4.0 Growth Company Guide
Although many of my clients are established companies, a large percentage are start-ups in various stages. Some require a first patent application to tempt venture capitalists. Sometimes they want their patent portfolio summarized for an audit before a second or third round of fundraising. Venture Capital Funds and industrial incubators sometimes come to me for a due diligence report on the IP portfolio of a company they are interested in. I don’t get involved in the contracts between investors and entrepreneurs, but occasionally entrepreneurs complain about dilution and other issues they have with funders.
In all fields, there is a specialist vocabulary and a basic knowledge of terms is important, for anyone even peripherally involved in fund-raising for start-ups.
Recently, an associate of mine from US Law firm Womble & Carlisle kindly gave me a copy of a book by one of their partners, Clinton Richardson. The book, called 4.0 Growth Company Guide, is an alphabetical arrangement of articles about different company funding concepts. The entries are more than definitions. They try to present the rationale behind the concept and what the consequences of using one funding model or another are to initial investors, entrepreneurs and second round funders.
Concepts like Milestones, Angels, Leverage, Clubbing, Safe Harbors, Downside ISOs, leverage and buyout are explained in friendly, factual, neutral terms. The book seems like a handy reference for anyone getting involved in start-ups.
The book has been around since 1987. It is now in its fourth edition.
ISDN 978-0-6151-6409-0, the price on the jacket is $79.50. Not bad for 445 pages of reference material.
When I first saw this book I suspected from its thickness (36 mm (1 15/32″ thick) that the authors had resorted to the well known strategy of adding appendices such as copies of the Israel Patent Law, Trademark Regulations, Copyright Ordinance and the like. This is not the case. The book runs to 632 pages of analysis, with a further 50 pages taken up with a table of cases and an index. There is no gratuitous padding. The book is simply a fair attempt to provide a detailed overview of IP in Israel and its length reflects its comprehensiveness.
As a thorough overview of intellectual property law in Israel, the book succeeds. It covers patents, copyrights, trademarks and designs, unjust enrichment, trade secrets, passing off and related rights. It is the result of significant research by the authors, and though one can quibble with the odd opinion expressed, the book is authoritative. It is certainly a worthwhile addition to the library of any practicing Israeli patent attorney or IP lawyer.
Unfortunately, the readability of the book suffers from the lack of professional editing and the writing style provides constant reminders that the authors are not native English speakers. Paragraphs are long-winded and repetitive. Sentence syntax reminds one that the authors are used to writing in Hebrew. Sometimes, such as where copyright infringement by DJs at ‘wedding hauls’ is discussed, the typos are amusing. Generally, they are simply tiresome. I suspect that tighter writing could have slimmed down the book, shortened paragraphs and made it easier to comprehend without compromising on its comprehensiveness. That said, when allowing for the fact that the authors are not writing in their native language, the standard of the English is impressive. It is certainly better than my Hebrew. Nevertheless, the book is a little tedious and difficult to read because of language issues, and it’s a shame.
As would be expected from a legal text, judicial doctrines are discussed with reference to the case-law. Since the cases referred to are rarely available in English, I believe that the book would have been enhanced by an appendix abstracting the details of each case and providing a one page overview covering the specific issues and the legal significance. The cases could be arranged by subject or chronologically, with reference keys to facilitate the reader to find precedents of interest. I note that Machshavot who publish such overviews of case-law (in Hebrew) do not have a volume covering IP decisions. Although such an appendix would make a long reference work even longer, I think this would be a worthwhile addition, and would probably result in the thematic sections being shortened and would minimize repetition.
I suspect that the authors, who are both attorneys-in-law, in choosing to refer to follow the US convention and refer to licensed Israel patent attorneys as ‘patent agents’ will not endear themselves to their fellow professionals with technical backgrounds who universally and correctly translate the Hebrew term as Patent Attorney and refer to themselves as such. The training in IP law that Israel Patent Attorneys undergo includes two-year mentoring which is twice as long as that of law students. Both the written and the oral exams are difficult and the oral exam in particular, has a very low pass rate, particularly when considering the academic qualifications of the participants. Indeed I suspect that this book will be very widely used by trainee patent attorneys preparing for the Israel Patent Office oral exam.
The book, including it’s cover, weighs in at 1022 grams. It’s an attractive volume.
Intellectual Property Law and Practice in Israel by Eran Liss and Dan Adin, Oxford University Press May 2012 – ISBN: 9780199917419 (13-digit) ISBN: 0199917418 (10-digit) – $225 from the publishers.
The Essentials of Patent Claim Drafting is a straightforward guide to drafting claims, aimed at the beginner. To the extent that one can learn to draft claims from a book, this is not a bad tutorial.
As with many such works, it is strongly biased to mechanical type drafting. The claim style is a little long-winded and pedantic for my taste. The focus is on USPTO requirements, but nevertheless, in my opinion, a chapter dedicated to the differences in US approach, from say, that of the EPO, would be a valuable addition.
The focus is on obtaining patents. Since ultimately a patent might be litigated, there should perhaps be some discussion on claim construing in Marksman hearings and the need to make sure that terms cannot be misinterpreted.
Nevertheless, a useful guide for beginners.
- Paperback: 224 pages
- Publisher: Oxford University Press, USA (November 17, 2011)
- Language: English
- ISBN-10: 0199856354
- ISBN-13: 978-0199856350
Rules for Patent Drafting
There are many books that relate to claim drafting. Rules of Patent Drafting by Joseph Root is different in that it relates to drafting patent specifications, not merely the claims. Its premise is that when a patent is litigated, terms not mentioned in the claims but used in the specification may be read into the claims by the court during claim construction in the so-called Marksman Hearings, so it is important to carefully consider the specification as a whole when drafting applications, and not merely the claim
Instead of moaning about what the courts do to patent claim interpretation in Marksman hearings, the book suggests internalizing the court’s approach and reconsidering one’s patent drafting, and provides rules for so doing. In particular, the book suggests writing longer and more detailed disclosures, while taking care not to describe optional features as necessary ones, of course.s. The book implicitly rejects the idea propagated by do-it-yourself patent guides, that the inventor can write his own application and simply have a patent agent or attorney draft the claims.
The contents and insights are refreshingly different from the type of thing that seems to be rehashed in books aimed at beginners. Furthermore, the author, Joseph Root, supports his contentions and illustrates his approach with reference to Federal Circuit Court of Appeal decisions.
Unlike most books on claim drafting that seem to focus on mechanical or electronic systems, the author relates to both the predictable and the unpredictable arts, and instead of simply saying that they are no longer popular, doesn’t shy from tackling means claiming in a thorough manner.
What is particularly refreshing though, is the style. The author emphasizes his points with similes and metaphors taken from an impressive range of books, films, and TV series. Despite thoroughly addressing weighty subject matter, the book is not a heavy read.
Design Law European Union and United States of America, Uma Suthersanen, Sweet & Maxwell, 2009
http://jiplp.oxfordjournals.org/pdfThe title of this book, Design Law: European Union and United States of America is somewhat of a misnomer. Despite being a relatively thin 276 page volume, it covers the protection of designs more widely that simply describing the sui generis design law in the two jurisdictions. The book also covers the protection of objects under copyright, trademark law, unjust enrichment and unregistered design rights. This is, therefore, a useful reference work, as a practitioner would be likely to consider alternative forms of protection and causes of action, particularly if the relevant sui generis design law were inapplicable. For example, if the object to be protected was specifically excluded, or if no design application had been registered in a timely manner but the article was, nevertheless being copied; or if a design had been registered for the object but the right had expired.
or in text format: http://jiplp.oxfordjournals.org/text
Theasurus of Claim Construction
I was very excited when Stuart Soffer, a Non-Resident Fellow, Stanford Law School Center for Internet and Society informed me of his forthcoming book, “Thesaurus of Claim Construction” which is co-authored with Robert C. Kahrl, a long term partner at Jones Day. Such a book is long overdue.
The nice people at Oxford University Press kindly sent me a copy.
The work is mostly an alphabetic arrangement of words and phrases that have been construed in the course of patent litigation and includes over 7000 entries. Since such constructions are, by definition, rulings regarding the meaning of the word or phrase in the specific context. Consequently such constructions are not binding precedents and aren’t even much use as an indication of what a phrase would be interpreted to mean in another claim construction. Nevertheless, the definitions do show what the words could be taken to mean.
The range of words and phrases that have been the subject of claim construction may be surprising to some. Chief Judge Markey in Senmed vs. Richard Allan Medical Industries, Inc 888 F.2d 8215, 819 n. 8 (1989) commented on a construction of the word ‘on’ in a claim, that;
“lawyers may create a dispute about any word”.
Chapter 1, ‘How to use this book’ is well worth reading, but I rarely bother with user manuals and certainly have no intention to review a user manual for a book, so will move on.
Chapter 2, titled ‘Outline of the Law of Claim Construction’ is a must read for litigators and is valuable reading for practitioners drafting claims. Personally, I believe that expensive disputes could be avoided by using words more carefully, preferably in accordance with their regular meanings and with definitions in the specification. Nevertheless, it is valuable to review the hierarchy between dictionary definitions, the specification, extraneous sources and the file wrapper. There are also differences in how the preamble, transitional phrases and limiting clauses are interpreted. It is useful to remember that the correct construction is what the word meant at the time of filing, apart from the cases where limitations crept in during prosecution.
The lion’s share of the book is devoted to Chapter 3, an alphabetical list of “Simple terms” that have been construed at some time or other, with indications of which definition and which party prevailed and which constructions were rejected. The entries are referenced with the details of the court dockets for further reference.
The list starts with a construction of the symbol %, and reminds us that compositions should be given as weight percent, or volume percent, and that it should be clear if the percentage is of the total composition, or of only part. The next words to be examined are ‘a’ and ‘the’. One can understand why a term like ‘AC energy’ required construction as it is ambiguous, since current is measured in amps and energy in joules, but who would have the foresight to define whether ‘AC wave’ implies the wave created by a varying current over time, or whether the direction of the current has to keep reversing? Likewise the effect of adding words like ‘about’ in a claimed range becomes clearer on reviewing the way such claims are construed.
It will be appreciated that words beginning with letters B through Z have also been construed and this review is not intended to comment comprehensively on all the entries. One can amuse oneself by opening randomly and seeing what terms have been discussed though. For instance, in a particularly adolescent moment I discovered how the court interpreted the term nipple cover.
In Allure Home Creations vs. Zak, the term ‘second vessel’ was interpreted to mean ‘a preformed sealed vessel enclosing a first liquid and an insoluble structure floating on the first liquid. One presumes, therefore, that the context had nothing to do with first and second vessels relating to reheating foodstuffs on the Jewish Sabbath without violating the Biblical prohibition of cooking – tha is unless the claimed invention related to chicken soup with kneidlach (matzo balls).
One of my esteemed Israeli competitors has the endearing habit of defining the word plurality to mean ‘one or more’ in his specifications. Native English speakers working for him have been unable to convince him that this is simply wrong. I was pleased, therefore to see that the many constructions of the word plurality all take the word to mean at least two. Nevertheless, one wonders how his claims would be construed.
The book relates to litigation in the US, but, since the US is an important market, and because judges everywhere seem to have little scientific aptitude and lawyers everywhere play semantic games, the book will appeal to an international audience.
In addition to giving the history of Marksman there is also a valuable chapter on ‘means + function’ claims and how they are construed. Apart from guiding litigators, the book may help claim drafting, should help designing around, and will prove invaluable to practitioners required to express opinions about the work of others. It is also an impressive addition to one’s shelf of dictionaries and reference books, since it has approximately similar dimensions to standard editions of Roget’s prior art.
Thesaurus of Claim Construction, Robert C Kahrl and Stuart B. Soffer, Oxford University Press 2011. Well worth the $295 asking price.
Innovation, Intellectual Property, and Economic Growth by Christine Greenhalgh and Mark Rogers (Jan 24, 2010)
Reviewed by Michael Factor in the Journal of Intellectual Property Law & Practice 2011; doi: 10.1093/jiplp/jpq211
The knife-edge on which the intellectual property law tries to balance is that of defining enough private property rights to preserve adequate incentives for innovation while avoiding the gift of excessive monopoly power, which will lead to socially inefficient exploitation of that creation.
This book analyses the effect of intellectual property rights (IPRs) on the market. While certainly capitalists, the authors view Milton’s free market as a system that is inherently inefficient at wealth maximization and prone to duplication of effort and wastage. The market thus needs intervention and regulation to optimize the usage of resources and to maximize progress.
The book takes the position that IPRs, by granting property rights over intangible assets, moderate the forces of the market and promote progress. The optimal periods of protection for patents and copyright are those that find the correct balance between the creator’s rights and the public domain or the free market, to encourage development and progress. The difference between the protection given by …[Full Text of this Article]
”Winning the Patent Damages case, A litigator’s Guide to Economic Models and Other Damage Strategies” by Richard F Cauley, Oxford University Press, 2008 is a handy 155 page flexible covered book that covers this esoteric field.
Cauley believes that the parties in patent litigation too often concern themselves with proving or disproving infringment and do not put enough attention into calculating and proving the scope of the damages by vigorously pursuing a hypothetic negotiation to work out what would reasonably have been agreed by the parties.
The book is well written and may well be a good guide to how to litigate cases of this (more)
Copyright in Jewish Law – a book review
The Hebrew title of the book is titled creator’s rights (or privileges) in Jewish Law, using the term Zechuyot haYotzer. The English version renders the term as copyright. Although the book focuses on copyright issues, it does also relate, albeit briefly, to patents, trademarks and to the moral right of an author to be recognized as such. All these are referred to as copyright. This is somewhat confusing as they are different types of intellectual property that serve different purposes, protect different types of subject matter and for different time periods. Thus the term intellectual property right or IPR would perhaps be a more useful term.
The book raises more questions than answers. In the forward the book defines copyright as the restriction against duplicating an idea or an object. It is however axiomatic to secular copyright law that ideas per se are not protectable, but rather they need to be fixed in some manner, and objects are usually protected by design rights or patents.
The introduction and overview explain that the majority of Rabbinic authorities consider ownership over intangibles as being of Biblical origin. However…(more)
Patents for Chemicals, Pharmaceuticals, and Biotechnology, fundamentals of Global Law, Practice and Strategy
Written by senior IP counsel at Novartis, Philip Grubb and Peter Thomsen, both also lecturers in academia, this book is a well-written authoritative overview of patent protection for pharmaceuticals, chemistry and genetics that is a “must read” for practitioners and industrialists in this area.
Whilst it is clear that the authors are biased towards the drug development industry, the genetic viewpoint is covered as well and there is an attempt to be fair. The authors acknowledge that most genetic challenges are aimed at secondary patents that attempt to prolong the period of protection and there is even an admission that sometimes patent applications are filed where it is difficult to argue inventive step or even novelty, and the pejorative term evergreening is used to condemn such activities that bring the drug development industry into disrepute.
The book covers the legislative development and main case-law, comparing and contrasting between the practice in the UK, US, Japan and Continental Europe, particularly Germany and (more)
The Implementation game – The TRIPS Agreement and the Global Politics of Intellectual Property Reform in Developing Countries by Carolyn Deere is an analysis of how different developing countries implemented their TRIPS agreements. A nicely bound, 342 page book with 68 pages of biography, this is a library reference work in every sense of the word.
The book is a thorough analysis of an important topic. The subject matter is, however, somewhat dry, and my first impressions were that whereas no Law, International Relations or Economics library should be without it, few busy patent practitioners would find a book about implementation and enforcement in the third world sufficiently pressing to read the material. (more)
Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, is a kind of handbook for actual and aspiring in-house IP managers. Although it does not assume knowledge of IP, and defines trade secrets, patents, and other basic concepts, the book is not merely for new-comers, but includes much that licensed patent agents or patent attorneys will find interesting, particularly those that switch from working for service providing law firms to becoming in-house counsel.
Rather than to teach how to draft patents, the book teaches how to create an IP culture for a corporation. Infringement and competitors IP is discussed before how to plan a patent portfolio. Trade secrets and confidentiality are discussed before patents.
There are some very useful tips regarding (more)
The Invisible Edge is a book by Mark Blaxill and Ralph Eckhardt, two Boston Consulting Group Economists, that tries to explain how Intellectual Property can be considered as assets that have very real effects on business valuations.
Starting with an analysis of how materials and design can improve sports performance, the book argues that the Industrial Revolution would not have happened if James Watt had not had a patent on his steam engine design that enabled him to attract investment capital. The book makes a compelling argument that economic growth is fueled by intellectual property and that by considering patents and trademarks as expenses in the balance sheet and profit and loss account instead of as assets, Intellectual property is generally undervalued. (more)
This book was written by a patent attorney in private practice who had previously worked for over 30 years as a patent attorney in-house at Bell Laboratories (AT&T and then Lucent).
The book tackles the problem of abstracting the inventive concept from a technology and claiming it as widely as possible, with minimal limitations. It is not a guide to passing the US Patent Bar, but is rather aimed at practicing attorneys wishing to hone their skills.
There is a good analysis of the pros and cons of means-plus-function claiming as opposed to claiming structural components. The book demonstrates how claims can be tightened, and how to avoid unnecessary limitations like descriptive labels in claims, modifiers, unnecessary elements that are part of an embodiment but not part of the invention, advantages and uses – i.e. material that belongs in the description and perhaps has a place in dependent claims.
The need for the claims to define the invention, not to explain it is stressed, and why words such as for… are best avoided (more)
To me, the significance of the book is not so much what it says, but that it says it in Hebrew. There is, therefore, a reasonably chance that it will have an influence on Israeli policy makers. Briefly, the book explains the differences between academia and industry, and why academics should have State support whilst doing basic research, yet should be able to benefit from their inventions.
The book argues its points well. This is not surprising.The author, Professor Messer-Yaron is the Dean of the Open University and a former Director of Ramot, the Technology Transfer Company of Tel Aviv University. Nevertheless, the book is more of a polemic than a balanced analysis. Although isolated examples are given to support arguments raised there is little supporting statistical evidence included.
It is significant that the Israeli model of rewards to academic inventors has been adopted elsewhere. The Baye Dohl Act and subsequent experience in the US does show that providing incentives to academics to patent their research does oil the wheels of progress.
From time to time, Israeli politicians and liberal arts professors do try to suggest more equitable solutions,than providing academic inventors with a share of the royalties generated by their inventions. Whether motivated by genuine Marxist convictions or, as we suspect, by envy, Whilst this is the situation, an easy accessible, short and authoritative argument showing the benefits of the system is required and this book provides it.
The Capitalism of Knowledge, by Chaggit Messer-Yaron The Broadcasted University (Galei Zahal, 2008)