last two months against over 100 companies can be found on the Gray on Claims law blog. Many of these lawsuits have been filed by qui tam plaintiffs who are individuals or entities specifically formed to litigate such false marking suits and presumably have no claim of "competitive injury." Will they have to find an injured party?

If the patent reform amendment becomes law, qui tam plaintiffs who have filed or intend to file false marking suits for expired patent numbers will have another element to prove to win the case. How will the court define a "person who has suffered a competitive injury?"

Will something that a person would have done if not for the false marking be admissible?

  1. Can a plaintiff claim it is a potential competitor and was dissuaded from entering the same market because of the false marking?
  2. Can a plaintiff claim it suffered injury because it was deterred from continued scientific research to avoid possible infringement?
  3. Can a plaintiff  argue that it suffered a competitive injury because it invested money to analyze patent validity or enforceability?

Related posts:

Patent Marking Police" Looking for the Big Jackpot

"Patent Trolls" Search for Falsely Marked Products

Continue Reading...

"Patent Marking Police" Looking for the Big Jackpot

Since my recent blog post entitled "Patent Trolls" Search for Falsely Marked Products the ad hoc “patent marking police” have filed at least 17 lawsuits alleging false marking against 33 different companies. This number is an approximation because False Marking suits are not consistently categorized within the federal court system. To see a list of False Marking suits filed in the last 2 months, go to Justin Gray’s blog, Gray on Claims.Patent Police

The law allows any private citizen to bring a qui tam action on the government’s behalf against an entity that falsely marks unpatented products. A court can levy a fine for up to $500 for every product that is falsely marked. The final award is split evenly between the government and the person that brought suit.

What will happen if one person wins a huge damages award in one of these cases? How many more would be “Patent Police” will come out of the woodwork? In a blog post on IPWATCHDOG.com you can read A Fanciful False Marking Fiction By a Cottage Industrialist where the author daydreams about how “I just made 42 bajillion dollars today. And it’s not even 9 am.”

How easy is it to file a Patent False Marking complaint? Take a look at this complaint (PDF). Maybe you can be the next bajillionaire.

The two elements of a 35 U.S.C. § 292 false marking claim are:

  1. marking an unpatented article; and
  2. intent to deceive the public.

It will be interesting to see if the courts will find the necessary intent or mens rea to find false marking and what the courts will do in the “exercise of their discretion” as to the size of damage awards. Some argue that if you are marking a product with a patent number you should know when it expires and what it covers. Intent to deceive should be easy to prove. (See comment #7 by "Noise above Law"on IPWATCHDOG's post)

Now what about the damages award? The Federal Circuit held in the case of Forest Group, Inc. v. Bon Tool Co., No. 2009-1044, that the plain language of the false patent marking statute, requires courts to impose penalties for false patent marking on a “per article” basis.

The §292 statute provides a fine of “not more than $500 for every such offense. This does not mean that a court must fine those guilty of false marking $500 per article marked, even though it can. The statute provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities.

This pennymeans a court has the discretion to determine that a fraction of a penny per article is a proper penalty. The court's exercise of discretion is a balance between the chilling effect of false marking and imposing a mind boggling 42 bajillion dollars to be shared between the government and a brilliant member of the “patent marking police."

What is the chilling effect of a patent whose number has been falsely marked upon a product?

  • Potential competitors may be dissuaded from entering the same market
  • It may deter scientific research when an inventor decides to forego continued research to avoid possible infringement
  • Can be the reason for unnecessary investment to design around
  • Increases cost incurred to analyze patent validity or enforceability

armored carI think the chilling effect of False Marking may be a serious consideration but I don’t think courts are going to start printing money. I have learned that what seems too good to be true, usually is. So don’t buy an armored truck to carry away your billions of dollars just yet.

Before taking my first law school exam Joe Walsh, a fellow law student, said to me that his attorney father gave him this advice: "If you don’t know what the answer to a question is, make pretend you are the judge and come up with a fair resolution."

Okay, you are the judge, what do you think is fair?

Related posts:

"Patent Trolls" Search for Falsely Marked Products

"Patent Reform Act of 2010" and False Marking Rule Change

Apple is the number one target for NPEs in the US

Tweet of the week

Thanks to @ipgossip for tweeting this week about Apple being the number one target for NPEs in the US. Joff Wild of IAM Magazine commented that,

"Apple must have spent well over $200 million on dealing with NPEs over the last few years and I imagine a few others can match that as well. No wonder so many companies hate NPEs and call them trolls."

According to a statement(.PDF) given by Teresa Stanek Rea,  then President of the American Intellectual Property Law Association, to The Subcommittee on Courts and Competition Policy Committee on the Judiciary for the United States House Of Representatives

AIPLA conducts a nationwide survey of our members every two years on the cost of patent litigation. In 2007, we reported that the median cost of a patent infringement suit was $1,600,000, if $1 million to $25 million was at risk. The cost rises significantly as the stakes increase. The median average cost of a patent infringement case involving more than $25 million dollars was about $5,500,000.

The Patent Troll Problem

What a corporation needs to know about patent law...

I'm sorry if I insult anybody by using the derogatory term "Patent Troll"  for a non-practicing entity (NPE) or patent dealer that claims patent rights to technology and demands a licensing payment for the use of the technology. But if the name fits...

I'm not saying that simply suing to protect your patent rights makes you a Patent Troll. But it's clear that there is an industry where patents are obtained, bought and sold for the sole purpose of initiating lawsuits.

"As of January 1, 2010, PatentFreedom has identified and profiled over 315 distinct NPEs (a number which continues to increase). Since 1985, these NPEs have been involved in litigation with nearly 4,500 different operating companies in over 3,100 distinct actions. And the pace of activity is clearly increasing. Nearly 75% of the suits between these NPEs and operating companies were filed since 2003."

What is a patroll signtent troll?  When you hear the word troll you visualize the image of a troll underneath the bridge unjustly charging an unwary passerby a duty to cross the bridge. Or maybe you visualize a fisherman trolling for fish. Let's throw a hook out there (a lawsuit) and see what we can get.

After reading through various articles on the internet on this subject we find both sides of the argument. One side of the argument is that non- practicing entities are Patent Trolls that are eroding the economy, see article by Science Progress:

The patent system was created by the nation’s founding fathers not so much to protect individual ownership rights but to foster investment and technological advancement. Some individuals and companies, however, have opted to use the system for a different purpose: They acquire the rights to certain inventions that are crucial for the proper operation of other, larger inventions, and then essentially hold that intellectual property for ransom to be paid by those who need it. These so-called trolls typically do not make any product and, rather than inspiring innovation, tend to have a chilling effect. For a full discussion of the troll issue ...see Daniel P. McCurdy’s article, “Patent Trolls Erode the Foundation of the U.S. Patent System.”

The other side of the argument is that "patent holders" are just enforcing their constitutional rights. (see "Patent Troll:" A Self-Serving Label that Should be Abandoned)

 "A 'patent troll' is usually defined as someone who enforces a patent yet does not practice the invention protected by that patent. ...Enablers of innovation have consistently been demonized throughout recent literature and characterized as “trolls,” who systematically extort payment from unknowing victims.  Indeed, the cause of many of the lawsuits that 'patent troll' critics abhor is not caused by trolls at all.  To the contrary, the cause of patent infringement lawsuits and other enforcement activity is that others are using patented technology without authorization.  This fact can be and has consistently been addressed in the system as it exists today.  Whether coined “patent trolls” or not, intellectual property companies, small companies, non-manufacturing companies, and other “enforcers” ensure that the system operates as the Constitution directed."

There is public outcry in the patent community that there's a need for patent reform. And there's many suggestions on how to reform the patent system. Some people think that the examiners are are inefficient and allow patent claims that are drawn too broadly. With regard to the"'patent troll" issue it is argued that broad patent claims should be eliminated at the examination stage, and examiners should be better trained at stopping these types of patents from being issued.

Robert C. Pozen of the NY Times, says patent cases end up in court because " The quality of American patents has been deteriorating for years; they are increasingly issued for products and processes that are not truly innovative"  and that patent rules should "...[allow] experts in the field to submit explanatory or critical comments on patent applications." This will help inexperienced examiners make better decisions and improve the quality of allowed patents.

Patent experts argue better patents will stop patent trolls. But others such as Timo Fisher and Joachim Henkel's aren't convinced. See paper, titled "Patent Trolls on Markets for Technology - An Empirical Analysis of Trolls' Patent Acquisition":One Reason Why Improving Patent Quality Won't Solve the "Troll Problem"

"Surprisingly, and contrary to common belief, we find that troll patents are of significantly higher quality than those in the control group. This result implies that elevating minimum patent quality will not put an end to the patent troll business"

I'm not sure if patent quality is the problem. I think lawsuits are started by non-practicing entities regardless whether or not there is a strong case that a product or process infringes on the subject moneypatent. Suits are brought knowing that the party being sued would rather settle even if they know it can be proved at trial that there is no infringement. So there's money to be made in these lawsuits.

In addition, non- practicing entities form corporations around individual patents or groups of patents to limit their liability and farm these cases out to attorneys who specialize in patent infringement cases on a contingency fee basis. The attorneys know that they will be supplied with an endless steam of infringement cases based on multiple patents, so it's worth their while to take a case and put it into suit regardless of the strength of the case. It is not uncommon that these cases are put into suit based on patents that arguably do not cover the product or process that is alleged to be the basis of infringement.

To say that the patent doesn't apply at all may be a stretch, however if it's in the ballpark and there can be an argument made that there is infringement and there is a deep pocket, then a lawsuit is filed. The pressure is on corporate America to either pay up or fight it out in the courts. And everybody knows how expensive a patent litigation is. As a result non-practicing entities get the unwanted moniker "patent troll."

There is Rule 11 of the Federal Rules of Civil Procedure that is supposed to stop frivolous lawsuits. However it appears that once a lawsuit is filed it is very difficult to prove that the lawyer or the entity filed it knowing there was no meritorious case. You don't often see Rule 11 enforced in these cases.

Often the patent troll files a lawsuit based on a patent where there a modicum of an argument that there is an infringement. In these case the biggest concern of the party being sued is not whether they are going to lose the lawsuit, but whether or not it will cost them a fortune to prove they're not infringing. Patent trolls, and particularly those who regularly make infringement allegations know that the enormous cost of patent litigation is a major deterrent against fighting the case through trail and that they will likely receive settlement offers.circle the wagons

So it's not a bad financial strategy for a Patent Troll to sue a patent infringement case whether or not there is a strong likelihood that the product actually infringes. In fact, patent trolls have been known to structure settlement offers around anticipated litigation costs, rather than around the alleged infringer’s sales figures. 

I wouldn't want to defame any non-practicing entities or their attorney's by saying that they know when they initiate a lawsuit that the patent which is the basis of the lawsuit really doesn't cover the product or process of the defendant corporation. Call me "an attorney trying to circle the defense wagons, using the common rallying cry of “patent trolls,” but does anyone really believe that out of thousands of cases filed by Patent Trolls that Rule 11 doesn't apply to any of them?

I guess each law suit has to be evaluated on a case-by-case basis and we shouldn't stereotype any group or demonize their chosen path to make a living. My experience in life is that the truth often lies someplace in the middle. But I also believe that where there is smoke there is fire.

"Patent Trolls" Search for Falsely Marked Products

What a corporation should know about intellectual property law...

It is now in vogue for the new breed of "patent troll" to sue corporations in the US Federal Courts on behalf of the government for falsely marking unpatented products with patent registration numbers.

Corporations need to be able to identify and protect their intellectual property. However, corporate "Intellectual Property Management" and exploitation isn't always that simple. A corporate "IP Committee" should have a good understanding of the law concerning patent marking. Falsely marking a product can expose a corporation to substantial damage claims under 35 U.S.C. § 292 and not marking a patented product at all, may limit the ability of a patent holder to recover damages for infringement under 35 U.S.C. § 287(a).

Section 292 of the Patent Act prohibits:

  • Counterfeit marking: marking a product with a patent number without the patent owner’s permission
  • False patent marking: marking a product with a patent number on an unpatented article, or the use of “patent applied for” or “patent pending” when no patent application is actually pending for the product

The statute allows any private citizen to bring a qui tam action on the government’s behalf against an entity that falsely marks unpatented products. A court can levy a fine for up to $500 for every product that is falsely marked. The final award is split evenly between the government and the plaintiff that brought suit.

The Court of Appeals Two-step Test (Clontech Laboratories, Inc. v. Invitrogen Corp.)

To determine whether the false patent marking statute has been violated evidence must show:

  1. That patent’s claims do not cover the falsely marked product; and
  2. The mismarking was done with intent to deceive the public.


Over the last few years, the false marking statute has gained popularity as private patent lawyers have brought false marking claims against corporations who have marked products with expired patent numbers. Patent counsel should advise their clients to examine their patent marking practices because the new patent marking trolls are searching for falsely marked products as a basis to file a lawsuit.crayola crayons

Plaintiffs are seeking literally billions of dollars in penalties. How many cups does the Solo Cup Company manufacture and sell? What about the Crayola Crayon Company? How much would the fine be, if a $500 fine was levied for every cup or box of crayons sold by these companies?

In 2007 a Washington patent attorney brought suit against Solo Cup Co. In Pequignot v. Solo Cup Co., 540 F. Supp. 2d 649 (E.D. Va. 2008) Pequignot alleged that Solo Cup was manufacturing and selling millions of cups, lids, plates, bowls, and utensils with expired patent numbers.

Recently HEATHCOTE HOLDINGS CORP, INC filed a complaint (.PDF) claiming false patent marking against CRAYOLA LLC in the United States District Court in the Northern District of Illinois. Amount Demanded:$9,999,000.00

On December 28, 2009, the Federal Circuit held in the case of Forest Group, Inc. v. Bon Tool Co., No. 2009-1044, that the plain language of the false patent marking statute, requires courts to impose penalties for false patent marking on a “per article” basis.

Prior to this Federal Circuit decision, many district courts had interpreted the false marking statute to impose a single fine or penalty for each “decision” to falsely mark products, irrespective of the number of articles manufactured. As a result, now each falsely marked item may represent a $500 fine.

The court did rule however that "in the case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty" and that district courts have the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for products produced in large quantities.

Bottom Line: Properly Mark Patented Products

  1. Mark patented products with the proper patent registration number so as to give notice and preserve infringement damages.
  2. Be aware of when the patent registration expires and stop marking products at the end of the patent term.
  3. Don't mark products with patent numbers unless the patent claims cover the product.

Related posts:

"Patent Marking Police" Looking for the Big Jackpot

"Patent Reform Act of 2010" and False Marking Rule Change