The IP Factor

Despite having piles of work accumulating after INTA last week, I was privileged to attend the IPR conference in Tel Aviv on Monday and Tuesday. This was the fourth annual conference on Best Practices in Intellectual Property, and organizer Kim Lindy had lined up a well thought out program with some impressive speakers such as David Kappos, the former director of the USPTO and Dr Joo Sup Kim, the Vice President of IP at LG Electronics.

Most of the presenters and moderators were practitioners from abroad whose firms were subsidising the event. Nevertheless, the sessions were practical and meaningful, and the training sessions the following day were well constructed and well presented. The speakers took care not to cover the same material. The cost required from participants was low and the conference was very good value for money.

This was less academic and more practical than the AIPPI conference held a couple of months ago, . From a head-count, attendance hovered at the 100 mark including the numerous speakers. the audience consisted mostly of in-house counsel in industry but also some of the junior attorneys at a couple of the larger firms. As usual, most practitioners in private practice, particularly the senior partners, boycotted the event. However, to be fair, following closely both INTA and Biomed may have made it difficult for some to find the time. Clearly, from the non-attendance of the IPAA general meeting, that wasn’t a reason for service providers not attending as they ignored that as well, but the AIPPI conference being held in March instead of in the autumn can’t have helped.

As the topics covered included the new unitary patent in Europe, 101 rejections in the post Alice wonderland, EPO opposition procedures and other up-to-date topics, I think that those private practitioners who did not attend but continue to give expensive advice to clients are doing those clients a disservice.  I found the sessions sufficiently interesting that I chose from the three tracks on offer and did not flit from one session to another to be able to fairly review the event as a whole.

The Sheraton is a quality hotel and the refreshments, from breakfast, through coffee breaks, three course lunch and Finnegan sponsored cocktail reception, reflected this.

With typical American jingoism, former USPTO director (and Howard Poliner lookalike) David Kappos spoke about the importance of continued US preeminence in patenting after the forthcoming presidential elections, regardless of the outcome. Despite his convictions, and although finding Milton Freedman both more convincing than Marx and far more readable, I don’t see how a free market economy can compete with a directed, centralized economy having a much larger population and pursuing IP with vigour. I expect that over the next presidential term of office, the US will fall behind China in all meaningful measurements of IP. Personally, I found the presentation of the other keynote speaker, Dr Joo Sup Kim of LG, disappointing and lacking in deep insights.

Daniella Azmony and Michael Fink of Greenblum and Bernstein co-chaired a session on using IP to advance business objectives. On the panel, Gerson Panitch of Finnegan, Henderson, Farabow, Garrett and Dunner pushed the importance of patent mining. He noted that he was able to find inventions to be patented for his clients that the engineers considered obvious. This strategy may explain how Finnegan got to be the largest IP firm and why the firm was celebrating its 100th Israeli client (a number I surpassed years ago). The problem is that Finnegan’s Juristat_Top_100 (1) filing ranking of 22nd is far above their allowance ranking of 115, their number of office actions to allowance ranking of 115 and their time to allowance ranking of 126. In other words, it is not just the engineer inventors that are not convinced that their inventions are patentable, but Finnegan seems to have a problem convincing the Examiners as well! Where they do succeed, it is a long, hard slog. Thus their service is not merely expensive and overly US focused, but they don’t deliver the goods either. In a further session, Finnegan partner Jeffrey Berkowitz referred to the firm calling the director of the USPTO to complain about specific Examiners. This arrogant and aggressive tactic doesn’t seem to help them  get cases allowed either. Nevertheless, the canapes at their celebratory cocktail party after the conference were delicious, with seared tuna, smoked salmon, chopped liver pate, and other nibbles. The cocktails themselves were Bucks Fizz, and tasted like orange juice that has began to ferment. Finnegan also provided a live band (not Bucks Fizz, but a three-piece suite brass band). They certainly know how to throw a good party.

Dr Kim and  Barry Schindler (Greenberg and Traurig) held what was romantically called a fireside chat, but no fire was in evidence. There were parallel sessions for beginners and more advanced. There was little in the way of swag. Kim Lindy gave everyone a mobile phone charging lead on a reel that was apparently sponsored by Finnegan but for some reason did not have their logo on, IP Factor gave out boxes of their PC Teabags, a type of patent medicine and cure-all for treating IP related stresses, and Mintz Levin gave out a useful book reading lamp consisting of white LEDs on a flexible stem.

The following day had several parallel master classes. In the ones I attended, Jakob Pade Frederiksen of Inspicos P/S, a Danish firm gave a very good presentation about EPO Oppositions which are quite different from Israeli and US opposition procedures. This was followed by Barry Schindler (Greenberg and Traurig) who gave an excellent though quirky presentation, arguing that when responding to office actions in the US, accusing the Examiner of using inadmissible hindsight was a waste of time, as was citing case-law since very few examiners had a legal background.  Respectfully noting various arguments was unnecessary. He explained how examiners are taught to examine and the limited time available to them. He advocated citing from the M.P.E.P., amending claims to make the examiner feel good, incorporating explanatory wherein clauses from the specification and limiting substantive arguments to two pages. Much of what he said made sense, albeit some comments were somewhat exaggerated.

If I have a criticism of the event, it is that I think that a session on prosecuting patent applications in Israel would have been a valuable addition. Some of the in-house counsel were involved directly or indirectly in expensive and time-consuming oppositions before the Israel Commissioner. Personally, I think that in the post IAI era, first filing in Israel makes sense, and filing in Israel offers a good tool against ex-employees competing with Israel companies. However, from issues discussed over coffee, it seems that one in-house counsel files provisionals and Israel applications simultaneously but can’t explain why, calling it inertia. One lawyer felt that standard assignment contract clauses were adequate, but admitted to having no idea of the case-law. When discussing a presentation made on behalf of the IPAA to entrepeneurs (where I was on the panel reviewing slides), it was clear that some eminent members of the profession were unaware of renewal schedules for Israel patents.  It seems that apart from occasionally reading this blog, many Israel Patent Attorneys do little to keep up with local developments once they are licensed. I think this is a shame.