Patent Baristas

Protecting your intellectual property, whether domestically or internationally, is traditionally a complex and costly process. On an international scale, that cost is largely due to translations, with the largest patent filers often budgeting millions of dollars each year to ensure accurate translations are localized for each country in which they plan to file.

Why so much cost? The mistranslation of even a single word can lead to office actions, delayed time to grant, an increased risk of litigation or even the reduction of patent scope and market opportunity for the life of the patent.

Legal teams might hire freelance translators with limited expertise to cut costs or partner with specialized patent agents in each country, especially if they have multiple patents to file in even more countries. The downside to this model is that while these foreign agents are familiar with the designated language, country and culture, there is often no communication between them and the inventor or with translators in other target countries. In addition, freelancers and local agents often lack sufficient scientific knowledge relevant to the patent. As a result, an error found and corrected by an agent in one country can easily be perpetuated as an error elsewhere. A single patent translation services provider, on the other hand, allows for streamlined management of the translation process that enables collaboration between the translator and agents for each country, and with the client.

Working with a single translation provider also allows inventors to often file more patent applications for the same amount of money that they would spend if they were to work with multiple providers. The advantage is that a single provider is able to leverage its capabilities across multiple jurisdictions, while reducing translation-related office actions and overall risks associated with multiple foreign agents and their independent translators.

“An effective IP translation service provider can leverage its resources and best practices in more jurisdictions than possible with one foreign agent, in part enabling patent rights in more geographic cases for the same cost – or even significantly lower,” said Ryan Marshall, a patent attorney and managing shareholder of Brinks Gilson & Lione’s Salt Lake City, Utah, office.

What are the “best practices” a company should consider to ensure quality translations that will help them increase patent filings, accelerate time to grant, reduce office actions and reduce the overall risk of patent?

• People: Patent translations require a fusion of both linguistic and industry-specific expertise. Optimal translation teams should consist of in-country native linguists, scientists, engineers and legal specialists.
• Process: Work with a patent translation service provider that uses a streamlined process with centralized project management, particularly if you are validating a patent in several countries and multiple languages. Working with a single project manager will create transparency, efficiency and accuracy in the translation and patent filing process.
• Technology: Translation technology should bolster the efforts of human translation teams by leveraging previous translations, maintaining a terminology database and simultaneously tracking the status of each patent across all languages and countries. This increases consistency and on-time delivery at a fair value.

By using a patent translation service provider that consolidated work to interactive and specialized translation teams reporting to a single project owner, Brinks’ client was able to validate a patent in 15 European countries, five more than originally planned. According to Marshall, the validation process was much more consistent across all jurisdictions and much less costly than if isolated foreign agents worked on the project in multiple jurisdictions.

The Importance of Trust

Translation is all about trust, as few companies know where inaccurate translations exist until they receive an office action or are in court facing the invalidation of the patent due to a mistranslated or misinterpreted word. Ensuring any service provider you work with (especially one providing the translations of your critical IP) follows best practices can instill the confidence that you’ll receive timely and quality translations, speeding up time to grant and reducing the total overall cost of patent ownership.

Today’s Guest Post is by Guest Barista Michael Degn, vice president of global sales at MutliLing, the innovative leader in intellectual property (IP) translations and related support services for foreign patent filings. He is a native English speaker but also fluent in Spanish. 

Google announced an experiment it says will “remove friction from the patent market and improve the landscape.” The experiment, called the Patent Purchase Promotion, will run from May 8 through May 22, 2015. In it, the Program offers a way for patent holders to tell Google about patents they are willing to sell.

From the Program:

Question: Why is Google doing this?

Answer: We view this as an experiment. We are looking for ways to help improve the patent landscape, and we hope that by removing some of the friction that exists in the secondary market for patents, this program might yield better, more immediate results for patent owners versus partnering with non­practicing entities.

Question: How much money is Google going to spend? How many patents is Google going to buy?

Answer: We don’t know yet. It will really be a function of how much interest we receive and the type of patents that are submitted.

Question: What does Google intend to do with the patents it purchases?

Answer: Google maintains a large patent portfolio. Any patents purchased by Google through this program will join our portfolio and can be used by Google in all the normal ways that patents can be used (e​.g.,​ we can license them to others, etc.).

Question: If Google ends up buying my patent, can I still practice the invention?

Answer: Yes. As part of our Patent Acquisition A​greement​ (s​ee​ section 4.4), sellers will retain a license back to their patent. For you lawyers out there, the license is “irrevocable, non­exclusive, non­transferable, non­assignable (including by operation of law or otherwise), non­sublicensable, worldwide, [and] fully paid­up.”

So, is it worth submitting an offer to see to Google? I guess it comes down to whether or not the patent holder is able to price the technology right. If you are not actively engaged in licensing your patent, I see no downside other than you will need to price your technology right.  Too high a price may get you cut you from the running while too low a price could mean you lose out on the true price of the technology.

I am guessing that they are trolling for bargains from people that do not know better but I could be wrong.  However, a quick look at the submission form shows some insight into Google’s thinking.  Under price, the options provide for checkboxes with ridiculously low prices.  At $10-25K, you wouldn’t even be breaking even on patenting costs with most patents, let alone make a buck.  As I said, you can always submit with little downside as long as you are OK with the price you set if they were to accept.  Plus, it seems you could always submit outside the “experimental” program using the Patent Opportunity Submission Portal.​

According to Abulfas Garayev, Minister of Culture and Tourism, the Ministry has received a patent for the Azerbaijan breakfast brand.

According to the Minister:

“The new brand will be introduced in several hotels for the first time during the European Games to be held in Baku this June. Later it will be introduced in all the hotels of the country in compulsory order. Azerbaijan breakfast is a brand, which will not only promote the national cuisine but also will contribute to improvement of service quality in hotels.”

According to the Minister, the patent was issued only for breakfast because usually tourists have only breakfast in hotels and prefer to spend the rest of the time outside hotel territory.

It’s a little hard to understand exactly what the patent covers for a breakfast consisting of items like sheep-cheese, honey, yogurt, fruit, scrambled eggs with tomato, bread and tea among other items.

Given the translation between languages and the overall propensity of journalists to confuse patents and trademarks, I wonder if this isn’t actually a trademark for the name Azerbaijan breakfast.  On the other hand, inventor Eugene Gagliardi made out with his patent on the Steak-Umm (US Pat. No. 5,346,711).

If anyone has a copy of the referenced patent, please send us a note.  We’d love to see the claims…

Last week, John Oliver on his HBO show Last Week Tonight. During Sunday’s episode, Oliver went after so-called “patent trolls,” companies whose sole mission is to purchase patents covering broad ideas who then sue others for patent infringement.

In one part of the segment, Oliver goes on that:

“Most of these companies don’t produce anything — they just shake down anyone who does, so calling them trolls is a little misleading — at least trolls actually do something, they control bridge access for goats and ask fun riddles. Patent trolls just threaten to sue the living shit out of people, and believe me, those lawsuits add up.”

Now, Patent Yogi has produced what it says is an “epic takedown of John Oliver’s video on patent trolls.”

According to Patent Yogi:

“John Oliver is on the spot in most cases. However, in his video on patent trolls, most of what of he said was essentially wrong.  Therefore, we have prepared a response to present all sides of the debate.”

I received a copy of First to File: Patents for Today’s Scientist and Engineer (Wiley 2014), by M. Henry Heines a while ago and have just had time to sit down and read through it.  Overall, I really liked the book and its coverage of topics.

As the title suggests, this book covers patent law from the perspective of post-enactment of the Leahy-Smith America Invents Act of 2011.  First up, the book covers the transition by the U.S. to a first-to-file system and delves into just who is first. In a Who’s on First? analogy, Heines takes us through the difference between competing filers (applicants) versus competing inventors.

The examples and figures do a good job of highlighting the important points of the law.  The most critical piece is the coverage of canceling prior art and the derivation proceedings process.  As pointed out by the book:

Where patent applicants have previously been able to prevail over competing patent applicants as well as eliminate certain prior art by producing laboratory notebook pages, internal memoranda, research reports, and other documentation of an early invention date, the AIA shifted the applicant’s emphasis from this type of documentation to the effective filing date of the patent application…  What value then does record keeping still have?  It has considerable value…

The 196-page book includes appendices on patent fees, patent searchers, two glossaries, a bibliography, lists of patent applications and legal cases sited and an index.

While not light read for the average scientist or engineer, it certainly provides practical insight into the current state of patent law and practice.

You can get your own copy here: First to File: Patents for Today’s Scientist and Engineer (Wiley-AIChE; 1 edition; October 13, 2014), by M. Henry Heines

About the Author

Author M. Henry Heines is a patent attorney, consultant, and author and speaker on patent-related topics, with a publishing history that includes over sixty articles in technical and legal journals and two books and a third in production, all on patent law for the technical business community. The third book, entitled “First to File: Patents for Today’s Scientist and Engineer,” complements and expands on the first two by incorporating the America Invents Act plus other topics of current and emerging interest supplemented with case histories. In addition to his legal credentials, Henry holds a Ph.D. in Chemical Engineering supplemented by additional coursework in Molecular Biology and Immunology, and has practiced patent law in a wide range of fields including chemistry, chemical and mechanical engineering, laboratory, industrial, and medical equipment, materials science including metallurgy and nanotechnology, and alternative fuels and energy sources. Recently retired from the full-time practice of law, his professional career began with three years as a research engineer with a major chemical corporation, followed by seven years in corporate patent practice and finally 31 years in private practice. Henry’s personal website is www.henryheines.com.

The U.S. Patent and Trademark Office (USPTO) announced the release of the Patent Application Alert Service. This system provides customized, email alerts to the public for free when patent applications of interest are published. Additionally, the system offers direct access to the published applications that meet your search criteria.

Third-Party Preissuance Submissions
35 U.S.C. 122(e) provides a mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application with a concise description of the asserted relevance of each document submitted.

Under 35 U.S.C. 122(e), such submissions may be made before (1) the later of (i) 6 months after the date of publication or (ii) the date of a first Office action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier. Section 122(e) also provides for such fees as the Director may prescribe. This new provision was effective on September 16, 2012, and applies to any patent application.

After receipt of these customized, email alerts, the public may identify prior art for “pre-issuance” submission into these applications. The pre-issuance submission process was established under the America Invents Act (AIA), and to date, the agency has received more than 2,600 submissions across all technologies. More information on the pre-issuance submission program and how members of the public can participate can be found here.

User Note:

After having to make up my own Class III, super-secure, Defcon level Ernie password* just for a webpage to be able to receive an email that some publicly-available patent has published, alas I was unable to register for the Patent Application Alert Service in the end on an Apple (MacBook Air) computer using either Safari or Firefox browsers.

Send me a note if anyone is able to register under other means.

Follow-up 04-27-15:

Dave Abbott, Vice President at Reed Technology and Information Services called me personally and helped me quickly resolve my registration problem.  I’m not too proud to admit it was user error.  The registration page won’t allow you to click the checkbox to agree to the Terms and Conditions without scrolling down through the aforementioned terms.

In small, light grey print, it does state:

You must scroll through to the bottom to accept Terms and Conditions

While I believe no one is going to read the Terms and Conditions — scrolling or no scrolling, Abbott did say they’d look into making this note a little easier to see on the page.

*Read here to understand why this is a stupid password policy.

Mergers, acquisitions, in-licensing and out-licensing have dramatically increased in popularity as a revenue stream for life science organizations. This is due to both the length of time it can take to research a new product from the ground up, and the progressively crowded marketplace. The life sciences industry has experienced success through increased licensing, which has moved it from a secondary activity to a necessary measure to ensure a healthy bottom line.

Big pharma, innovative biotechs and medical device companies have millions of dollars riding on the success of licensing deals. A deal gone wrong can mean massive debts and wasted resources on all sides. It’s crucial to be able to find a licensing partner you can trust, and to be able to search out and identify potential partnerships and valuable products.

ExL Events’ 2nd Due Diligence Summit for Life Sciences, convening in Boston on June 9-10, 2015, was designed after conducting extensive research with your peers and learning about challenges you face and the thought leaders who can help you solve them. This is an educational event focused on how to run a tight ship throughout the due diligence process by presenting you with experienced speaking faculty members from Pfizer, AstraZeneca, Boehringer Ingelheim, and more!

Download the brochure for a complete list of the dynamic interactive sessions, brand-new case studies and innovative tool kits you’ll want to use in 2015.

Want to know more? Download the executive summary from ExL Events’ inaugural forum for an in-depth look at the key findings and final thoughts from the event.

Register by April 24^th to receive the early bird pricing and be sure to mention priority code C613PB. If you have any questions, feel free to email info@exlevents.com.

A marketing company is currently helping CEA and a coalition of other companies (and legislators!) in a project to raise awareness to fight “patent troll” issues and to petition the senate for Patent Legislation Reform.

According to the site, their message is:

Sign our petition now and tell the Senate to focus on patent reform during lame duck. No more excuses!

However, the site does not tell you anything further without having to input all of your information, which we were not willing to do.  The CEA does have lots of anti-troll websites and campaigns and there is no indication how this is any different than previous efforts.

There are now fourteen bills that have been introduced in Congress to deal with some aspect of the patent troll issue, such as:

• Innovation Act (H.R. 3309)
• Patent Transparency and Improvements Act (S. 1720)
• Patent Quality Improvement Act (S. 866)
• Patent Abuse Reduction Act (S. 1013)
• Patent Litigation Integrity Act (S. 1612)
• Transparency in Assertion of Patents Act (S. 2049)
• Patent Fee Integrity Act (S. 2146)
• Trade Protection Not Troll Protection Act (H.R. 4763)
• Demand Letter Transparency Act (H.R. 3540)
• Innovation Protection Act (H.R. 3309)
• Patent Litigation and Innovation Act (H.R. 2639)
• SHIELD Act (H.R. 845)
• Stopping the Offensive Use of Patents Act (STOP Act) (H.R. 2766)
• End Anonymous Patents Act (H.R. 2024)

The problem is, there is no single, universally accepted definition of a patent troll. The term is generally applied to companies that don’t create (or intend to create) any products or services but instead assert patents as their sole business model. Other terms for patent trolls include non-practicing entities (NPE) and patent assertion entities (PAE).  Unfortunately, one person’s troll is another person’s champion of (their own) patent rights. It is very difficult to legislate a solution to the patent litigation abuse problem without affect- ing the intellectual property rights of legitimate companies.

The Patent Transparency and Improvements Act (S. 1720), which was introduced by Senate Judiciary Committee Chairman Patrick Leahy (D-VT) last November, is the main Senate bill currently under consideration.

The Senate Judiciary Committee has focused on fee-shifting provisions, which would require the losing party in patent litigation to pay the prevailing party’s attorneys’ fees. The Innovation Act (H.R. 3309) passed by the House has a provision that shifts attorneys’ fees unless the court finds that the losing party’s position and conduct were “reasonably justified in law and fact” or there are “special circumstances” making an award unjust. The current version of S. 1720 does not include any fee-shifting provision.

It remains to be seen how these issues will be sorted out.  In the meantime, you can view the video and petition at http://p2a.co/xfcZHLU and follow them on twitter @PatentFix.