Following the one day Best Practices in Intellectual Property Conference that was held on Monday, there were a number of so-called ‘Master Classes’ held Tuesday morning. Each one is a fairly intimate half day seminar dedicated to exploring some aspect of patenting.
The air-raid siren practice drill took place in the middle, and I am reliably informed that in some of the master classes, everyone squashed up under the table. That as may be…
Master Class 1 – was a seminar by Daniel Ovadya of Questel. The seminar was on various tools for:
- aligning invention disclosures with an over-all strategy, improving their quality, and speeding up the decision-making process.
- following IP costs, matching them with business units, and challenging the filing strategy
- The difference between prior art and freedom to operate searches and combining efficiency with quality
- Analysis, common error and misinterpretations
I did not attend this session. It may well have been (in)valuable for in-house counsel, but my needs, experience and skill set are somewhat different.
The Master Class 2 was given by Barry Schindler of Greenberg Traurig and focused on Inter-partes Review – IPR (not to be confused with Intellectual Property Resources; also IPR). Barry offered some advice for being proactive during prosecution to prevent medical devices and life science patents being killed during the Inter-partes Review.
I did not attend this session. I do handle medical devices and implants, and have written up and even obtained some enforceable method of treatment patents. If I could be everywhere, I might have attended this.
For some reason quite beyond me, there was no Master Class 3.
Master Class 4 covered PTAB patent proceedings and features various Finnegan attorneys, including Trenton Ward who used to be a PTAB judge, together with other partners of Finnegan.
I did not attend this session. I sat through the mock PTAB trial US 101 trial on the Monday, and was looking for something more interesting.
Master Class 5 was presented by the Brooks Kushman team and was dedicated to Proactive Defensive Measures to Succeed at Patent Enforcement.
On Kim’s advice, I attended this session. I discuss it below.
Master Class 6 was dedicated to drafting the strongest possible patent application, and was lectured by Lexis Nexis staff.
Lexis Nexis is basically a reincarnation of Reed Elsevier and Butterworth and MacMillan via Mead Data Central. The company does computerized legal research tools and data. I am sure that their staff can access and analyze decisions and rulings around the world and probably can pick up valuable tips in each and every one of the master classes. However, I a master patent draftsman myself. I have drafted applications in a very wide range of technologies and have had valuable patents issue in the US and elsewhere. I get work referred by experienced IP professionals and experts and have corporate clients that come back. I have my own ideas on how to draft patents, and am aware of client’s budgetary concerns, the difference between what is considered best US practice and best practice for Europe, and the need to keep things relatively short and clear for translation and prosecuting in the Far East.
So, I went to Master Class 5. I found myself joined by patent attorneys from a couple of other Israel IP firms and also one from the UK, all with several years experience. I found the session rather stimulating. It seems that one of Brooks Kushman’s clients is what is commonly referred to as a troll. However, they refer to it as an IP Finance Group.
Apparently, when an alleged infringer is informed of the alleged infringement, they have a 12 month window to instigate an inter-partes review. If they do so, the patentee is exposed to their arguments regarding validity. In addition to the common strategy of keeping a continuation alive so that one can draft claims that read on the alleged infringer’s products, what Brooks Kushman’s attorneys suggested is that the patentee could have the issued patent reexamined and amend the claims, and only afterwards, once the defendant has missed the boat for challenging the validity of these new claims, add the new claims to the complaint. In other words, they proposed a rather expensive but powerful submarine patent tool. Their time-keeping could have been better, and one of their speakers didn’t have time for his presentation at all.
Every patent jurisdiction has its foibles, special features and loop-holes. the US patent law used to be completely different to that of the civilized world, but has largely aligned itself to other systems over the past 25 years. In fast-moving industries, patents are often only filed in the US, and due to ridiculous disclosure laws and inflated damages awards, it is still the country of choice for trolls. Knowing that such esoteric procedures exist and which firm has expertise is very valuable.
I was reminded of the infamous Pearl Cohen Vagabond infringement law suit, where counsel tried to enforce a client’s patent against a competitor that clearly was not infringing the claims. A more competent team of attorneys might would presumably have written better claims when drafting the original patent application, and also avoided the ethical conflict of litigating a patent they had themselves drafted. That as may be, it is good to know that if one wishes to enforce a patent in the US, in certain instances, one can actually tidy up the claims before so-doing.
I don’t have a problem per se with patentees outsourcing their enforcement to a specialist IP Finance Group. I create patents for various clients for a variety of reasons, but ultimately a patent is a limited monopoly that can be asserted against third parties. So long as abuses of the system are due to failures of the courts, there is nothing wrong in companies using enforcement as a business model. It may be a legal kind of highway robbery and may ultimately contribute little to mankind, but the same can be said about lots of finance related business models. It is no more immoral than day trading. It is good to know that it is more difficult to file infringement actions in the Eastern District of Texas and that the courts are more willing to rule costs to the defendant. These issues go some way to prevent abuses. Legal systems eventually adapt to prevent abuses, but whilst legal loop-holes exist that enable the patentee to tidy up claims to trap infringers, as a practitioner, I believe I should know about them, even if they are very expensive procedures that are only of practical value to a small number of companies. I think that my colleagues in other private practice firms should also know about such tools.
It was indeed a master class. The patent attorneys from Reinhold, Pearl Cohen and Withers & Rogers that attended the seminar with me were all experienced practitioners. I doubt that any of them had any intention of handling reexamination proceedings themselves, but I can certainly see one of us referring a relevant case to the Brooks Kushman team.
In general, I do not consider US attorneys better at drafting patents for the US, and at handling regular prosecution in the US that Israeli based attorneys with native English skills with advanced scientific and engineering degrees and specialist knowledge of IP law. Patent drafting is an acquired art, but after successfully drafting and prosecuting scores of patents and by reviewing major cases, reading the literature and attending seminars, I don’t accept that an Israel based attorney is less competent than one living in New York, Washington or California. I am a strong believer that the drafting attorney should visit the client’s premises and actually look at the invention where possible. He or she should lead on prosecution strategy in all jurisdictions and because of the sheer numbers of my cases being prosecuted in the US, I generally draft ready-to-file responses using associate’s templates.
However, the associate is not a rubber stamp. I expect the agent of record to review my response and to pick up on any claim numbering errors, missing antecedence issues that can creep in, or objections inadvertently not addressed. I expect the associate to revert to me if an argument seems weak or unclear, or maybe to selectively suggest a relevant legal precedent. In other words, I want the associate to review the response rather than to rubber stamp it. Where the Examiner’s objection is not clear, I will want the associate to interview him or her and report back with details of what the issue is.
Some Israel based practitioners are very competent and some US attorneys are as well. US-based practitioners may well have advanced knowledge of various esoteric procedures, but in the days of the Internet, most attorneys can discover such tools where neccessary. I find that US patent attorneys tend to be overly parochial and less cosmopolitan than patent attorneys based in a country such as Israel, who often have a better grasp of European practice and more experience in prosecution in the Far East and other major jurisdictions. I suspect that having local counsel that speaks the same language and has a similar culture to the R&D staff, and who is readily available is highly advantageous with the more standard drafting, prosecution and consultancy. Furthermore, despite the strong Shekel and weak dollar, local attorneys of similar qualification and experience are still typically cheaper than their US equivalents.
However, for litigation related issues, one needs counsel in the jurisdiction in question, and I can understand Israeli clients going direct, rather than engaging and instructing US counsel via local service-providers. Nevertheless, I am pleased that US firms come on these road shows to do their song-and-dance. If and when appropriate, I will selectively refer my clients to such firms.
In the famous hadith, Muhammad advises to “seek knowledge wherever you may find it, even unto China.”
Where high level professional training is available in Israel, patent attorneys, whether employed in-house in industry or in private practice in IP boutiques or as sole practitioners, should take advantage.