Imports and Infringement

 This, of course, is my Res-Ipsa-nator, a robot from the year 20XX sent back through time for the purposes of...(I forgot where I was going with this.)

Safe to say, when this robot appears, I generally have a comment about "Misinformation", or how the non-patent world leads the pliable minds of inventors down dangerous primrose paths. A veritable rogues gallery of Free-software, econo-bloggers and general malcontents pour confusing information onto the sticky fly mat of the internet, and the Ipsanator cleans it up.

While I am not overly concerned with correcting the unformed, it becomes a problem when I have to sooth a client's nerves based on some reading of fluff on the internet. This usually happens in a huff of righteous indignation that I, or a colleague,  had somehow mislead them into spending their precious capital (and it is precious, and shouldn't be spent without reason) on pointless IP protection.

A while back, an inventor came to me with a rather interesting mechanical device. We discussed the pros and cons on manufacture, patentiabiltiy, and the like, and settled on a very conservative patent application that directed itself to the object (and not the underlying abstract methods - Thank you very much Mayo!).

Months go by and the client contacts me in a panic. "A friend told me that big companies can steal your idea, patent it in another country, and then sell it in the US. If so, why or why did I get a patent in the first place!!!" (the words "charlatan" were not uttered, but the subtext was there.)

A bit of hand-holding was in order.

This is not true. Not even close to being true. Not only is it not close to being true, it is light-years from being true.  Now, is it true that in the past, Charles Dickens once remarked that america was "A Pirate Nation" based on our propensity to pirate his works? Yes. Does that have any bearing on this topic, No.

First. The Paris Convention (PCT) provides you with 12 months to get in to WIPO and then another 30/32 months to get into each local jurisdiction. So, you are always going to have the earlier filing date anywhere worth filing.  So Evil Corp is never going to be able to "steal your patent" and "patent your patent".

Second, even if you don't take advantage of the PCT and just file in the U.S., nearly any other jurisdiction has a first to file system. You have already filed in the U.S., so you are the first to file anywhere. Your filing becomes anticipatory prior art to any subsequent stolen filing.

Third - assume that Evil Corp steals your patent and secretly manufactures the device in Moldavia (cause Moldavia sounds like a country full of secret factories). You can stop them at the port or border with an ITC proceeding. I am not going to go into depth on ITC, but smaller inventors would be well served to learn more about the alternative options that the ITC gives to shutting down importation of infringing products.

The most important lesson here, is that "Some guy on the internet" is never the best resource. This goes for me, I am "some guy" on the internet. However, I am "some guy" in real life too.

Have questions - drop a line.

Jordan Garner

The Case of the Missing Flying Machine...Patent

60 Minutes and the Atlantic , recently reported that the original copy of the patent awarded to the Wright Bros( for a "Flying Machine" ) is currently missing. As you can see below, the current format of patents has changed very little in the 106 years since the Wright Bros received their notice of allowance. 

In fact,  many of the issues surrounding the Wright Patent are relevant to conversations we are still having today.  

It took the patent office nearly 3 years to grant a patent on something so innovative as a FLYING MACHINE. While the concept of actual controlled flight was not a physical impossibility in 1903, it was clearly considered an engineering problem of supreme difficulty. Everyone who has seen the sepia-toned films of various failed flying machines ( here) could reasonably say that the below patent was "obvious". Yet, the patent office did believe that there was prior art that diminished the novelty and non-obviousness.  Any patent attorney or inventor can relate to the frustration of having the patent office take 3 years to issue a patent on truly innovative technology. 

Of greater importance to current state of Patent Opinion and Policy, is the fact that as soon as the Wright Bros got their patent, they engaged in a series of brutal and drawn out patent litigations against their competitors.  At the time, opponents of the Wright Bros claimed that enforcement of the patent monopoly was a hindrance to the development of aerial technology.  Furthermore, distinguished inventors such as Alexander Graham Bell (himself an avid patent-er) called for the reform of the patent system to limit the "abuse" of men like the Wrights. 

Sound familiar. 

Anti-software advocates like to stress their opposition to only a certain class of patents, arguing that mechanical and pharmaceutics don't need patent reform. They argue that the actions of software companies and non-practicing entities are somehow new. That the system was never designed to handle these sorts of "abuses." That technology can not progress unless they are unshackled from the rules. 

 However, the Wright Patent Wars serves as a lesson. In spite of all the dread supposedly to come to american aeronautical progress, American companies still lead the world in aviation. Additionally, the chief target of Wright's Patent wrath, the aviation company founded by Glen Curtis, is still in operation.  The Wrights and their company "The Wright Company", after the expiration of their monopolies, were passed by nimbler, more innovative companies. Eventually, Wright Company  merged,  2 decades after the Wright Patent Wars - into a  new company with their old rival Curtis. Together they formed a small aeronautics company. The Curtis-Wright Company doesn't dominate the international aerospace market. 

The larger point is that the world moved on. The patents, documented for all time (although missing) serve as a official record of innovation at a glance, but only at a glance. Patents or not - innovation constantly moves on. 

In honor of Comic-con - a rebuttal to the End of IP

This week is Comic-con in New York.

Comic-con is awesome.

Comic-con could not be possible in a nation without a strong commitment to intellectual property protection. While people may differ on the benefits conferred by the Sonny Bono amendment (AKA the Mickey Mouse Protection Act), no one honestly argues that the characters in their favorite comics, video games and movies, should be free for anyone to pass off as their own.

That being said, the Anti-IP crowd (which is really an anti-software patent crowd), has yet to make the empirical case that nations without IP protection produce more intellectual property than nations that have weak or strong IP regimes. The Manga output of, say South Korea vs China, speaks to this.  The reasons are varied, and the subject of individual posts.

However, in honor of Comic-con, I present the following (terrible) Comic which demonstrates some of the problems that Anti-IP advocates face.

(all "YEA!" should be read as though spoken by the talking food of "Yo Gabba Gabba".)

jgarner@leasonellis.com

Columbus Day Inventions - App Inspiration

In my continuing quest to prove that Patent law is not simply a mechanism for destroying the aspirations of having a "Social Network" style movie made about your life, I decided to put together a bunch of Columbus Day themed Patents.

While you can look at these patents and see the clanking mechanical devices of a century past, I prefer to see them as a rich vein of design and functionality that can be easily ported to a App for fun and profit. 

Humm...maybe I should patent turning mechanical patents into Software Patents... 

If you get tired of looking at awesome patents from the last century, a magical time of steam and whatnot, feel free to read the 8 page take down of the IP profession in today's New York Times.

Each of these patents would work well as an App or a graphic novel, cum spoken word performance piece. Either way, the prior art is well documented and at least 100 years old.  Just because some jerk calls you up and threatens you with infringement based on a flimsy patent does not mean that all patents were / are bad.

Columbus Day Patents: 

(All of these devices work better in their original, century old form, than Apple Maps)

For All you Brooklyn-ites, Fixie rider, Kickstarting metal workers out there, I present Brooklyn Native Raymond Finkelson's level attachment compass for bicycles. 

Designed to let bicyclists of the early 20th century know their direction, and grade, this bit of vintage Brooklyn Tech can easily be made and adapted to the wider, flashier Iphone 5. Christopher Columbus would have loved to have a bicycle and a Fixie at that. Only the truest of hipsters could rock pants that skinny. 

Above - A instrument for taking Nautical Observations. US Patent 11,475 (found here). Lots of Iphone 5 Potential here. A bit of graphical and computing horsepower lets you tilt a 3d representation of the Earth for all your nautical observational needs. Columbus would have given several shinny beads to the natives who hooked him up with this sweet app, and small pox. 

Above - Graphic Solar Instrument. Remake this into a Grid-based Helvetian typeface, you are set. Patent found here. Nothing impresses the locals like telling them exactly when Sun will be eaten by Mountain. Also it is helpful when you need to know when happy hour starts.   

Jgarner@leasonellis.com 

www.leasonellis.com 

Off hiatus, and the End Of IP

I have been on hiatus from Claimed Elements for a little while (which is official-ese for "I had other more pressing things to do").  However, much like the leaves change, so does my desire to blog.

A lot of this change in desire has come from some recent developments in the "End all IP" Troika of economists, open source software mavens, and Pacific Rim Software Pirates.

Recently, a study produced by the St. Louis Fed ( Paper can be found here) makes a strenuous call for the abolition of patents.  In brief, the authors conclude that there is no benefit to innovation by adopting a patent system. Let me state 1) that the St. Louis Fed has better things to do than opine on Patent Law. 2) They really should have better things to do than opine on Patent Law (Like calling for an increase in marginal lending practices so as to allow people easier debt servicing (oh, you don't like it when Patent Lawyers go all "economist speak", well turnabout is fair play.")

Obviously, I disagree, and not just because I like getting a paycheck.  There is a major fallacy lurking at the heart of the study.

Comparison.

Now, I grant you that Patent law has gotten a bit out of hand (something I call the Locust Syndrome, but more on that another time), but there is absolutely no way to determine if a system with or without patents produces more innovation.

Why. Because we don't have a second, alternative reality Earth to use as a control.  The authors focus (as most anti-IP people do) on Software Patents.  The problem is that they can not point to another first world, industrialized nation with the infrastructure and educational system necessary to produce sophisticated software code. We can't say that in 1520, the rate of innovation was better or worse than the rate of innovation today. The circumstances of innovation and progress are the end result of  historical accidents, low hanging fruit, and economic factors.

To paraphrase Neal Stephenson "in the early 21st century, America only did three things well, make movies, make music and write the best code."

The author's have not provided an example of a country that is producing superior, or more innovative software compared to what is developed by companies taking advantage of the U.S. Patent system.  The reason is obvious, in an fully integrated world, it is impossible to tell what effect the Patent system has on developments country A vs country B. Without a control group, we are merely grabbing at strawmen to explain why our version of reality is the right one.

So lets all take off our sandwich boards and calm down.

Jordan Garner (Jgarner@leasonellis.com)
www.leasonellis.com

Res Ipsa Loquiterminator

Res Ipsa Loquiterminator:
         
         French for "I have been replaced by a computer" is a phrase that you are going to hear more and more in law firms. Not really, since I can't imagine anyone at a law firm using such a sweet portmanteau. (Credit given to my good friend M.Cabrera Esq. for coining the term)


Regardless, what you will hear is younger associates griping about how they are unable to make their hours in light of the rapid adoption of Predictive Coding in document production.  If you want to know why computers are going to start eating your lunch, you can check here.  


For those with an aversion to clicking on the Wall Street Journal, it basically summarizes two recent civil cases where predictive coding (that is, computer sorting of documents for discovery based on relevancy of content) were allowed.  Importantly, these permissions were given over the objection of opposing counsel. So the gates are wide open to our new robot masters. 


Super, what does this mean for budding IP attorneys?  Well, document discovery in IP litigation (especially in the pharma area ) was/is pointlessly time consuming. While it will probably still be necessary for some IP specialists (read: doc reviewers with a scientific background) to review large reams of data, it is likely that the time of the 4 and 5 room discovery teams is coming to a close. This means even less demand for specific practice area qualifications (the Maw grinds slow and exceedingly fine) .  While this won't happen over night, it most likely will happen in the next few years. 


I am reminded of a document review in which I participated, where most of my time was spent sifting through bills of sales looking to see if the technology in question was "on sale" prior to the 1 year date.  Most of the documents I was looking at were internal order forms.  I quickly realized these were pointless, even though they had some of the "core" keywords plastered all over them.  


I imagine that predictive coding will allow case managers to make broad sweeps of this type of relevant (but not really relevant) data prior to bumping things up a step in the food chain.


It occurs to me that another place where Cybercoders (wouldn't that make a great Kids TV show...no) could come in handy is the new Inter-Partes Procedures instituted in the AIA. Limited discovery is now allowed.  Normally, this "limited" discovery would be limited by the cost and time involved.  However, with the use of Cybercoders, you could access huge amounts of data for minimal cost. I would wager that more and more Re-Exams are going to employ predictive coding as part of there opening gambits.  


Where I think human IP-based doc coders will still have the edge is searching for "best mode".  It is incredibly difficult for a computer to determine if a lab notebook or result table is disclosing the best mode for carrying out the disclosure.  Furthermore, IP coders are probably still going to be tasked with searching for deficiencies of enablement, or documents that purport to show that the invention failed to clear a statutory bar.  


Unfortunately for Human IP Coders,  Congress Passed the AIA with a specific section that minimizes the importance of both "Best Mode" and "Enabling Disclosures" in invalidating a patent.  Never fear, when tireless thinking machines drop the ball, Congress can recover that fumble and spike it on your career.  

Success Against Scammers

In a previous post , I discussed how to not get taken in by Trademark scammers. Well, I am happy to announce that Leason Ellis has taken the fight to the con-men and put at least one of them out of business.  In the consent decree, USA Trademark Enterprises ( a notorious scammer that preyed upon unsuspecting trademark applicants) agreed that:

Defendants warrant and represent that they made substantial sales and shipments of the Catalogue in the United States, including New York State, and have made good faith disclosure to Leason Ellis of financial records concerning such sales;

Defendants warrant and represent that, within fourteen (14) days of the Settlement Agreement separately entered into between Plaintiff and Defendants (the “Settlement Agreement”), they shall permanently discontinue marketing, selling, offering for sale, and distributing the Catalogue in the United States per the terms of the Settlement Agreement;

Defendants warrant and represent that, within fourteen (14) days of the Settlement Agreement, they shall never again conduct business in the United States in the field of trademarks or, more generally, in the field of intellectual property; and

USA Trademarks and its owners, officers, stockholders, employees, agents, servants, affiliates, subsidiaries, attorneys, and all other persons in active concert and participation with it, including Timea Csikos and Andras Nemeth, shall abide by the terms of this Consent Judgment.

I am quite proud of the work my firm has done in putting these scam artists out of business. Congratulations are in order.  You can read more about it here.

Patenting Deliciousness

This is not a picture of patented deliciousness. Original photographer found here. 

The Internet is reporting that Oklahoma State University (Go Cowboys!) is attempting to patent a "cut" of steak.  While general reporting has focused on the fact that this new improvement in the Steak-y Arts will be called "The Vegas Strip" ( which does sound delicious) no one is focusing on the fact that the Inventors pretty much opened themselves up to a Sec. 103 Rejection based on the interview.  

For those who don't know (and why you would be reading a patent blog without knowing about patents...) merely filing a patent on something is no guarantee that you will actually get a patent on that thing. A lot of  digital ink has been used to decry the patent system as innovation restricting.  However, these garment rending positions are usually taken by people who have less than a common familiarity with the workings of the patent system. Once you apply for a patent, that application (helpfully called a "Patent Application") is examined by a Patent Examiner, and is not automatically turned into a patent.  

It is that Patent Examiner's job to determine if your patent application meets certain legal and procedural hurdles.  In this case, hopefully the patent application for Vegas Strip is given to a Patent Examiner who is an expert in Tastiness (I have a PhD in Tastiness from Finger-licking University, but I don't like to brag). According to OSU, the patent is not for the steak itself, but for the series of cuts used to make the steak.  For those of you aware, OSU just gave away that the patent is to a "Method" and not a "thing".  So the Tasty Expert Patent Examiner would look at this method of steak cutting a see if it has been done before, or if it is obvious (Sec. 103) in light of previous steak cuttings methods.  

The spokesperson for OSU's Steak Patenting Initiative (I just make up the initiative part), when asked how the method works said: 

"If i told you, it would be a hint to where this muscle is," he said. "A knowledgeable person would say, 'Aha!'"

Well, if that doesn't sound like "it would have been obvious to one skilled in the art" I don't know what is.   So, what's the point.  Well, one point is to not give interviews about your specious patent applications. 

A second, better point, is to not freak out every time someone says that they filed for a patent on the color blue, or a user interface, or some stupid Facebook integration program.  Merely filing the patent does not get you from A to B.  The patent office has plenty of mechanisms for weeding out bad, and obvious ideas, and does a pretty good job at it.  I think we can all sleep safely knowing that Oklahoma will not corner the market on deliciousness. 

Jordan Garner, Leason Ellis, Patents

Getting Hired in the IP Field

 Regardless of how you find yourself less than gainfully employed (or about to be less than gainfully employed), it is helpful to know that all IP associates are not equal in terms of their supply / demand curves. 

It is generally assumed that all IP associates (and partners) tend to land on their feet after a major event like Dewey. This, I can say from personal experience, is not always the case. Depending on your technical background (you have a technical background, right?) the market tends to set the going rate of demand differently for different kinds of associates.

So, how does one increase their desirability in terms of greater chance of employment? Well, going to a really good law school is really helpful, but not an indication of success.  Going to a decent (not terrible) school and doing really well is probably not better than going to an excellent law school and not doing so hot, but it is a decent consolation prize. Obviously the preferred option would be to go to a good school and do really well (and date supermodels). So, taking a clutch of associates, all of whom did well in undergrad and went to an excellent law school, who gets hired first? Who is in demand?

Well, if you have been on any recruiter websites (or get the e-mails) you can quickly create a ranking based on demand. While the list moves around a bit depending on Litigation or Prosecution emphasis, the top spots of the list remain largely intact. So who is on top: 

Electrical Engineering

Computer Science

Mechanical engineering

Chemical Engineering 

Civil Engineering

Pharmaceutical / Biotech (PhD. level) 

Biology (Non- Phd.)

Trademark

The best way to get a job in the current IP landscape is to have an electrical engineering degree or a computer science degree.  The hardest way is to not have a technical degree at all. This doesn't mean that Trademark Associates do not get hired (we have hired a few recently), it just means that the supply greatly outstrips demand, and will for the foreseeable future.  

Jordan Garner, Leason Ellis, White Plains NY.

Market Forces

No, this post is not about the excellent Tech-futuristic thriller by Richard K. Morgan (although it is awesome and can be found here)

In light of the continuing mess at Dewey ( if you are unaware, see here, here and here) it is probably helpful to think about price discovery schemes for associate compensation in the current job market.

If you weren't aware, the job market for associates (new and old alike) is going through what economists call a "Market Clearing".  This is just fancy way of saying that the supply is currently outstripping demand, and either the supply will need to contract, or the price for the supply will have to come down.

If you have spent anytime talking to the management of larger law firms, you know that there is no such thing as a permanent decline in salary for associates. The reputation deficit that comes from such a move is considered to be far more damaging than the price savings. Now, this does not mean that it doesn't happen.  In the dark days of '08-'10, many a law firm took the "lowered tier" option of differential associate payments and tried to spin them as some sort of revolution in Associate salary / price discovery.

 However, most associates are not in a position where they are given the option of voluntary wage cuts in exchange for continued employment. The end result is that the price discovery is impossible in the legal market, and the only way to get the market clearing effect is to reduce the supply of associates, often through forced attrition.

However, there is an alternative:

The alternative would be to allow the associates who are performing at an acceptable level to continue to work at the firm, but at a greatly reduced salary.

It would be possible to retain two associates for the price of 1. Basically, offering two similarly situated associates the ability to "share" their salary and maintain employment.  For high-year associates, it is possible to still obtain a 6-figure income on that 1/2 share. This allows the human capital developed by the firm to still be utilized, and the associate to avoid the stigma of a growing employment gap on their resume.  Unfortunately, the current practice of picking one associate and dismissing the other does nothing to help discover the true price of the associate and results in a wasted investment for the firm.

Either way, the lack of utilization of human capital (in the form of associates) is something that the legal profession is going to have to come to grips with.

Jordan

Declining Prospects

 This is not really a post on anything other than the up-coming book by Michel Trotter titled "Declining Prospects".  If you have been paying attention in the legal sections of the NY Times and Wall Street Journal, you know that the once venerable white-shoe firm "Dewey & LeBoeuf" is on the verge of collapse.  One of the reasons is what I called in a previous post "The Maw".  That incessant desire to increase compensation in the face of declining client willingness and decreased economic opportunity. 

I am no Harvard trained economist / lawyer, but Michel Trotter is. Judging by his interview regarding the future of the legal profession found here, we are of the same opinion on the ills facing future. I for one am looking forward to reading his book, available "soon" from Amazon. Hopefully a lot of the senior partners in the Big Law are as well. 

~Jordan Garner  

Some thoughts on "The Maw"

I have been away for a while, work at Leason Ellis (now, I think the biggest IP boutique firm between NYC and Boston) has kept me really busy.  However, I was once told that the most important time to get your ideas out is when things are going well.

Unfortunately, things are not going well for a lot of lawyers out there (IP specialists included). The causes for this are likely beyond my ability to describe, but a major factor is what I call "cost per lawyer per unit work". In the old days, law firms wouldn't compete with one another using cut rate pricing. The supply / demand curve of reputable attorneys wasn't tilted in favor of supply. Now, through the founding of dozens of new law schools, the supply metric has gone exponential. The rate of growth of lawyers does not match the rate of growth of law firms, or the general economy.  The end result is that you will have more lawyers looking for the same opportunities.

Clients, knowing this, use their leverage to bring down the cost of services.  Normally, this is just a feature of capitalism, and no one should be surprised.  However, in law firm models, forcing down the price does more than cut into a specific partner's profits.  It cuts into the firm profits. As firm profits begin to constrict, the "Rain Makers" start looking for another ship to sail (we can have a discussion on how Partners became "Armies of One" some other time). Once some of the big guns leave, the firm profits begin to contract severely. Associates, staff attorneys, paralegals all begins to fall to the budget ax. This collectively aggressive consumption of the internal human capital is a feature I call the "The Maw".

 The Maw can, and will (I have experienced it first hand) chew through the entire professional rank of a law firm without ever solving the fiscal difficulties of the Partnership. The preferred response once the Maw has begun to consume staff is to throw larger and larger supplicants into the abyss, in hopes of appeasing its hunger. This never works. All the major firms that threw virgin first year sacrifices into The Maw 3 years ago, are likely still throwing people into the Maw today.

The only way to satisfy the hunger of The Maw is to get ahead it.  This happens by reducing the cost per lawyer per unit work. The only way to do this is to lower the cost of the work billed to client. The only way to do that is to lower the price the firm pays to its members to do the work.  This doesn't always mean lower compensation for everyone. However, the fixed income that law firms provide to their professional class is not flexible.  Therefore, to be truly Maw resistant, compensation needs to be variable, for everyone. Associates should be able to ask for, and receive, a massive pay cut, instead of having the firm select between keeping one group of associates at full salary, and terminating another.
  

Inventor Portrait

In you are a patent attorney, then odds are you like inventors.  Dealing with with minutiae of corporate IP systems (I am looking at you, un-named multi-national corporations with your terrible in-house IP docketing software), not so much.  However, bureaucratic obstacles aside, I love working with men and women who pursue an idea and turn into into a tangible thing.

That is what makes each of the people profiled in these videos special, their willingness to pursue an idea until it was something that later generations can build-up. Being a giant, that lets us stand on your shoulders, is still vitally important to both our society and our economy. For that, we thank you.

P.S. Ralph Baer - as a man who enjoys Mass Effect 3 from his couch, I salute you.



Inventor Portrait: Ralph Baer from David Friedman on Vimeo.

Whitney Houston and the Morality of Copyright Term Extensions

The recent untimely death of diva and part time actress (who doesn't love "The Bodyguard"...) Whitney Houston has got me thinking about the recent extension of the Copyright act. (Recent as in 1998 -- but when you have a law that goes back to 1790, almost anything is "recent".) I think that the Act, even flawed as it was, demonstrated a triumph of Moral/Economic IP, as well as tangible evidence that Michael Eisner did not want Mickey to go off copyright on his watch.

Wow, that's random you say. Well not really. Using Michael Jackson and Whitney Houston as two recent examples, we can conclude that Copyright Terms that exist beyond the life of the artist, are in part, social insurance programs designed to care for the offspring or spouses of artists. The most recent extension of the copyright act is "Life + 70 years" for authors (or songwriters) and "120 Years after creation  / 95 Years after publication" for corporate authorship. Leaving aside the arguments about corporate authorship (which is where the "Mickey Mouse Protection Act" comes into play), lets look at the effect of the term for regular authors.

Both Whitney and Micheal had substance abuse issues. Likely, these issues killed them. Both Whitney and Micheal have children who will grow up parent-less in a world which places a significant dollar value on their talent. Their heirs (notably their minor and semi-minor children) should be allowed to collect on the remaining value of the works, that society is willing to pay. This is more true in situations where the artist has died fairly young.

It is impossible to calculate the value of having a world renowned (and rich) artist as your parent. As a society, we have made a collective decision that the works of art are still valuable to us after the untimely passing of their creator. Therefore, easily identifiable heirs should be the recipient of that residual economic value. As it stands, Whitney's heir's have copyright income till 2082. That's a long time. But, Whitney's child is 18. If her mother was a non-substance abusing hedge fund manager, it would be obvious that by the time she was 88 she would have lived a life of privilege.

 If, as some argue, copyright terms should expire upon the death of the author, they as a society, are we prepared to send Micheal Jackson's children to love on the south side of Chicago with their abusive grandfather and enabling grandmother? From a moral rights stand point, the value of Micheal and Whitney's contribution to society in terms of economic output has vastly exceed the amount they were allowed to collect from society in life.

Intellectual Property is not just something that evil record companies use to sue you.  It is a form of deferred pension to those who create lasting works. It is a source of economic security for those left behind, when troubled talent meets an untimely end. IP should extend beyond the life of the artist because....I don't know...the children are the future.

You got a job, now what?

Even with last week's job report steady employment is still difficult to find for a lot of people. One of the demographics having a slightly easier time achieving the employment dream are those young people with hard science and engineering degrees. regardless of if you are going to work for Microsoft or some garage stat-up, you should keep in mind what is being slipped into your employment contract.

A good illustration of the pitfalls of not properly reading your employment contract can be found in Picture Patents, LLC v. Aeropostale, Inc.  (Google Scholar is a god send for cheap Attorneys who hate to use the Westlaw accounts).  While this case is not new (April 2011) it does provide 2 key point I want to make about employment contracts and keeping your rights.  


A bit of back story. Ms. Baker, a student at Columbia, got an job working for IBM. Excellent right! Well, IBM being a huge, 100-year old multinational corporation who builds Jeopardy winning supercomputers in its spare time, is not an entity to let something like an employment contract be a Staples brand boiler plate. The employment contract has all the obvious provisions about not showing up drunk and sexually-embarrassing your co-workers in the breakroom.  In addition it has this doozy of a IP assignment section. The relevant part states: 

4. I hereby assign (emphasis mine) to IBM my entire right, title and interest in any idea, invention, design of a useful article (whether the design is ornamental or otherwise), computer program and related documentation, and other work of authorship (all hereinafter called "Developments"), hereafter made or conceived solely or jointly by me, or created wholly or in part by me, whether or not such Developments are patentable, copyrightable or susceptible to other forms of protection, and [sic] the Developments: (a) relate to the actual or anticipated business or research or development of IBM or its subsidiaries, or (b) are suggested by or result from any task assigned to me or work performed by me for or on behalf of IBM or its subsidiaries....

The above provisions concerning assignment of Developments apply only while I am employed by IBM in an executive, managerial, product or technical planning, technical, research, programming or engineering capacity....

Humm... restrictive. You invent a newer, better algorithm. It belongs to IBM.  You invent a better toaster, IBM is making your toast. You invent a slightly tastier pancake (impossible you say!, pancakes are already at maximum tastiness! Bah!), IBM is slathering Aunt Jemima all over it. An important note here is "hereby assign" this means today, not some point in the future. So when you develop something in the future, it is already assigned (in a temporal paradox no doubt) to IBM.  You are binding future you to assign things, i.e. you don't get to renege later.

I am pretty sure you know what happens next. Ms. Baker comes up with an idea (not important what) that she developed with the resources of IBM, while at IBM. IBM declined to advance the project further. Ms. Baker decided to take the technology on the road, do some more developing and file some patents.  Later, she decides that a whole bunch of people are infringing said patents, and brings suit....and looses.  Why?

Cause those patents belong to IBM.  Yea, she paid all the maintenance fees, all the filing fees and all the attorney time, but BIG BLUE takes the prize. Ms. Baker failed (or Ms. Baker's attorney failed) on two accounts. One, when the IBM's employment agreement asked her to list all currently developed(ing) projects that were outside the scope of the the IP agreement she wrote "None".  While it was possible that at the time of her signing, she had zero conception of the project, it is not likely. More likely, she didn't think the idea was worth putting down on paper at the time.

What's the lesson?  Always divulge (in confidence, so as not to be considered a disclosure under sec 102 et seq. ) all of you concepts. Sure some of them might sound stupid, or half baked, but you never know when you will develop them into the next killer app, only to have Megacorp take all the cash.  This is easily done with something like a spread sheet that gives a basic description that lists the things you are working on and thinking about. The downside to this is that if you are too descriptive, you run the risk of narrowing your room to claim broader inventions.

Two, do not use your corporate resources to pursue personal inventions or discoveries. They hate that. More importantly, using their equipment lends credence to the fact that you were doing it for them, and it belongs to them (while else would a company let you do stuff, if not for their benefit).

The back-up lesson you kids who skipped to the end is to make sure you read your employment contract thoroughly. If you don't understand something, ask a lawyer. If you are working for a place that has this kind of contact, and you develop something on your off time, as your lawyer how to make sure it does not instantly get grabbed by the boss.

Libertarians and IP

[Warning - random post on Legal Theory. This post could be a lot longer, but I have decided to break it into parts so that it is a bit more manageable for myself. ]

I have noticed a general upswing in the amount of Libertarian bloggers (and Neo-Liberal ones too) who have decided to come out on the negative side of general IP rights and protections.  While some of this is merely band-wagoning after the SOPA debacle, I think some of it comes from the general Libertarian concept that the enforcement of property (the tangible type) rights is the only reasonable use of governmental authority.

To avoid mis-quoting anyone, I will generally surmize the concept behind the Libertarnian objection to IP (as I understand it). This is going to be necessarily broad, so if you want to know what your favoriate Ron Paul Voter thinks, I suggest you look here, and here.

In general the Libertarian theory is more easily illustrated by the following theoretical.

Alice writes a piece of music and performs it to her own enjoyment in her yard. Rob, her next door neighbor, without trespassing, records the performance and uploads it to a file sharing site. Jim, a creative advertising executive, downloads the recording and uses it in a Super Bowl commercial. The commercial earns Jim wide acclaim, recognition and untold riches. Alice does not get any money or recognition. 

According to Libertarian theories, this is a perfectly acceptable outcome (if not the preferable one).  The argument underlying why this is O.K. is that Alice has never been deprived of her rights in the use and enjoyment of her property.  All that has been "misappropriated" is Alice's potential future ownership in the profits that Jim would have had to pay her in a regime where the government mediates these sorts of transactions. 

However, the Libertarian argument fails when you consider why you have a regime of Intellectual Property protection in the first place. Now, we could have a huge conversation on the dichotomy of the Moral vs. Economic Theory of Intellectual Property, but that is for another blog post.  Safe to say that the Constitution (Libertarians love the Constitution) spells out a moral theory of Intellectual Property.

   

   Article I, Section 8, Clause 8 of the United States Constitution empowers Congress:

   To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. 

By engaging in the "promotion" of Progress, Congress and the framers have set themselves a moral task that can not be easily superseded by claiming that the economics of "progress" are such that those rights should be limited to that which is tangible. The argument should never be focused on the "economic" rights of the IP holder, they are ancillary to the issue.  The government is charged with "progress";  how we as an economic and political system allow for maximization of progress, is tangential to the original goal. For example, if as a society, we decided that all musicians should be put on government stipend, then the original framers intent could still be met. Arguing that "progress" is met by not "promoting" is a laughable on its face, and clearly not borne out in reality. 

Libertarians run up against the fundamental problem that capitalism, practiced in the U.S. in the early 21st Century, requires that IP be priced in the market place. Destroying the pricing mechanism, without providing an alternative mechanism for "promoting" the arts and science yields only what Ayn Rand called "Moochers".  A society of takers, who, because there is no way to feed themselves from the sweat of their intellectual labors, find themselves shelving the potential of great work, because they live in a society that doesn't value it. That society asks people to create for the pure enjoyment of it, while also having a day job. There is a reason why this system does not work well. In order to re-order a system, people should at least acknowledged why the system was erected in the first place. As GK Chesterton noted, "one should know why a fence has been erected before one tears it down."

Jordan Garner

The Future

If only it were this easy

You will notice in the future that I will be putting forward some pretty random, reckless, speculative legal theorizing.  There is a point to this beyond satisfying my desire to investigate future legal developments that may never occur.  

I have a general theory about the future of Intellectual Property and how society will alter, and nurture the concept. Unfortunately, my overall thesis is a bit broad for this format.  Even more unfortunately, I am pretty sure I couldn’t convince anyone to pay me hash it out in one sitting.  Therefore, I have decided to use this forum to piece the concepts together and flesh out the ideas.  Eventually, if I like where I went, I might publish them all together as an ebook or something similar.

I will try to preface those posts with some sort of headline that tells the uninterested that they are about to be subject to some random dissertation concerning Economic Theory of Patents, Molecular manufacturing, Time Dilation and the Patent Office and why super villains must have great in -house counsel.


Jordan Garner


[Ed. Edited for random grammatical errors]

Start-up Ecosystems

As anyone who has read this blog (all 3 of you) know, I love ( more in the Storgian, as opposed to Erotic sense) infographics. It is an outgrowth of a background in Bioinformatics and a general appreciation of good graphic design. So what? All of this is just a haphazard way to introduce another nice infographic that I found the other day.

While I very much like the presentation found here, I take issue with the lack of attorney representation. Of all the people that Start-up founders love to hate, lawyers and especially IP attorneys, are in contention for the top spot.  This is in part due to a justifiable apprehension of the dreaded "Cease and Deist" letter.  However, I think it is also due to a lack of understanding about IP in general. I once spoke to a founder who told me "I don't want to deal with patents because it is too hard to know what's out there and who owns it".

While this may have been true a decade ago, the internet has vastly lowered the cost of entry into the Patent Searching game. Simple patent searches are key to a Founders due diligence. Anyone who wants to get cash from a venture capital firm should know before hand how to answer the question "does this infringe someone else's IP". It is essential to know the space you are working in, not only to know who your challengers are, but also who your investors might be. A patent search can let you find companies and individuals that are operating in the space.  Armed with this knowledge, you can track down investors who understand your technology and want to be a part of it.


Jordan G. Garner 
jgarner@leasonellis.com













Source: Udemy Blog

Trademark Scams

The internet is full of scams, scammers, hackers and Nigerian Princes who are only inches away from giving you 10% of billions in unclaimed Federal Government cash and Russian Women who won't care if you are an unemployed baby-boomer living in your son's basement with an infectious skin condition. They love you, and all they want is for you to send them a bit of money.

IP is not immune to these fishing lures deployed by various shadowy groups bent on bilking you out of your hard earned money.  Recently, a client of mine received a letter, and invoice, purporting to be the "Register of International Patents and Trademarks (I am loath to link to them, but be forewarned- www.patent-online.org). I am not sure what tipped my client off to the scammy nature of the communication. Was it the fact that the "Office" was located in Slovakia? Or that the Bank transfer was to a P.O. Box in Austria? Or is it the fine print that states that "this is not a registration by a government organization." Why would the "International Patent Office" be a governmental organization, that is just crazy talk.  Maybe it is the fact that the invoice changes on every page?

This is nothing new. The publishing of Trademarks by the USPTO is done so that legitimate concerns by other users of similar marks can be addressed.  Unfortunately this means that sometimes unscrupulous people can try to take advantage by using a bit of public information and an official sounding name.

Well, if you haven't figured it out by now, these guys are a scam.  While you can get an internationally recognized Trademark, you must go through the Madrid Protocol Process provided by the World Intellectual Property Organization (which, surprise, surprise, is a international governmental origination). As I have stated previously, Trademark Rights are the first thing that most Start-ups and small business should focus on. Your branding is your identity, and you should take seriously the protection of that identity. Let the Twitter situations be a learning experience. While it might sound self-serving, you should always conduct your Trademark Matters through a qualified IP attorney (i.e. someone who has done this before and knows what they are doing).  Definitely what you shouldn't do is pay money to Eastern European scammers in the hopes that you will secure your rights on the cheap.

For you own research, I have produced the redacted letter that my client received. The prices and invoices are so wildly inflated, relative to what a trademark filing normally costs, as to be laughable.  If you have recently filed for a Trademark, please do not fall for this. If you have questions about internationally filing Trademarks, then consult your IP attorney. If they are too busy on the golf course, contact me. What ever you do, don't wire 2800.00USD to Bratislava, you won't even get a photo of a nice Russian Girl who loves you in return.


Bogu Tm Bills Confidential 1

Knowledge Black Out due to SOPA

Both Wikipedia and Reddit (sources of countless knowledge and time wasting - not necessarily in that order) are down today in support of efforts to restrict or modify H.R.3261 "Stop Online Piracy Act" and S.968 "PROTECT IP".  As a practitioner of IP, I know first hand the dangers and hardship that IP theft and infringement bring.  Not only do major corporations spend a lot of valuable resources and time developing IP, solo, start-up and small business also have their economic viability tied to protection of their IP.  


That being said, Congresses' attempt to "help" will do more harm than good. What the IP regime needs is a review of what the theory is behind the protection of IP.  Is is a moral right, as the Europeans have sometimes argued, or is it a economic one, which can be traded and modified in the democracy of ideas for a compromise that enhances overall prosperity? Unfortunately, the Acts, as presented appear to be focused on the narrow concerns of the few, without even recognizing the concerns of the many. Both bills should be removed and rethought, crafted with the input of not only the multinational, or "free copyright" campers, but with the knowledge that many small business need the law to be both clear and fair.  What isn't needed in Congress fighting rear guard actions for failing business models. 


If you want to know more, I suggest you check our the EFF and their specific coverage of this issue. 

Pioneers

Infographic by Visual News

Visual News a great site for lovers of infographics (who isn't a lover of good, if slightly misleading infographics) put together this nice image regarding patents and innovation across the world. While I am not entirely convinced in the soundness of their reasoning behind the lack of China presence.  It is definitely a good way to present what can be dry statistic on the the trends in 21st century innovation.
I think two important observations stand out. 1) Even in the age of "Social Media" everything, the biggest patent sector is still directed to electronics devices and computer hardware.  2) That European countries individually do not produce a huge number of patents, but combined into the EU, they become a significant player in the global space.

謹賀新年 - Happy New Year

明けましておめでとうございます!

I just wanted to take this opportunity to wish many of the Japanese colleagues, friends, and acquaintances I have met over the last 2 years a very happy new year. I hope to continue to have the great privilege or traveling and speaking with Japanese IP professionals.  Hopefully, 2012 will be as a unique and productive year as 2011 and 2010 have been.