You advise clients on patent portfolio development – what does this entail?
Advising clients on patent portfolio development matters involves the intersection of various information streams – namely, clients’ business goals, the competitive market landscape, the patent landscape and an institutional knowledge of clients’ patent portfolios. For me, advising begins with listening and observing to gather as much information from clients as possible. In every interaction, I look to unlock as much key technical and product information to form and prioritise a list of inventive concepts based on current and future product development.
Regardless of the volume of work or scope of the services that I can provide, my goal is for each client to view my legal services not as those of a service provider, but rather a collective team member. The key to achieving this goal is to form key relationships and effectively communicate with clients.
How are client demands changing and what impact has that had on the way you manage your practice?
One of the long-term effects of the Great Recession was a trend towards fixed-fee patent prosecution work, which was often accompanied by less flexibility towards year-over-year increases in such fixed fees. This trend has continued, with many clients looking to have greater certainty with regard to their legal fees – for example, by moving to fixed retainers for legal services. To effectively manage legal services in such a new legal environment and avoid being resistive, our firm has adopted a data collection and fee data processing-centric approach to our legal services. This approach allows us to engage as a partner with our clients and flexibly adapt how we provide legal services.
When building high-class patent strategies, what are the key questions companies should ask themselves?
Developing high-class patent portfolios starts with the question of how your patent portfolio will further your strategic business goals. Understanding how clients believe patent assets can assist business goals (eg, furthering product sales, creating licensing opportunities, strengthening defensive positions or facilitating capital development) facilitates the identification of which inventive concepts may be best to pursue.
To discover the key technical and product information that forms meaningful patent assets, I typically engage clients with open-ended questions that allow me to direct the conversation, while also empowering my clients to tell their story. Such open-ended questions can include “what is a problem that you solved or an obstacle that you had to overcome during the development?” or “what feature do you believe distinguishes your product or service?” Finally, it is important to understand how competitors may implement the inventive concept in the context of different products and services.
In the post-Alice environment, is it still possible to obtain meaningful protection for software-related inventions in the United States?
Absolutely! I believe that the consensus among patent practitioners is that the likelihood of establishing patent subject matter eligibility for software-related inventions is improving. The USPTO’s adoption of the Revised Guidance in January 2019 signified its policy shift by establishing a clearer path for patent subject matter eligibility during examination. It is possible to obtain meaningful patent protection following the best practices outlined in the Revised Guidance in combination with relevant case law.
If you could make one change to the current patent regime in the Untied States, what would it be and why?
For more than 200 years, US patent law has included some test for patent subject matter eligibility (eg, Section 101) that originally represented a minimal bar to patent eligible subject matter. In 1952 Congress expressly addressed ambiguities relating to technological evolutions and inconsistent judicial decisions by modifying the test for patent subject matter eligibility to preserve its perceived permissive nature. Since the late 1990s, continued technological evolutions in various industries have again challenged the current definition of patent subject matter eligibility. Rather than addressing this through Congressional action, the US patent regime is plagued with widely shifting and inconsistent judicial decisions and ambiguities in the understanding of patent law. Without question, the single change that would benefit the entire patent regime in the United States would be for Congress to again consider all of the relevant positions and expressly address patent subject matter eligibility.
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