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6 posts categorized "Five by Five - Episode 6"

November 03, 2004

Five by Five - Stephen M. Nipper

Our final contributor is Stephen M. Nipper, a registered patent attorney working in Boise, Idaho with the firm Dykas, Shaver & Nipper, LLP and author of the Invent Blog.  His contributions:

What five things would you change about IP law and/or practice?

[What started as "five things" has quickly digressed into a rant to my fellow practitioners about how they need to change THEIR IP practice.  Hope you all don't mind.]

1.  Embrace the future.  Lets face it, the Internet is changing the practice of intellectual property law. Many of the businesses we used to rely on for patent copies, copies of file wrappers, etc., have had to evolve or die as more and more of the USPTO's data and knowledge is made available on the Internet for free.  Do you really think that is the end of it?  Do you think that it is not going to affect IP attorneys too?  I'm afraid that you've got a big surprise coming.  It is time to start thinking outside the box about how we provide our services, how we bill for them and how clients find us.

2. Due to the Internet, people now have unfettered access a litany of information about the practice of intellectual property law.  Because of that, they are expecting more and more from us.  Gone are the days when "the only thing my client needs to know about the law is my phone number."  Instead, attorneys need to realize that that your new client likely knows more about IP law than the average general practitioner does.  You should treat them with respect.  Work with them on projects instead of for them, make yourself more available to them, visit their office/factory/shop.  Quit biting the hand that feeds you.

3. You are your brother's keeper.  One of the things IP practitioners tend to do is ignore our responsibility to spend time educating non-IP attorneys as to the basics of IP law.  Lets face it, our colleagues (understandably) aren't typically very good at issue spotting when it comes to IP issues.  The result is countless pain and suffering (and much gnashing of teeth).  Solution?  Go teach a CLE to general practitioners, blog, write articles for your local bar journal, start writing a newsletter, etc.  You will be rewarded.

4.  The Princess Principle.  At my house we joke about "The Princess," often referring to my daughter being demanding (or when said jokingly to my wife, often followed by me sleeping on the couch...but I digress).  Too often I see IP attorneys (especially the patent attorneys) strutting around like they are somehow better than other attorneys.like they are the Princess and everyone should worship them. I can especially see the Princess Principle when I look at how non-IP attorneys treat my staff (usually with respect) vs. how IP attorneys treat my staff (rudely, impatiently, etc.).  Just because our IP attorney ancestors narrowly defined who could practice IP law doesn't make any of us The Princess.  Get over it, you were a geek who happened to go to law school and has benefited from the "System." Realistically, we're all more like court jesters than princesses.

5.  Billing.  What would a post on Matt's blog be without talking about billing?  Intellectual property practitioners need to work harder at providing alternative billing methods to their clients and need to be more responsive to billing issues in general.  Why? Because the Internet is dramatically changing both the quantity and quality of competitors who are now only a few clicks away from your clients.  Clients are becoming less and less inclined to merely get annoyed when they have issues with one of your invoices or your prices, and more inclined to start looking for your replacement.  One thing you should remember about that replacement.it is just as likely to be a firm in a distant, smaller metropolitan area as it is to be a firm down the street.  The Internet has really opened up the practice of IP law, making firms in smaller towns (with less overhead) able to provide competitive services to clients all across the nation.  If you don't take care of your clients.they (we) will.

Now that I have totally annoyed all of my competitors. I'm out.

Five by Five - Doug Sorocco

Up next is Douglas Sorocco, partner in the Oklahoma law firm of Dunlap, Codding & Rogers and author of the PHOSITA blog.  Doug's Five Ways he'd change the practice of IP law:

1.  Everyone needs to take a deep breath regarding software patents.  The end of the world is not near, the seas are not going to be flooding our coastal cities and software  patents are not stifling development of new and useful tools and processes.  Software developers are simply going to have to become better business people and accept that nothing is free and patent clearance searches must be made an integral part of the development process.

2.  Continuation application practice must be reformed to require the update of the "best mode" of practicing the invention every time a new continuation application is filed.  A loophole (according to my opinion) in continuation practice is the fact that anyone can file as many continuing applications as they want and never have to update the "best
mode" in the application.  If a continuation application is filed several years after the parent application, it is likely that the best mode of practicing the invention is woefully out of date.  U.S. patent policy of limited monopoly rights for full disclosure would be better served by updating this crucial piece of information every time a new continuing application is filed.

3.  Clients and businesses see the patent lawyer as integral to the business model and growth strategy.  Any patent attorney that doesn't request a business plan or meeting with management to discuss the implications of intellectual property filings should be disbarred.  Do not pass go. Instantly disbarred and perhaps made to wear a chicken suit as future employment.

4.  All law and graduate students should be required to take a general intellectual property overview class as part of their first year curriculum.  Our society and economy is quickly becoming knowledge based.  Every attorney (and business person) should have at least a fundamental understanding of the legal protections underpinning such fundamental aspects of day to day business and technology life.

5.  Significant and substantive reform of the U.S. patent office procedure for patentees, lawyers and patent office employees.  The current system is broke and the pressures put on patent employees are absurd.  As applications become more complex, Examiners are not being given the appropriate amount of time, training and resources to complete
their jobs efficiently and expertly.  Fee diversions must be stopped and quality made the "gold standard" rather than production and counts

Five by Five - Martin Schwimmer

The next edition of this Five by Five comes from Martin Schwimmer, lawyer and author of The Trademark Blog and one of the founding members of The Blawg Channel.  Martin's response:

What are some of the most important issues and developments in trademark law today?

In terms of jurisprudence, I think two of the most important areas are the development of the concept of initial interest confusion, and the development of contributory and vicarious infringement in the Internet context.  With respect to initial interest confusion, a tremendous amount of what trademark owners hate about Internet activity consists of third parties using their marks to divert traffic to unauthorized sites.  We saw this concept in cyber squatting litigation, and now see it in the use of keywords.  Related to this is the development of the concepts of contributory and vicarious infringement.  It's hard to get one's hands around fly-by-night operators, so trademark owners go after the Internet service provider or registry or search engine.  I think these are the key areas in which we are going to see development in U.S. jurisprudence.

I also think that the development of the UDRP is an astounding success in that it represents a model of dispute resolution.  There are times that a trademark owner has to walk away from the misuse of a mark in a domain because litigation will cost $50,000, but a UDRP can cost under $3000.  The UDRP is not a perfect solution, but it has absolutely achieved what it set out to do.  I still do a lot of them, probably one a week.  I think the UDRP may pave the way to other forms of alternate dispute resolution for IP problems.

In addition, technological systems are developing to take some of the drudgery out of trademark practice.  For example, xml, which stands for "eXtensible markup language" allows structured information, such as the information required in most trademark applications around the world, to pass from one system to another.  So, for example, the information in a client's database in the United States could be coded using XML to label the relevant information, such as the mark, the description of goods, and
applicant's address, and transmitted into corresponding 'buckets' used by whatever software application is used by the foreign associate or foreign trademark office.

Five by Five - Dennis Crouch

Next up is Dennis Crouch, a patent attorney at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago and author of  Patently Obvious: Patent Law Blog.  Dennis' Five Things:

 

This is going to sound corny, but the fact is that I absolutely love being a patent attorney. I enjoy talking with inventors.  They are generally smart, quirky and forward thinking.  I get to think about and work with new technology all day and am paid to write. 

 

I am clearly an optimist and tend to see the good side of any situation.  I actually found it quite difficult when Matt asked me to take part in this 5x5.  What is the bad side of the field I enjoy so much?

 

  1. Law Firm Life: Billing Requirements:  Billing expectations at most large law firms are simply unreasonable.  They disrupt family life and tend to destroy any solid mentoring program.  Today, however, I’m upset with how the long hours spent billing really cramp the ability of associates to begin to build a practice of their own.  The hour requirements were raised after the salary bump several years ago.  Now, there are rumors that another salary jump is in store for BigLaw associates.  In my opinion, rather than increasing associate salaries, firms should compete based on hours.  

 

  1. Law School: Becoming An Attorney:  If you are a scientist or engineer who is thinking of becoming a patent attorney, my advice to you is to broaden your outlook.  When you go to law school, don’t just worry about becoming a patent jockey – rather you are becoming a lawyer.  Learn to think like a lawyer and talk like a lawyer.  Take classes that have nothing to do with patents and make as many friends as you can. (Your classmates will likely refer some of your first clients).  Law school provides a great transition point in life, and there is no requirement that pushes an attorney with an engineering degree into patent law.  Take time to enjoy the freedom. 

 

  1. Technology: Electronic Patent Filing System:  The Patent & Trademark Office (PTO) has taken great measures over the past few years to transform the Patent Office into an electronic office.  However, the electronic filing system for patents still stinks.  A user friendly solution is needed as soon as possible.

 

  1. Patent Litigation: The Expense:  Patent litigation is simply too expensive.  The average case, including those that settle, runs into hundreds of thousands of dollars in legal fees for each side.  Cases that do not settle often cost well over a million dollars to litigate.  This is a major problem.  There are some simple tips that a patentee and patent prosecutor can follow to reduce future litigation costs.  Examples are writing clear and precise claims, summarizing the invention in a way that is accessible to a jury, and conducting regular market surveys to ensure that your patent explicitly covers any technology that you feel is infringing. 

 

  1. Patent Law: Uncertainty of District Court Opinions:  The claims of a patent define its scope.  Almost every patent infringement lawsuit involves arguments over whether claims terms should be given a broad or narrow interpretation.  The problem is that claim construction, like statutory construction, is reviewed de novo by appellate courts.  And, the appellate courts have been reversing cases with fury.  Almost 50% of claim construction cases are overturned on appeal.  Under the current scenario, anyone preparing for patent litigation should prepare for at least one appeal and remand.

Five by Five - Mark Partridge

 
THE FIVE THINGS I'D CHANGE ABOUT IP LAW
 
1.  Rediscover the public mind.
 
One of the first changes I'd make in trademark law is to rediscover the public mind as an essential element in the creation of rights. In my book Guiding Rights: Trademarks, Copyright and the Internet,  I go into this issue in the chapter entitled "Trade Dress Protection and the Problem of Distinctiveness." The recent history of trademark law reflects a regrettable trend toward a point where there is little or no attention paid to the connection between the mark at issue and the public's reaction to that mark. This has proceed to the point where an appellate decision has stated that the issue of trademark rights is the relationship between the mark and the product, "not whether . . . consumers associate the design with its source," and "not the relationship between the [mark] and the consumer.  See Stuart Hall Co. v. Ampad Corp., 51 F.3d 780 (8th Cir. 1995). As discussed in Guiding Rights, the resulting analysis then bears little relationship to whether the public will react to the mark as an indication of source. But that, of course, is what trademark law is all about.
 
A proper understand of trademark rights involves recognition that rights only exist when there is a connection between the mark with goods or services from a particular source in the public mind.  It is not enough to simply select a compelling mark and affix it to a product.  This was long ago stated by Justice Frankfurter in Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942):
 
"The protection of trade-marks is the law's recognition of the psychological function of symbols. . . . Whatever the means employed, the aim is the same - to convey through the mark, in the minds of potential customers, the desireablity of the commodity upon which it appears.  Once this is attained, the trademark owner has something of value."
 
Thus, a mark has no value as a trademark unless and until there is recognition in the public mind.
 
More recently, the Seventh Circuit in Zazu Designs v. L'Oreal, S.A., 979 F.2d 499 (7th Cir. 1992), similarly recognized that an ongoing plan to use a mark or even sales to a small inner circle created no rights, stating: "Only active use allows consumers to associate a mark with particular goods and notifies other firms that the mark is so associated." 
 
In other words, there is no protectable mark unless there is a relationship between the mark and goods from a particular source in the public mind. This necessary consideration is seems often overlooked or misunderstood by both trademark owners and the courts. My first change would be to rediscover the importance of the public mind in all dialog about trademark rights.
 
2.  Eliminate rights in gross mentality
 
My second change, admittedly related to the first, would be to eliminate the "rights in gross" mentality. By this, I mean the notion that a trademark creates an absolute and exclusive right. One sees this tendency on both sides of the rights issue. A trademark owner may have the view that no one else may use its mark for any purpose. The junior user may believe there is no infringement if the mark it adopts is not identical to another's trademark.
 
Both views are mistaken, of course. The rationale for protecting trademarks is preventing deception of the public, not to protect a right in gross. Again the effect of the marks in question on the public mind is critical. Some uses of another's mark are permitted because they do not deceive the public. The use of nonidentical marks on related goods may still be an infringement because they deceive the public.
 
3.  Require ADR before litigation
 
Litigation is extremely expensive, almost shockingly so to most clients, and prohibitively so to many. The 2003 Report of the Economic Survey by the American Intellectual Property Law Association found that estimated total cost of a trademark infringement suit where less that $1 million was at risk ranged from $200,000 to $400,000. The litigation cost in larger matters reached up to $4 million for a single case. The result is that even successful litigation may end up substituting a financial problem for an infringement problem. We also know that most civil cases, over 90% in federal statistics, never go to trial.
 
My change would be to require all trademark litigants to try forms of alternative dispute resolution before proceeding with the expense of discovery and trial.  As both a mediator and as an advocate in mediations, I know that facilitated negotiations can lead to resolutions at substantially reduced cost.  Unfortunately, ADR is underused for many reasons. Clients don't want to be the first to blink. Litigators don't want to appear weak, loss control, or disclose information. Whatever the reason, the hesitancy to use ADR (either mediation or early arbitration) could be overcome by making it mandatory. Some jurisdictions already do. More should. An early effort to settle, facilitated by a competent neutral could, I believe, save the courts and clients a great deal of money.
 
4.  Improve ICANN UDRP submissions
 
As an ICANN UDRP Panelist with over 100 reported decisions for WIPO and NAF, I have read many submissions over the past five years, some very good, many bad.  The fifth thing I'd change would be to improve the quality of the submissions.  I recently spoke on UDRP advocacy at seminar hosted by DePaul Law School and the Intellectual Property Law Association of Chicago, and offered these six tips:

1. The Complaint (or Answer) should be a brief.  This is your only chance to argue your position. Treat it like a memorandum in support of a motion for preliminary injunction or summary judgment by presenting your case as an advocate. Mere notice pleading allowed in our federal system is not effective for the circumstances. 

2. The Pleading should be brief.  Although the providers' limitations on length are largely ignored and exceeded, as a Panelist I urge you to remember that effective legal writing is brief and to the point.

3. The Pleadings should follow the Policy.  Follow the elements of the Policy in stating your position.  Remember that the Panel must address each of these issues.  Make it easy for the Panel to decide in your favor by organizing your argument around each element of the claim or defense.

4.  Support your position with proof.  You need more than bald allegations to prove rights and bad faith, and you will find an increasing number of cases in which complainants are called upon to make additional submissions or lose their claim due to lack of proof. Strong submissions present evidence by way of exhibits and short affidavits. But don't merely shovel in piles of documents. Remember point 2.

5. Make good use of supporting authority.  Give cases to support your argument and show why the cases are relevant.  Avoid merely citing cases. There have been over 7800 reported UDRP decisions. Don't assume the Panel knows the result and reasoning of each case you cite.  Help the Panel by providing at least a parenthetical on the cases you cite.

6. Recognize the limits of the Policy.  The Policy is designed to address cases of cybersquatting involving protectable trademarks.  It is not intended for contract disputes, garden variety infringement cases, defamation claims, or personal names that are not entitled to commercial protection. Adverse decisions are often the result of claims that obviously stretch beyond the scope of the Policy. Matters outside the scope of the Policy are better directed to appropriate civil courts.

5.  Create regionalized registrations
 
My fifth change would be to create regionalized trademark registration systems.  One of the fundamental principles of trademark law is territoriality.  Trademark rights are deemed to be specific to a single country.  Outside the United States and a handful of common law countries, civil law prevails and rights in trademarks arise from national registration, rather than use.  In our global Internet world, however, the continued reliance on national jurisdictions doesn't fit the market reality.  Further, the cost of worldwide protection is incredibly expensive.  I recently advised a client that she could expect an average cost of about $2000 per registration.  She wanted to protect twenty marks used in a worldwide Internet business.  With about 250 jurisdictions accepting trademark registrations, the cost obviously is huge.
 
There has been some movement toward regional registries.  Of note are the Benelux registration for Belgium, Luxembourg and the Netherlands, and the CTM for the European Community.  More can and should be created.  Doing so could reduce the cost of registration and afford protection for territories that better fit regional markets that span the borders of of several countries.
 
 

August 23, 2004

Five by Five - The IP Edition

Summer is often a slower time for me, but this year it seems like I'm getting hammered from all angles. I have six clients who all have projects to get done now. I know that being in demand is a really great problem to have as a lawyer, but I've been neglecting the people I really care about -- my blog readers.

All kidding aside, I have some great Five by Five news. In the works are Law Professor and Law Student editions, along with a Business Book edition (answering the question, "What five business books should every lawyer read -- and why?").

Up next, however, is a Five by Five I'm really looking forward to. I'm asking five lawyers who concentrate their practices in the intellectual property (IP) fields the following question:

What five things would you change about IP law and/or practice?
The participants are:

Dennis Crouch: Patently Obvious;

Stephen Nipper: Invent Blog, f/k/a Necessity's Progeny;

Mark Partridge: Guiding Rights;

Martin Schwimmer: The Trademark Blog; and,

Douglas Sorocco: POSHITA.

We are coordinating schedules for the posts, but look for the responses soon.