Patent Kinetics, LLC

Patent Best Practices: What Entrepreneurs, Inventors, and Investors Need to Know Now

The patent environment is constantly changing because of new laws, regulations, and court decisions. This updated presentation explains why most US patents are not worth much. The presentation takes into account recent changes while clarifying some of the major challenges in creating a valuable patent portfolio. The presentation goes on to outline the best practices that will often, but not always, overcome many potential roadblocks and impediments to creating patent value. This presentation is directed towards startups, inventors, investors, innovators, and C-level executives. This version updates various slides for clarity and accuracy and fixes some nits.

After explaining the difficulties of building a strong patent portfolio,  Best Practices are discussed in some detail:

• Some Assumptions Underlying Best Practices
• How To Build Patent Value
•  Searching Matters Because
• Keep the File Open at the Patent Office With A Continuation
• Avoid Prior Disclosure – On-sale Bar
• File A Provisional Patent Application
• Consider Foreign Filings
• Work With A Registered Patent Attorney

Disclaimer: The content of this presentation shall not be construed under any circumstances, by implication or otherwise, as the giving of legal advice and/or the practice of law.

Click on the link just below or on the title slide to download the complete PDF file. The presentation will open full screen mode in Acrobat ("Window/Full Screen Mode").

 

Download Weber - Patent Best Practices June 25 2020.pdf (1176.6K)

SCOTUS Petition: Stats Show Losing Patent Owner-Appellants Have a 66% Chance of Being Rule-36ed Versus 18% for Losing Petitioner-Appellants

[From IPWatchdog.com] Chestnut Hill Sound, Inc. has filed a petition asking the U.S. Supreme Court to consider whether the Federal Circuit’s disparate practice with respect to issuing Rule 36 decisions for losing patent owner-appellants versus losing petitioner-appellants is constitutional. The petition includes statistics demonstrating that patent owner-appellants are three times more likely to receive a Rule 36 judgment than petitioner-appellants.

Download SCOTUS Petition_ Stats Show Losing Patent Owner-Appellants Have a 66% Chance of Being Rule 36ed Versus 18% for Losing Petitioner-Appellants

Boston Entrepreneurs Network Legal Meeting Dec 3 Waltham MA

I will be moderating the Boston ENet's December 3rd meeting in Waltham, MA. The topic is "IP Protection and Legal Steps For Early Stage Companies." The panel includes a crackerjack set of attorney's from the Boston area. Details and registration information can be found here.

AGENDA

ENET's panel of legal experts will discuss fundamental legal issues that founders and executives of early stage companies must address to insure vital protections and the building of value.  These issues are compounded by changes in technology, commerce, and the law.

• What is the preferred form of entity and where should it be established?
• What is the preferred method to protect the company's Intellectual Property by use of various forms of patent, copyright, trademark, and trade secrets, either alone or in combination?
• How should founders' equity be apportioned through stock options and what restrictions should apply?
• What compensation and benefits should be included in employee agreements including consideration of Non - Disclosure Agreements, the changing environment for Non - Compete Agreements, as well as Assignment of Invention Agreements?

These issues and their benefits and pitfalls will be discussed and presented with you, the business professional, in mind.

 

Determining Patent Value

Contrary to what some patent owners believe, the value of a patent(s) is determined by the market(s). Some patent owners I've encountered think that they can demand a certain amount of money with various terms associated with the transaction and that they will get it if they demand long enough, loudly enough. Ain't necessarily so. In fact, it's seldom, if ever the case.

An Inventor, Investor and Examiner Walk Into A Bar: Inventors Alliance Presentation

On Aug 3rd I gave a presentation titled, "An Inventor, Investor, and Patent Examiner Walk Into A Bar" to the Bay Area Chaper of the Inventors Alliance. The presentation can be download in PDF format here. The PDF version does not show the animations.

As always, comments appreciated.

IXQuick: Privacy Protected Search

Inventors and patent researchers may want to consider using the IXQuick search engine, which claims not to keep records of search terms, among other benefits. Their privacy policy page is here.

Contingency Fee Infringement Cases v1.1

In response to a couple of selected comments, the PDF version of the article on Contingency Fee Infringement Cases has been updated. The blogicle installment version remains unchanged.

Non-Practicing Entities and Trolls?

Those who own but do not practice their patents are sometimes referred to negatively as "trolls" or "patent trolls," especially when they assert their patents against companies who are alleged to be practicing the inventions without a license. Well-known (in some circles) firms that are often identified by others as patent trolls include Acacia Technologies and Intellectual Ventures.

The term was coined in the 1990s. A Wikipedia discussion of the term's origins can be found here. A more, but not completely neutral term is Non Practicing Entity, or NPE.

Contingency Fee Infringement Cases - Part 3

[The complete article may be downloaded in PDF format by clicking this link.]

Substantial Risk Factors

Initiating an infringement lawsuit carries with it many important risks. Patent owners should be aware that litigating their patents may have significant negative consequences, especially against well-funded opponents that may hire law firms to aggressively defend them.

Contingency Fee Infringement Cases - Part 2

[Part 1 can be found here]

Different Kinds of Law Firms, Relationships

Law firms come in many flavors, sizes, and shapes. Some litigators will work on “modified contingency,” which usually means that the client is expected to pay expenses. In return, the law firm will take a lower percentage of any proceeds.

For the right case with the right client against the right target(s), some litigators will work of “full contingency,” which usually means that they will advance their out-of-pocket expenses. If and when funds are received, typically the first money in will be used to repay the firm’s expenses. The remaining funds will be shared between the firm and the client in accordance with the representation agreement.

Contingency Fee Infringement Cases - Part 1

Many inventors and small companies may not be fully aware that certain law firms in the US regularly take patent infringement cases on a contingency fee basis. This article reviews key factors that patent owners should keep in mind while evaluating the possibility of approaching a contingency fee litigation firm for representation.

More specifically, this article provides a brief and necessarily incomplete discussion of the following issues: (1) what makes for a great infringement case; (2) how are law firms and patent owners likely to work with each other; and, (3) what are some major risk factors in bringing an infringement case?

PBS Segement on 3D Printers

This informative PBS video might be of interest to inventors who are innovating "stuff" or things.

Creating Valuable Patents - Checklists - Part 3

[Part 1 can be found here; Part 2, here]

Patents and Patent Prosecution Factors

The “optics”—the visuals—of patent portfolios are often valued more than actual patent quality. Numbers of patents, patent claims, etc. may be prioritized over patent quality. Big companies are sometimes expert at playing this game. However, those wishing to create valuable patents need to address other factors, including: 

 Prior Art Searching

• Was the patent prior art searched and if so, how extensively?
• Was the non-patent prior art searched at all and if so, how extensively?
• Did the inventor / assignee leave the searching up to the patent office?

Creating Valuable Patents - Checklists - Part 2

[Part 1 can be found here]

Technology Commercialization Factors

Closely related to market factors are aspects of the inventions themselves. Is the invention narrow or broad? Amazon’s “1-Click” patent notwithstanding, broad inventions tend to be more valuable than very narrow inventions. There are several reasons for this: in the aggregate, royalties and/or damages in infringement cases may be higher for broad compared with narrow inventions and portfolios. Broad patents may make it difficult for competitors to “patent around” the inventions or to find new ways of solving a given problem that are as effective and efficient as the patented technologies. In addition, depending on the evolution of relevant markets, more parties may infringe broad than narrow patents.

Business Implications

• Is the invention best thought of as a component of some larger product or service?
• Is the invention sufficient to be the basis of a new product or service offering?
• If component technology, who makes or would make the whole product?
• Do prospective customers have a history of incorporating technologies from other sources or are they a “not invented here” culture?
• Do prospective customers have a history of acquiring patents and if so, at what valuation? 
• Are there competing technologies that solve the immediate problem and if so, are those solutions more or less costly, or easier to manufacture?
• How long does it typically take to get a “design win” in the relevant industry?

Creating Valuable Patents - Checklists - Part 1

Patent Kinetics works with inventors, entrepreneurs, and investors to enhance the value of their patent portfolios and then works to monetize these portfolios through their sale, license or enforcement. Since Patent Kinetics works on a contingent fee basis, only a few cases of the many presented to us are accepted. The opportunities that we do accept are those where the prospective client has thought through—as best possible—relevant market, technology, and patent issues.

Many mistakenly believe that simply having pending applications and/or issued patents creates notable value. However, most patents are worthless. Research reports have found that only about 10% of issued patents ever return any value to their owners.  Creating real value entails successfully overcoming significant challenges and a bit of luck. These challenges might be best understood by addressing most or all of the questions listed here. These questions can, of course, be used as a checklist for innovators or as a basis for preliminary due diligence by prospective stakeholders.