A LIFE IN PATENTS

            I started my career right out of law school in 1974 with an offer of employment at one of the leading patent law firms in New York City.  In those days, that made it one of the leading patent law firms in the United States and, by extension, the world.  I recall my excitement walking to work at 30 Rockefeller Center (then named the RCA Building) where the firm had its offices below the famed Rainbow Room on the top floor.  How wonderful it was to be at the center of the Universe working to protect the technological innovations of some of the world’s greatest companies!  Later I co-founded the law firm of Ostrager Chong Flaherty and Broitman, PC, continuing in patenting and intellectual property (IP) law practice.  In my mid-life, after 22 years in New York City, I finally decided to return to Hawaii’s beautiful and easy-going living environment, where I continued my IP law practice with individual inventors and startup technology companies.

            Now over 40 years have gone by and I have decided that the time has come to retire from my lifelong profession.  By my estimate, I have worked on over four thousand patent applications, over half of which statistically issued as U.S. patents.  My work spanned successive waves of technological innovations in my field of electronics, from mainframe computers, to personal computers, to Internet commerce, to mobile devices and, more recently, to smartphones.  In retrospect, my work in patenting was but one link in the ongoing evolution of human tool-making.  Upcoming patent attorneys will continue the work with new waves of innovations in robotics, bionics and biologics, and much more to come. 

            The immediate legal effect of patenting is an official grant by the U.S. Government to an inventor of the exclusive right to make, use and sell the patented invention in the U.S.  This is a grant of rights enshrined in the U.S. Constitution, Article I, Section 8.  And it starts with the happy occasion of the inventor’s receipt of a gold-sealed, red-ribboned patent certificate from the U.S. Patent Office.  What happens after that can go in a wide range of directions. 

Following a period of anti-trust enforcement in the 1960s and 1970s against large corporations monopolizing markets in the U.S. economy by accumulating large thickets of patents, Government policies in the past four decades have shifted to incentivizing individual, university, non-profit, and small company inventors (“small entities”) to develop innovations with greater speed and creativity than large companies can.  This started with the Bayh-Dole Act in 1980 enabling small businesses to retain title to inventions developed in Federally-funded research programs.  With corporate R and D budgets subject to tightening for better bottom lines to appease stock market investors, patenting has shifted away from primarily corporate inventions to small entity inventors receiving over one-half of all U.S. patents granted annually. 

In a conventional business model, small entity inventors will try to start up or partner with new businesses to commercialize their inventions.  Most do not succeed, primarily due to difficult business circumstances, but also because early attempts to design, produce and sell a new product or service require some vetting in competitive markets before it becomes attractive enough to purchasers to command a significant market share.  Faced with making a huge investment of time and effort, and a high business risk of failure, small entity inventors may instead seek to license or sell their inventions, and the patents that legally define their exclusive rights to those inventions, to large companies with already-established positions in the relevant markets.  Large companies, with innovation constrained by tightened R and D budgets, also have become more open to “licensing-in” outside innovations, as long as the cost is less than expensing their own efforts.  These trends were accelerated with the Internet becoming publicly accessible as a global network in 1993 to anyone anywhere, which started the “dot.com” revolution in new e-commerce applications and mobile device technologies.

Licensing-in outside innovations is a marriage of convenience that can work well initially, but inevitably can lead to demands for higher licensing fees or sale prices, and to large companies choosing to develop their own versions on innovation ideas if the patent owners’ demands seem too high.  A seminal event that captured headlines worldwide in 2006 was when the Canadian company Research In Motion (RIM) that popularized the Blackberry mobile device was sued by and settled the claims of the patent owners for $612 million in order to continue to operate its Blackberry network.  A flood of so-called “patent troll” lawsuits followed, routinely seeking billions in patent infringement damages, with the threat of a court injunction against further usage as leverage.  Over time, with plaintiffs’ lawyers being ever creative, large numbers of lawsuits were being prosecuted on sometimes dubious patents, and vigorous litigation tactics tended to devolve into artful gamesmanship.

Although abusive patent litigation tactics occurred in only a minority of cases, negative news reportage on “patent troll” litigation made it seem like this was another example of opportunistic “sharks” using the legal system for payoffs of huge undeserved gains, much like how the packaging of collateralized debt obligations was abused to rig the financial system.  Patent reform bills were lobbied for and eventually the America Invents Act (AIA) was enacted in 2013, which, along with changing the U.S. to a first-to-file invention priority system, had the effect in litigation of opening patents to repeated re-examination challenges upon any qualified requests to the U.S. Patent and Trademark Office (USPTO) over the patent term.  At the same time, U.S. courts have been issuing decisions that toughened the requirements for upholding the validity of patents, diminished the scope of infringement damages recoverable, and made injunctions against infringement difficult to obtain for non-operating patent owners.  The net effect of this backlash against the assertion of patents has been to make patents too costly and too difficult for small entities to defend, and turn their value for large companies into litigation assets to be amassed for defense against infringement suits by competitors or for billion-dollar sale in corporate divestment.

Patent policies have thus reversed course over the four decades of my law practice, from sanctioning large companies for using them as tools to create industrial monopolies, to preventing small entities from using them as tools for extracting payoffs from large companies.  As a result, the value of patenting has been diminished as conventional methods of extracting value from them have been upended.  The one exception is in the pharmaceutical and medical industries where patents are still used to preserve market exclusivity to enable companies to recoup the large investments needed to develop FDA-approved drugs, medical therapies and devices.  In the long view, perhaps this market-exclusivity model for use of patents is the correct (or more correct) outcome, that is, policies that effectively discourage use of patents to extract opportunistic “rent-seeking” gains, and instead enable patent owners to recoup investments in bringing new products to market.

So my advice for the upcoming generation of patent attorneys is to be prepared for the current trend of diminishing value in patenting to continue, with consequent decreasing of law firm job opportunities and salaries, except for those companies that are making the investments necessary to bring their innovation products to market.  Patent validity will also continue to be stringently scrutinized in the USPTO and in litigation, which means that patent drafters will need to be increasingly more technical in scientific competency as well as up-to-date on developments in patent law.

            For individual and small company inventors, my advice is to expect that it will increasingly prove too long, costly and uncertain to try to enforce patents in order to recover licensing fees from well-defended large companies under current policies.  Again, the better business model for patenting in at least the near-term is to defend market-exclusivity for new products that are introduced in relevant markets.  As for further patent reform, don’t expect a Trump Administration committed to preserving jobs at companies kept in the U.S., and a fiscally conservative Republican-controlled Congress opposed by a fractious Democratic minority, to pass a patent reform bill that shifts patent policies away from favoring large companies to bolstering the enforcement rights of small entities.

            I feel fortunate to have been in law practice during an exciting period of dynamic changes in technological innovation.  Going forward, I will continue to write on developments in patenting and IP law that may be of interest to technology communities in Hawaii, and will remain available for consulting on IP-based business strategies.  And to those that continue in patenting, I confer the Spockian valediction, “Live long and prosper”.

Why It May Still Be Worthwhile to Try to Patent Your Business Method Invention

Since the 1980s, the U.S. Patent Office has been the leading pioneer in the world in enabling the patenting of business method inventions.  For over four decades, we have seen the many surprising twists and turns of U.S.-style business method patenting, from Merrill Lynch’s enforcement of its Cash Management Account patent against Paine-Webber in the early 1980s, to the wild-and-woolly patenting of ecommerce usages when the Internet went public in the 1990s, to the billion-dollar infringement lawsuits brought by investor-backed patent trolls in the 2000s, and to the public, political and judicial backlash against patenting of tax avoidance schemes, method for making enclosed peanut-butter-and-jelly sandwiches, and other fringe “inventions” in recent years.

All the while the U.S. Patent Office and the courts have struggled to keep up with the infinite creativity of patent applicants seeking to patent their new business ideas.  They have sought to define a bright line separating unpatentable “abstract ideas” from patentable uses of such ideas for “manipulation of a tangible machine or process” to enable “significant post-solution activity”.  Meanwhile both startups and giant technology companies alike have been whipsawed by the ever-more spurious semantic attempts of the Patent Office and the courts to define what are unpatentable "abstract ideas", resulting in ever-increasing challenges to patents that were otherwise obtainable under previous court interpretations.

Meanwhile, the patent offices and high courts in other countries have long clamped down on the patenting of business methods.  The European Patent Office and the Japanese Patent Office examiners stringently require that grantable patent claims define specific new “technical effects” for computer implementation of business methods.  The high courts in Canada and recently in Australia have invalidated business method patents which were interpreted as covering primarily abstract ideas.

However, it may still be worthwhile for an aspiring startup company to file a U.S. patent application on its business method invention.  First of all, an applicant is entitled under U.S. Patent Laws to give public notice that it has a “U.S. patent pending” upon filing a patent application, even a provisional application.  This can provide significant marketing advantage, as well as serve as a warning to competitors that copying your product or system may risk legal consequences if a patent is eventually granted.

Secondly, if a business method patent application is drafted with attention to the Patent Office and court pronouncements on how a patent application must disclose a specific, new technical implementation of a business method function, there is still a good chance of a patent being granted by the Patent Office and later being found valid by the courts.  Anecdotal surveys indicate that up to about 20% of business method patent applications are being granted, and statistics on patent litigation in the courts indicate a similar percentage being upheld as valid.  The percentages would be expected to be higher for patent applications that have been drafted to meet technical disclosure requirements more stringently.

Thirdly, a U.S. patent application (non-provisional) is required to be published by the U.S. Patent Office 18 months from its filing date, unless non-publication is specifically requested at the time of filing and all parallel foreign patent filing rights are waived.  Publication of your patent application at 18 months from filing, even if not later granted as a patent, serves as an official record of your invention claim, and becomes a prior art reference that can be cited to prevent any later-filed patent applications by others on the same or similar business method invention from being patented (anywhere in the world).

Lastly, as long as your patent application remains pending under examination at the U.S. Patent Office, it is a business asset that may be valued by a potential acquiring company or exclusive licensee.  While you may not have the budget to pursue patenting after initial rejections in examination, the acquiring company or licensee may have the budget to do so.  The filing date of your patent application is officially recognized by the U.S. Patent Office as your recorded date of invention, and as long as your patent application remains pending, any divisional, continuation, and/or improvement (continuation-in-part) patent applications related to your original invention that are filed by the patent owner are entitled to claim the invention priority date of your original filing date.  Under the U.S. patent system, the right to file divisional, continuation, or improvement applications is unlimited, and can be done up to a hypothetical patent term of 20 years from the original filing date.

In summary, there are significant business and tactical advantages that may make it worthwhile for a startup company to file for a U.S. patent application on its business method invention, despite the current chaos in the U.S. Patent Office and the courts on defining the legal parameters for patenting business method inventions.