Yuletide Patents: Reconstruction to the Long Depression (1860's to 1900's)

One of the reasons that I find IP Law so fascinating is the depth and breadth history that patent records provide.  Patents provide an alternative, focused history into the mindset of inventors and designers. Problem solvers and money makers have used the patent system for hundreds of years to disclose to the world their version of a better mousetrap. The patent office is a near perfect record of the changes that have taken place in design, manufacturing and technology.

This is the start of a series looking at holiday patents through the years.A trip through the patent office records will find patents on various weapons, vehicles, rocket ships and toys. The diligent observer will also find technologies directed to freeing man from the onerous chores that have plagued the human condition since time immemorial.

Of course, one of the plagues beset  heavily on the shoulders of mankind is Christmas decorations. Untold families have been torn asunder by arguments concerning the de-tangling of lights, proper Christmas tree display orientation angles and proper ornament positioning.

The following patents show that the issues around Christmas, the quest for easier decorations, for simpler trees, for time saving autonomous devices, has changed little in the last 150 years.


The featured patent at the top of the post is the earliest patent I could find which used the term Christmas.  Patent No. 18,238 was filed in 1868; and concerns a design patent on a particular figure for a Christmas tree ornament.

Slightly more recent, from 1881, Patent No. 237,026 describes a paper Christmas Tree decoration. As industry and commerce stalled during the Long Depression, the inventor, Mr. Kanuff probably hoped that his Christmas decorations would help life spirits as well the balance of his bank account.











Of course, nothing goes better with paper draped over a wooden, rapidly drying, vertical piece of kindling than an open flame. This is why Mr. Schroeder's idea, patented in 1903, for a "Candle holders for Christmas Trees" was likely a big hit.
















Possibly as a result of uncontrollable fires resulting from placing candles in Christmas tress, enterprising inventors sought to do away with the tawdry notion of an actual tree. Why fell a potential hazard when you can construct a safe tree with the tools of science. For example patent 255,902 describes an "Imitation Christmas tree"













Of course, no Yuletide celebration would be complete without the accompaniment of music. The modern era is complete with Ipads and Spotifys, belting out the latest Christmas versions of your favorite artists.

 Engineers of the later 19th Century had solved the problem of stored music, a perfect accompaniment to the roaring fire which is quickly engulfing your candle lit Christmas tree.

Reed Organs had been around for some time. However Mr. Metzger found useful improvements in the art of delivering canned Christmas music. All the elements are there of the modern electronic system of music. A recordable medium, a software instruction set, and a hardware amplification device.






Patent Office records provide a wonderful source of inspiration for designers and inventors. The technology illustrated in these patents still exists, only in more refined forms. Anyone who loves graphic or industrial design owes it to themselves to take a trip through the patent office records.

Jordan Garner

Girls be illin?: Don't waste your start-up capital on non-essential legal fights

Story: Goldieblox, a toy company marketing engineering toys to girls, used the Beastie Boys famous / infamous song "Girls" in a parody music video to promote their start-up project. The music video went viral on youtube, spawning mostly ardent praise and affection.

The Cerberus Legal dogs of Universal Music sent Goldieblox a pleasant letter (by Cerberus legal dog standards) asking them to take down the video. The letter claimed that the parody video was outside the scope of the fair use exception to copyright use, and constituted an impermissible use of the underlying work.

The legal counsel for GoldieBlox filed a declaratory judgment action seeking a finding on non-infringement under the parody provision of fair use.  This could be a educational case about how a "letter" is never really a letter, but an invitation to bring a DJ action.

A lot of digital ink has been split regarding the merits of the parties positions. If you are in favor of the permissible parody argument, then the Electronic Frontier Foundation (eff) has a great rundown of the law and their interpretation.

The point being missed here is one of resource allocation. It is argued that any press is good press. If that is true, then this entire episode is a net benefit to Goldieblox and their start-up ambitions.

However, from a business point of view, getting into a law suit with a major entertainment company is a huge hassle. Aside from your own legal costs, which could have been better spent on non-legal blog based marketing, you run the potential risk that you might lose and owe someone, or some mega corporation, lots of money. That outcome is unlikely here (even if GoldieBlox loses, they will likely have minimal damages), but that is besides the point.

A cursory level of diligence would have shown that not only do the Beastie Boys not like "Girls" (they refuse to play it anymore), they are actually quite litigious. As such, perhaps their IP, regardless of your use, was not the best media to use.

For the legal costs involved in filing and arguing a Declaratory judgement action, you could have hired a band or a composer to generate a all new song. The point here isn't that the Beastie Boys are right to argue about fair use, it is that a start up generally should avoid potentially bruising legal fights.  IP counsel should always be mindful of not only the legal arguments, but the overall business position.

Start-up resources should never we wasted on non-essential legal fights. If you need access to a particular piece of technology or code in order for your idea to function, then roll the dice, take the risk. If you want to make a music video parody of a famous song, think about the necessity to the bottom line.

Jordan Garner

Product Design IP in the age of 3D Printers

Dieter Rams designed Coffee Maker

Intellectual property protection for industrial design and industrial designers has always been a fraught process. The nature IP does not lend itself easily to the tasks Industrial Designers might put to them. However, new technology might begin to change how Industrial Designers see Intellectual Property protection.

IP Limits

Conventionally, industrial design is protected through a design patent.  Design patents allows the designer to get protection on their purely ornamental design for 14 years from filing.  Unfortunately, this means that if the product has a functional component (enhanced ergonomics etc.) then the designer relinquishes that functionality, or they are forced to obtain the more expensive and time consuming utility patent. A utility patent covers the function of a device , process, compound or article of manufacturer. For example, a designer could hold a patent on the manufacture of a particular item. While this might successfully deter large scale copying, it does not prevent wide spread dissemination of the construction methods and processes.

Copyright protects artistic and literary works for 70 years, plus the life of the author. Text and audio-visual works are the primary focus of copyright. Once you move beyond the artistic realm into the functional, Courts have held that copyrights no longer apply.  However, the age of 3D printing might be about to change the rules of the game.

Charles Eames Design Patent 

3D Printing

For the uninitiated, a 3D printer is a device that builds an object, usually out of some resin, layers at a time. It is the electronic opposite of a very fine mandolin slicer. MakerBot, and companies like them are pioneering a way to have an "internet of things." The eventual goal would be a repository of templates for the production of all manner of goods, ready to be downloaded and printed, the way one might download a song and burn it to a CD [ed. do kids ever do that any more ?].

 The software used in 3D printers vary from device to device. However, they all use some form of stereolithography file to instruct the device on how to lay down layers of material. Once all the layers have been deposited, you should have a reasonable copy of object described by the file.

It should be apparent that 3D printing allows for the production of many useful things, it also allows for the re-production of industrial design elements without authorization from the original creators. Where 3D printing has created a problem, it might also offer a solution.

IP Incorporation into Designs



Since the procedures for manufacturing the item begins with a digital file. It is possible to encapsulate the design within the boundaries of Copyright law. If the software file, the instruction set for making a particular design is complete (that is, it does not require additional tooling, or minimal machining) then the software encapsulates the design.

It might still hold true that the tangible representation of the software (i.e. a chair or lamp) is not covered by copyright, the software code that executes the 3D printer is a valid piece of IP.  Therefore, the nexus of IP infringement of the design would occur when the digital file is copied (i.e. on a file share network). Thus, developing code for the 3D designs will become as important as the conceptual prototypes. Court are well positioned to hear arguments on the illicit trade and sale of pirated software. This presents an opportunity for Industrial designers and software coders to collaborate on clever implementations of the software to render the designs with minimal post processing. The closer the code is to representing the object, the stronger the case for infringement. Once the code base of a portfolio has been engineered, a simple licensing program [not in bitcoins!!!] (think Itunes) could offer people the world over the chance to download an use a particular firm's designs.

Alternatively, or additionally, a designer could include a structural trademark element. For instance, the design of a chair could,  incorporate a logo. In this instance, merely printing the object does not create a cause of action. However, once an unscrupulous manufacturer attempts to sell the copied design, they are engaged in trademark infringement.

There are likely more elegant solutions than these two for the potential problems posed by 3D printing. However, these solutions show that IP in 3D printing can be maintained and creators can be protected.

Jordan Garner

Why you had a hard time getting an IP job 2009

Not my children, but they raise an interesting point

There was [is] a misconception that "IP" people and especially "Patent" people land on their feet after a traumatic work event.

In most cases these traumatic work events are solitary affairs to be met with stoicism when they arrive, and laughed off once gainful employment is once again obtained.   Job loss, it should be noted,  is not uncommon. It is definitely not uncommon in late 20th / early 21st century America. In general this theory holds true, with a strong caveat concerning Bio-background patent prosecutors (a situation which I have addressed before). Engineering background IP practitioners have generally found it easy to obtain new employment.

However, at the tail end of 2008 and well into 2009 and beyond, there was a uncommon tightness in the IP employment market for all background. This tightness didn't comport with the conventional wisdom about IP.

Conventional wisdom held that IP slightly a-cyclical or even lightly counter-cyclical to the overall business market. If IP was influenced by the broader economy, it was the result of companies exploiting their IP to the full extent possible in a difficult market. This theory held that lots of new applications, litigation and diligence work would be generated in a mild downturn as people companies and organizations attempted to maximize license fees, infringement judgements and acquisitions.  Litigation and diligence can be the topic of a different post.

Here we take a look at the wisdom as applied to applications, and find it lacking.


source: http://www.theatlanticcities.com/jobs-and-economy/2013/10/where-americas-inventors-ara/7069/

As evidenced by the chart title, the above graphs the number of application filings by US inventors per year.  Instead of seeing a steady churn in work, we see an inflection point, then a steep and accelerating drop off until 2010.

What this chart shows is that "peak-application" (like peak-oil) hit sometime before anyone was actually aware a problem was brewing. As 2007 transitioned into 2008, the trend accelerated such that applications were approaching free-fall in by the end of 2008.

However, if people remember correctly, the Lehman Brothers Bankruptcy did not hit the news until September of 2008.  So this drop off was not the result of the economic collapse that erupted in the wake of Lehman, but was part of the systemic breakdown which caused it. While everyone was keeping their eyes glued to the "market", IP watchers should have been analyzing the IP "market".

The second chart below breaks this data out to the highest regional markets for patent applications.


As far back as 2005, there was a leveling off in the application filings. This would have been the point to consolidate and solidify staffing levels. Instead, 2007 saw some of the largest summer associate class sizes. New York suffered severely. From a pre-2007 height of  over 1,000,000 applications to a current number of just over 600,000; New York had seen a 50% reduction in filings. By 2011 the IP filing market was only 10-20 % off the lows.

A 50% reduction in patent work in New York means a lot less law firms getting paid, and a lots less associates on the firm's rosters.

What these two charts show is that triggering event for the Great Recession (Lehman Bankruptcy ) was not the triggering event for the decline in patent filings. The gears were already in motion back in 2006.  The reasons for the run up and crash are likely as varied as reasons for the crash in the broader market; over-supply, irrational belief that history always points upward, empire building at the cost of sustainability. Any, and likely all, of these factors played into the massive disruptions that gripped law firms in 2009-2010. (see Towsand, Morgan, Darby et al.)

Firms are not quick to innovate in the best of times. Facing a 50% drop in work load, billings, and profits is not the best of time. All of this conspired to make it difficult to get a job in the IP field in 2009. Thankfully, the broader market is slowly improving.

As the line representing new filings continues on its upward march, we would do well to keep a close eye on the movements and metrics of our own "market" s well as the broader market.

Terrors of the Patent Office [ Halloween Patents]

Nothing gets the inventive process moving like a commercial holiday. Unlike Christmas, Halloween lacks a committed religious lobby arguing that the festival has become too commercialized. Gaelic Druids, engaging in their Samhain Festivities, would probably be in awe of the variety and sophistication of modern creepy faced gourd lanterns. (a particularly creepy turnip Samhain lantern seen at left)

A quick search of the patent office provides several excellent updates of this apparently ancient tradition of making disturbing faces on otherwise inedible tubers. (Yes, I find turnips inedible...)

Everyone likes a menacingly happy Jack-O-Lantern. That's why, in 1907,  JC Tyndall of  St. Louis decided to file and get a patent (No. 848,938 on a "Toy Lantern"). Tyndall realized that the weak point of any Pumpkin light was the cap, and the susceptibility of the entire enterprise ending in a pumpkin scented conflagration. therefore, his pumpkin lantern includes a candle retainer, and an interlocking cap and gimbals mechanism for easy transport. the Specification does not detail why the eyebrows are so disturbingly curved.

In the continued vein of creepy faced pumpkin products, we move onto B. Wilmsen's particularly threatening Jack-O-Lantern patent issued in 1934. (No. 94,935 on a "Pumpkin Lantern").Tyndall had actually technology. Wilmsen make up for his lack of technical sophistication in this design patent with existential pumpkin-faced dread. His products nearly vertical optical orbs scream "infringe me if you dare!"

Lastly, we have an epileptic seizure inducing pumpkin Lantern. The psychedelic 1960's produced some interesting and mind altering experiences.  None of these hold an electronic candle to a double faced Janus-like Pumpkin invented by R.R. Authier of Oaks Bluff Mass and issued as Pat. No. 3,250,910. (Ed: Martha's vineyards for those who don't know).This specialty lantern has dual faces, one scary and one comical. In addition, it contains selectively operated light sources of differing colors. Lastly, these lights can blink or strobe, producing the red flashing eyes of a haunted monstrosity, in pumpkin form.


Always remember to check the patent office for particularly excellent holiday ideas.

Infringement frequency pushback

As a quick post, the following chart is presented from Google's fantastic Ngram viewer.

First, a bit of information regarding Ngram. The viewer is one of those Google 20% projects (i.e. not a core google product) that came out of the Google's massive data trove generated when it optically scanned libraries worth of print books. This scanning was itself not without controversy. See here.

The viewer allows you to search for the frequency of a word, or phrase, and see how that phrase has changed over time.  This allows for hours spent traveling down the internet time sink looking for interesting word / data combinations.

However, I think (and IP nerds agree) that the interesting output is related to the frequency of IP terms in written english. A look at the graph above demonstrates that for all the recent talk about Patents being a drain on industry, the frequency of discussion has remained relatively flat since the 1800s. Time bias being what it is, you see a peak in the late 1940's (probably a combination of medical advances and post WWII electronic / solid state electronic development.) and then a precipitous drop off to a nadir in the 1970's.  For 30 something developers or businessmen, it looks like there has been a terrible rise in patent usage.  However, even in 2009, with Trolls in full swing, the rate of  the usage of patent terms has yet to return to the nominal historical average.

More interesting, copyrights, long the bane of innovators, has been on a steady historical march, with no signs of slowing.

What is slowing is the march of IP infringement references.
     In the above chart, the concept of a "trade secret" seams to occur far more than any of the traditional Federal IP rights. There appears to be a high burst in the mid-80s to the 2000. (Potentially the rise of Japan and China? Topics for another day).

Patent, copyright and trademark infringement references hit their peak in 2000 and have been decreasing ever since.

It should be noted that these are references to the specific terms in published works. It does not include online media (which might be siphoning off the results post 2000)).  However, it would be odd, and a post in its own right to not have some correlation to the prevalence of a term in print and its prevalence in all media.

Anyone who is selling the concept that IP rights, their enforcement, or position in the mind-space of our society needs to justify those claims in light of the charts above.

Scammers Part 3 "Astro Boy" edition

Reporting on scams has become something of a tradition around here. In order to pull off a good con, the scam artist needs to know something about the psychology of its mark.

 It does the con-artist no good to offer to split a giant pile of bacon with a vegan (however delicious that concepts sounds). 
So to, do IP scammers know their audience. 

While not a new scam, the following letter was recently received in our offices: 

From: Osamu Tezuka Makoto [mailto:osatemakoto@gmail.com]

Sent: July 30, 2013 1:11 PM

To: Firm

Subject: Legal Rep

Dear Attorney,

We are a media publishing company in Japan. We have a breach of intellectual property agreement matter in your jurisdiction, we can forward you the agreement and 5195842743_2305>

Yours Sincerely,

Osamu Tezuka Makoto

Tezuka Production Company

4-32-11, Takadanobaba

Shinjuku-ku, Tokyo 169-075

Japan

Tel: +81333716411

Email: osatemakoto@gmail.com

http://tezukaosamu.net/jp

After some further digging the "client" told us that :

"We are  the owner of rights in a collection of animated characters including Astro Boy.  Springer Publishing of New York City failed to make a required payment upon termination of an intellectual property agreement between the us ."  

On its face, it seams like a golden opportunity  You, sitting in your office, business development book out to the "how to attract clients" chapter, gets this e-mail. You think, "sweet!" all that networking is paying off. Not only with new clients, but internationally famous IP clients. You do some due diligence, both the company, the IP and the opposing party seem legit.  Or do they. Why would a production company trading in a famous brand like Astro Boy communicate with a gmail address. Why would they contact you out of the blue, with no preface or introduction. Why call you "attorney"? 

The details of how this scam plays out differ from mark to mark, but the concept is pretty simple. Tezuka and Sterling (even though these are real valid companies) are setups, honey pots. You are supposed to Google them, see they are real, and rub your hands together in expectation of easy and significant billings. 

In reality, the contact info above, and the contact info they give you for the point of contact at "Sterling" are to the same entity. Once you negotiate a settlement, with a hefty retainer for your trouble, the money gets transferred to your firms' bank-account by a very slow validating banking institution. 

Because the client and the opposing counsel are the same entity, they know when the "money" was transferred  You, the successful hard litigating, hard negotiating lawyer, soon gets a call from the grateful client asking you to forward the money, minus your fees, of course. 

Now, some attorneys will wait until the check has fully cleared before sending on the money. Some will resist, until the client mentions that there are other people who owe them money, and they would like to retain you for future matters.  Either way, some lawyers will send a check, secure in the knowledge that the money in is the bank. 

The problem is, that the money isn't in the bank.  That slow moving bank transfer suddenly shows up as a cancelled check. Now the firm is out some hundreds of thousands of dollars. When you call Sterling and Tezuka, neither of them have ever heard of you. They have their own lawyers, who are you? You have to go to the Executive Committee and explain why you gave away the farm for some magic beans.  

You, my friend, have been scammed. Something for nothing is usually that...

Scammers Part 2

A while back I talked about watching out for scams in the form of "official" seaming documents coming from overseas and asking for "international patent" fees.

Well, short time ago, we started receiving inquires from our clients regarding the same issue but this time from a "official" international Trademark Office in Latvia. Note: There is no International Trademark Office. Second Note: If there were...It would not be in Latvia.

Just as in the first instance,Leason Ellis is taking the fight to the scammers.

See here: http://www.law360.com/articles/437509/ip-firm-leason-ellis-sues-to-shut-down-trademark-scammer

Check back for updates.

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

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

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.
  

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.