Archive for the ‘Patent’ Category
Obtaining a patent is an uncertain process. It is difficult, if not impossible, to predict the prior art that may be located or the examiner you are assigned. Grant rates often vary from 5 to 50%, and it is rare for patent claims to be allowed without limitations during prosecution. However, there are techniques to manage this uncertainty. Some of these are discussed below.
The International Patent Application
For many businesses, the US and Europe are core markets. To obtain patent protection in these markets, many patent attorneys advise filing an International patent application (also called a Patent Cooperation Treaty – PCT – application). An International patent application only needs to be converted into specific national or regional applications 30 months from an initial filing or priority date. This provides time for a product or service to develop in parallel with a pending application and leaves open the possibility of obtaining protection in states such as Japan, China, Korea and Australia.
An International patent application is searched and a written opinion is drawn up by an examiner. The written opinion resembles an examination report. For applicants from Europe, the European Patent Office prepare these documents. The European Patent Office is seen internationally as one of the tougher patent offices; I often see cases with favourable opinions from examiners in the US, Korea and China hit objections when the case is examined by the European Patent Office.
There are also costs to consider. Patenting is not cheap. Depending on length and scope, a patent application will likely cost between £5-10k (all figures are excluding taxes and at 2017 rates) to be drafted. Filing costs for an International patent application are £4-5k (most of this being official fees). Filing costs for national or regional applications at the end of the International phase will cost between £5-10k (a chunk of this being official fees and/or translation costs). Then it may cost between £5-15k to prosecute an application and pay grant fees. A good rule of thumb is £30k per country over a 3-7 year period.
Initial UK Patent Filing
First, it is worth noting that I would not attempt the patenting process unless I could budget around £10k per year over the first 3 years.
Second, it is good to take advantage of the ease and low cost of the UK Intellectual Property Office for a first filing. Official fees are only £230 for filing, search and examination (a bargain really – European Patent Office fees are 10x this). Unlike the US there is no need for assignments and declarations to be filed. You can register this first filing with the priority document access service as well, which makes supply of a certified copy of the priority document a doddle.
UK Combined Search and Examination Report
The UK Intellectual Property Office provide a combined search and examination report with 4-6 months. You can ask to accelerate this and if you have a good reason the request is often granted, shortening the time to 4-8 weeks. While a UK search is often not quite as thorough as an European search, it is quick and cheap (e.g. as compared with Europe or US). It is thus a useful way of identifying any “low-hanging” prior art that may be problematic.
For example, if “knock-out” prior art is located you can choose to withdraw the application within the first 12 months before publication. This helps to cap your loss at the £10k or so of initial costs; it prevents you spending another £20k only to get a refusal on subsequent national or regional applications (or even to have a patent that would easily get knocked out in court). Withdrawing before publication means the content of the patent application will not become public and count against future applications you may make. This is useful if the patent application relates to a product in development; you may come up with an improvement after a year that could support a further patent application that can reuse much of the initial material.
Even if “knock out” prior art is not found, the UK combined search and examination report can help you strengthen your patent claims. For example, prior art may be cited that anticipates your main claims but an amendment is possible that renders the claims novel and inventive over the cited documents. It is definitely better to work this out over a leisurely 4 month period (e.g. iterating with the inventors who may still remember the case), rather than rush this just before priority-claiming applications need to be filed at the 12-month point. While you can never be sure that subsequent searches by other patent offices will not find other, more relevant prior art, an amendment at this stage is often going to be taking your application in the right direction and will be making favourable opinions more likely. Engineers may like to see this as a first “stress test” for the patent application.
The UK combined search and examination report may also flag other issues such as clarity or support that are best dealt with early on. For example, a term you and your inventors thought was well-known may be considered by the UK examiner to be unclear; the specification may then be amended to provide a more in-depth definition from text-books or Wikipedia.
If you do need to amend the claims at this 6-12 month stage, another advantage is that you can make sure that you maximise the scope of positions covered by your patent claims. For example, you first filing may have 20 patent claims. If a number of these claims are deemed obvious over the general knowledge or certain claims need to be added to the main independent claims, then claims may be deleted and other improved fall-back positions added.
Typically, it is good to set aside some inventor time, and a budget of £1-2k to review the UK combined search and examination report and cited art. I often see those who choose not to make this investment at this stage be subject to avoidable higher costs later on in prosecution.
If you have a set of patent claims that are novel and inventive over the prior art cited by the UK Intellectual Property Office, the next stage is to file an International patent application within 12 months of the initial filing date.
If you are a UK company, the European Patent Office will perform another search and issue a written opinion setting out any objections. They are pretty good at issuing this within 4-6 months of filing the International patent application. The European search and written opinion provides the second “stress test” of the claims.
Often the European examiner will locate new prior art. One way to reduce this risk is to amend the background of the patent specification before filing the International patent application to make reference to the prior art located in the UK search. In 25-50% of cases, if the UK-cited prior art is relevant and reasonable, the European examiner will (understandably) take the easier option of citing it again. At the very least, referencing the UK-cited art can help you “seed” the European search towards areas you have had time to analyse.
If the European examiner does locate new prior art, then again it is recommended to repeat the same analysis that was performed for the UK combined search and examination report. Often you still have over a year before choices regarding national or regional applications need to be made. A relatively leisurely 4-8 weeks review cycle, incorporating comments from inventors or other engineers, at an attorney cost of £1-2k, can again reap cost savings later on in prosecution.
For example, if the European cited art is “knock out”, costs can be capped at around £15k (e.g. drafting, UK filing, PCT filing and review costs). It may not be possible to have the search results in time to be able to stop publication (which is why the UK search is good). This may seem a lot but it prevents additional spends of £15-20k per country (e.g. £30k < spend < £80k) only for you to receive multiple refusals 2-3 years later.
If amendment is possible, then this can be determined following a review of the prior art and a claim set prepared for national and regional applications. At this stage you may have more confidence in the claims as you know they have been through both UK and European examination. This may make it easier to justify patent applications in multiple countries to a company board or budget comittee.
If a strong position is possible following review and amendment, you may have an option to accelerate prosecution in Europe based on the amended claims. For example, you may wish to file the amended claims and comments on entry, waive the Rule 161 EPC period and file an acceleration request (https://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_viii_3_3_1.htm). This may result in a notice of allowance as the first communication. This could be issued within 3 months of entry to the European regional phase (https://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_vii_4_2.htm). This could be used as part of a Patent Prosecution Highway scheme in other national offices (e.g. US or China).
- It can avoid spending up to £40k+ on patent applications worldwide that are unlikely to be granted.
- It can avoid long and protracted European Patent prosecution.
- It often simply represents front-loading of costs that would be occurred in normal prosecution.
- It allows leisurely review while the case may still be fresh in inventors minds (with touch points at 6 and 18 months following the filing process). This can also promote inventor engagement with the patent process.
- The possibility of Patent Prosecution Highways could avoid long and protracted prosecution In multiple countries.
- If you do obtain a patent it is likely to be stronger and hence of more value.
Why is it difficult to patent software?
- Being new: at least one aspect of your invention must differ from other solutions available to the public. This includes solutions described in other patent applications, blog posts, manuals, online documentation and white papers.
- Being inventive: not only must your invention have a differing feature, that differing feature needs to be non-obvious. If the differing feature is common knowledge, e.g. is a common feature described in text books or on Wikipedia, and it is straightforward to use it in the context of the other known features, then your invention will be deemed obvious. Likewise if the differing feature is described in another document, and it would be obvious to combine this other document with the pre-existing solution providing the other features, then your inventive will be said to lack an inventive step.
- Being patentable: your software invention must meet requirements set by law for patentable subject matter. Each jurisdiction has slightly different rules. Normally, statute sets some very broad categories of excluded subject matter. Individual cases and hearings then provide a body of case law that says which areas are allowable and which areas are not. For example, in Europe you need to show that the differing feature provides a ‘technical’ effect, which is often an engineering improvement.
Patenting software also taxes patent attorneys and patent examiners. With mechanical products, you can often see and feel the invention. Similarly, pharmaceutical inventions may be defined through sets of well-defined chemical formulae. Software is harder to visualise – there may be multiple technology layers in an implementation stack and many non-essential interoperating parts. This can often lead to poor patent specifications and misunderstandings.
Also if a patent claim is too specific then it will be easy for a software developer to work around. Most inventions will need to transcend a particular programming language or technology to cover ports to different platforms and to future-proof a patent’s value. However, if a patent claim is too broad, it is often deemed too abstract to be patentable and may also run afoul of clarity provisions.
What do these difficulties mean in practice?
- Low grant rates;
- Validity challenges;
- High prosecution spend; or
- Patent avoidance.
These factors often interact to form a vicious cycle of mutual distrust: too many poor quality patent specifications are filed, leading to cynicism from patent examiners and the public, which leads to knee-jerk rejections and lobbying, which in turn undermines confidence in the system from businesses.
What can we do?
The first thing software companies can do is to find the right patent attorney or attorney firm. There are a few attorneys who deal with software day-in-day-out. These need to be sought out. Look for an attorney with experience of working for a large software company, e.g. Microsoft, IBM, Hewlett-Packard, Oracle, SAS, Amazon, Google. The European Patent Office allows you to search by representative to see example applicants.
The second thing software companies can do is to set high standards for their patent specifications. The recent change in practice in the US will hopefully catalyse this. Technical or engineering features should be defined in detail; any high-level marketing terms or IT jargon should be jettisoned. A strong technical problem should be eluded to, and there should be a good set of tiered fall-back positions, each with their own defined engineering advantages.
The third thing software companies can do is to keep on top of the case law in different jurisdictions. Your patent attorney may offer to help you with this. At a simple level, a one page table can show what kind of inventions have been allowed and what kind of inventions have been refused. For example, UK hearing officers often find that database management improvements are not allowed, whereas European examiners find these are technical.
As you work as a patent attorney you meet many small to medium enterprises (SMEs – businesses with under 250 employees – also known as “small entities” in the US). Everyone has a different level of knowledge, and some companies are unaware of how they can get a better deal. To remedy this, here is my guide to commissioning patent work.
- Use competition to your advantage;
- Prepare to better use your time;
- Meet the people doing the work;
- Look for a commercial and technical fit;
- Agree on costs and timings in advance; and
- Agree on workflow in advance.
Use competition to your advantage
Patent firms (at least in the UK) will offer a free 30-minute consultation to potential new clients. Patent firms do this to get new business. It is often recommended to meet at least three firms to compare costs, people and approach. This means you can get up to 1.5 hours of free legal advice.
You can create a shortlist by looking for local patent firms. For SMEs, local firms (i.e. outside of London) are often a better fit on price and people, and organising company visits is easier. Many university cities have patent law firms, so a good play to start is to pick your nearest and search the Internet for “patent firm [nearest city]”. Have a look at the firms’ websites. You can normally get a feel for the size of a firm and their area(s) of expertise from their website.
If you are in a main patent hub (e.g. London or Munich), look for firms involved in activities that over lap with yours, e.g. firms that have talked at a nearby incubator or known industry group.
Firms are often split into four or so subject areas: pharma & biotech; chemistry; mechanical / heavy engineering; and IT & electronics. Many firms are better in one of these areas and weaker in others. Look for numbers of attorneys, their backgrounds and mentions of key clients to work out strengths and weaknesses. Try to shortlist firms with a strong practice group in your area of business.
Arrange meetings with your shortlist of firms by email or phone.
Prepare to better use your time
Ahead of your initial meetings, there is some preliminary work you can do to maximise your free legal advice and test your prospective firms. This often needs to be an hour or so of preparation: one page of A4 is about right.
First, attempt to write down why you need patent services. Do this in plain English. For example:
- I need to stop my competitors doing X.
- I have a new product that in launching in two months. We have spent Y on R&D.
- We need investment. We have seed/series A/series B funding. We are looking at acquisition in as an exit in two to three years.
- We have a few patents. We wish to monetise our portfolio.
Information that is useful to a patent attorney includes:
- Your key markets (current and future);
- Where you manufacture;
- Your competitors (and their key markets / places of manufacture);
- Your launch schedule; and
- Your general business direction over the next 5-10 years (at a brief, high level).
If you have this information in pre-existing material (e.g. an investor or shareholder pack), you can provide this ahead of your meeting. It is worth keeping this high level and keeping as much as possible to publicly known details.
If you have a new product or idea, it may also be worth doing an hour or so of Internet searching and selecting the three most relevant finds. These may be supplied ahead of your meeting (e.g. send three URLs with brief notes – “This blog post describes something similar to the first step”).
If you can send this information, in confidence, ahead of your meeting then it is likely your prospective patent firms will do at least an additional 30 minutes of preparation before your meeting, and you will get better advice to compare. It also frees up time in the meeting to discuss strategy rather than go over these points. If you prefer not to send confidential details ahead of time, take your page of A4 as a meeting prompt.
Meet the people doing the work
A traditional way of law firms acquiring new clients is as follows:
- Prospective client meets charismatic partner at an event / on the golf course;
- A meeting is arranged with law firm via charismatic partner, who attends;
- The work starts and charismatic partner vaporises – a series of unknown associates impersonally deal with the work.
There is nothing necessarily malicious in this, some partners are better at sales, associates often do a bulk of the work due to the “leverage” model of law firms. It can, however, leave a bad taste if unexpected.
One way to avoid this is to ask to meet all those who will be potentially working with the company. Most patent firms should be happy to oblige. Be a little wary of those that refuse.
Look for a commercial and technical fit
A perfect technical match may be difficult to find. If there is a perfect match, there is often a conflict, e.g. the firm may work for one of your competitors. If you need to discuss sensitive commercial details in your initial meeting, you may wish to ask the patent firms you are meeting to perform a conflict check and confirm there is no conflict *before* you meet (or before you send them non-public information).
Sometimes you may get lucky and a technical fit may exist due to a recent client change (e.g. a past client was acquired and the work was moved to the patent firm of the parent company). This is probably the exception rather than the rule.
For a general technical fit look for:
- Patent attorneys with a technical degree in your area of technology;
- Current or recent experience in a neighbouring non-competing field;
- Familiarity with at least general core concepts of your technology (if not your particular niche); and
- Rapid understanding.
For a commercial fit look for:
- Experience of similar size companies (e.g. revenue-wise) ;
- Experience with your business model (e.g. software licensing vs. chemical manufacturing); and
- General knowledge of your industry and market (e.g. at a Bloomberg, Economist or FT level).
Look for those that listen.
Agree on costs and timings in advance
When you are obtaining cost estimates ask for prospective costs over the next year. Also ask to identify one or two key billing points over the year for costs to be charged.
An often heard criticism from companies is the stream of small bills from patent firms after a particular piece of work has been done. This is often due to the nature of the hourly billing module – small bits of work are often needed after an event of when miscellaneous communications arrive. Firms also wish to avoid having unpaid work sitting on their systems. One way to avoid this is to either include small future predictable costs in initial charges (firms often avoid doing this as it raises their estimates in comparison with other firms) or to have agreed billing points. For example, filing an application and filing a response are two normal billing points – you can ask that all others charges are also billed at these points with the substantive work.
Companies should also ask for caps or fixed prices for the work. Most patent firms should oblige if these are reasonable. This makes costs more predictable for the company, avoids surprise charges and often gets them a better deal.
Agree on workflow in advance
Patent attorneys charge for their time. Companies thus have a trade-off when commissioning patent work: they can save their time (e.g. engineer or C-level time) at the expense of higher patent attorney charges; or they can agree to do more on their end to save patent attorney costs.
For example, one substantial part of responding to examination reports is reviewing the cited prior art (typically 2-4 20-50 page patent publications). If a company wish to save on patenting costs, they can perform this work in-house (e.g. make it part of an engineer role). If a company provides guidance on differences and advantages (even if these are not put in legal terms), they can negotiate lower charges for responding to an examination report. If, on the other hand, engineer time is at a premium, they may ask that the patent attorney provides options or a proposal for their review (this should be provided at an executive summary level).
Similarly, to avoid drift, loss of momentum or extra charges, a timescale for work on both ends should be agreed at a high level. For example, it may be agreed that a draft will take 4 weeks to prepare and that engineers will review within 1 or 2 weeks of receipt. Similarly, it may be agreed that all official communications and filings are to be reported with 5 working days, or that engineers need 4 weeks to review cited prior art.
It is also a good idea to agree who is going to be the main point of communication on both sides, and whether any additional stakeholders need to be cc-ed by default (e.g. engineering managers, directors, secretaries, etc.).
This should not take too long to work out (e.g. a 30 min phonecall or a quick email exchange) but it pays dividends later on in the relationship (and avoids “surprise” charges cropping up).
In a previous post, we looked at some measures of patent attorney (or firm) success:
- Low cost;
- Minimal mistakes;
- Timely actions; and
- High legal success rate.
In this post, we will look at how we can measure these.
Let’s start with legal success. For legal success rate we identified the following:
- Case grants (with the caveat that the claims need to be of a good breadth);
- Cases upheld on opposition (if defending);
- Cases revoked on opposition (if opposing);
- Oral hearings won; and
- Court cases won.
When looking to measure these we come across the following problems:
- It may be easy to obtain the grant of a severely limited patent claim (e.g. a long claim with many limiting features) but difficult to obtain the grant of a more valuable broader claim (e.g. a short claim with few limiting features).
- Different technical fields may have different grant rates, e.g. a well-defined niche mechanical field may have higher grant rates than digital data processing fields (some “business method” areas have grant rates < 5 %).
- Cases are often transferred between firms or in-house counsel. More difficult cases are normally assigned to outside counsel. A drafting attorney may not necessarily be a prosecuting attorney.
- During opposition or an oral hearing, a claim set may be amended before the patent is maintained (e.g. based on newly cited art). Is this a “win”? Or a “loss”? If an opponent avoids infringement by forcing a limitation to a dependent claim, that may be a win. What if there are multiple opponents?
- In court, certain claims may be held invalid, certain claims held infringed. How do you reconcile this with “wins” and “losses”?
One way to address some of the above problems is to use a heuristic that assigns a score based on a set of outcomes or outcome ranges. For example, we can categorise an outcome and assign each category of outcome a “success” score. To start this we can brainstorm possible outcomes of each legal event.
To deal with the problem of determining claim scope, we can start with crude proxies such as claim length. If claim length is measured as string length, (1 / claim_length) may be used as a scoring factor. As automated claim analysis develops this may be replaced or supplemented by claim feature or limiting phrase count.
Both these approaches could also be used together, e.g. outcomes may be categorised, assigned a score, then weighted by a measure of claim scope.
For example, in prosecution, we could have the following outcomes:
- Application granted;
- Application abandoned; and
- Application refused.
Application refused is assigned the lowest or a negative score (e.g. -5). Abandoning an application is often a way to limit costs on cases that would be refused. However, applications may also be abandoned for strategic reasons. This category may be assigned the next lowest or a neutral score (e.g. 0). Getting an application granted is a “success” and so needs a positive score. It maybe weighted by claim breadth (e.g. constant / claim_length for shortest independent claim).
In opposition or contentious proceeding we need to know whether the attorney is working for, or against, the patent owner. One option maybe to set the sign of the score based on this information (e.g. a positive score for the patentee is a negative score for the opponent / challenger). Possible outcomes for opposition are:
- Patent maintained (generally positive for patentee, and negative for opponent);
- Patent refused (negative for patentee, positive for opponent).
A patent can be maintained with the claims as granted (a “good” result) or with amended claims (possibly good, possibly bad). As with prosecution we can capture this by weighting a score by the scope of the broadest maintained independent claim (e.g. claim_length_as_granted / claim_length_as_maintained).
Oral hearings (e.g. at the UK Intellectual Property Office or the European Patent Office) may be considered a “bonus” to a score or a separate metric, as any outcome would be taken into account by the above legal result.
For UK court cases, we again need to consider whether the attorney is working for or against the patentee. We could have the following outcomes:
- Patent is valid (all claims or some claims);
- Patent is invalid (all claims or some claims);
- Patent is infringed (all claims or some claims);
- Patent is not infringed (all claims or some claims);
- Case is settled out of court.
Having a case that is settled out of court provides little information, it typically reflects a position that both sides have some ground. It is likely better for the patentee than having the patent found invalid but not as good as having a patent found to be valid and infringed. Similarly, it may be better for a claimant than a patent being found valid but not infringed, but worse than the patent being found invalid and not infringed.
One option to score to partial validity or infringement (e.g. some claims valid/invalid, some claims infringed/not infringed) is to determine a score for each claim individually. For example, dependent claims may be treated using the shallowest dependency – effectively considering a new independent claim comprising the features of the independent claim and the dependents. A final score may be computed by summing the individual scores.
So this could work as a framework to score legal success based on legal outcomes. Theses legal outcomes may be parsed based on patent register data, claim data and/or court reports. There is thus scope for automation.
We still haven’t dealt with the issues of case transfers or different technical fields. One way to do this is to normalise or further weigh scores developed based on the above framework.
For technical fields, scores could be normalised based on average legal outcomes or scores for given classification groupings. There is a question of whether this data exists (I think it does for US art units, it may be buried in an EP report somewhere, I don’t think it exists for the UK). A proxy normalisation could be used where data is not available (e.g. based on internal average firm or company grant rates) or based on other public data, such as public hearing results.
Transferred cases could be taken into account by weighting by: time case held / time since case filing.
These may be measured by looking at the dates of event actions. These are often stored in patent firm record systems, or are available in patent register data.
It is worth noting that there are many factors outside the control of an individual attorney. For example, instructions may always be received near a deadline for a particular client, or a company may prefer to keep a patent pending by using all available extensions. The hope is that, as a first crude measure, these should average out over a range of applicants or cases.
For official responses, a score could be assigned based on the difference between the official due date and the date the action was completed. This could be summed over all cases and normalised. This can be calculated from at least EP patent register data (and could possibly be scraped from UKIPO website data).
For internal timeliness, benchmarks could be set, and a negative score assigned based on deviations from these. Example benchmarks could be:
- Acknowledgements / initial short responses sent with 1 working day of receipt;
- Office actions reported with 5 working days of receipt;
- Small tasks or non-substantive work (e.g. updating a document based on comments, replying to questions etc.) performed within 5 working days of receipt / instruction; and
- Substantive office-action and drafting work (e.g. reviews / draft responses) performed within 4 weeks of instruction.
This could be measured, across a set of cases, as a function of:
- a number of official communications issued to correct deviations;
- a number of requests to correct deficiencies (for cases where no official communication was issued); and/or
- a number of newly-raised objections (e.g. following the filing of amended claims or other documents).
This information could be obtained by parsing document management system names (to determine communication type / requests), from patent record systems, online registers and/or by parsing examination communications.
One issue with cost is that it is often relative: a complex technology may take more time to analyse or a case with 50 claims will cost more to process than a case with 5. Also different companies may have different charging structures. Also costs of individual acts need to be taken in context – an patent office response may seem expensive in isolation, but if it allows grant of a broad claim, may be better than a series of responses charged at a lower amount.
One proxy for cost is time, especially in a billable hours system. An attorney that obtains the same result in a shorter time would be deemed a better attorney. They would either cost less (if charged by the hour) or be able to do more (if working on a fixed fee basis).
In my post on pricing patent work, we discussed methods for estimating the time needed to perform a task. This involved considering a function of claim number and length, as well as citation number and length. One option for evaluating cost is to calculate the ratio: actual_time_spent / predicted_time_spent and then sum this over all cases.
Another approach is to look at the average number of office actions issued in prosecution – a higher number would indicate a higher lifetime cost. This number could be normalised per classification grouping (e.g. to counter the fact that certain technologies tend to get more objections).
The time taken would need to be normalised by the legal success measures discussed above. Spending no time on any cases would typically lead to very high refusal rates, and so even though a time metric would be low, this would not be indicative of a good attorney. Similarly, doing twice the amount of work may lead to a (small?) increase in legal success but may not be practically affordable. It may be that metrics for legal success are divided by a time spent factor.
Patent billing or record systems often keep track of attorney time. This would be the first place to look for data extraction.
An interesting result of this delve into detail is we see that legal success and cost need to be evaluated together, but that these can be measured independently of timeliness and error, which in turn . may be measured independently of each other. Indeed, timeliness and error avoidance may be seen as baseline competences, where deviations are to be minimised.
It would also seem possible, in theory at least, to determine these measures of success automatically, some from public data sources and others from existing internal data. Those that can be determined from public data sources raise the tantalising (and scary for some?) possibility of comparing patent firm performance, measures may be grouped by firm or attorney. It is hard to think how a legal ranking based on actual legal performance (as opposed to an ability to wine and dine legal publishers) would be bad for those paying for legal services.
It is also worth raising the old caveat that measurements are not the underlying thing (in a Kantian mode). There are many reasonable arguments about the dangers of metrics, e.g. from the UK health, railways or school systems. These include:
- the burden of measurement (e.g. added bureaucracy);
- modifying behaviour to enhance the metrics (e.g. at the cost of that which is not measured or difficult to measure);
- complex behaviour is difficult to measure, any measurement is a necessarily simplified snapshot of one aspect; and
- misuse by those in power (e.g. to discriminate or as an excuse or to provide backing for a particular point of view).
These, and more, need to be borne in mind when designing the measures. However, I believe the value of relatively objective measurement in an industry that is far too subjective is worth the risk.
This is a question that has been on my mind for a while. The answer I normally get is: “well, you just kind of know don’t you?” This isn’t very useful for anyone. The alternative is: “it depends”. Again, not very useful. Can we think of any way to at least try to answer the question? (Even if the answer is not perfect.)
The question begets another: “how do we measure success?”
- the broadest, strongest patent (or patent portfolio) obtained at the lowest cost;
- a patent or patent portfolio that covers their current and future products, and that reduces their UK tax bill; and/or
- a patent or patent portfolio that gets the company what it asks for in negotiations with third parties.
For an in-house attorney or patent department this may be:
- meeting annual metrics, including coming in on budget;
- a good reputation with the board of directors or the C-suite; and/or
- no surprises.
For an inventor this may be:
- minimum distruption to daily work;
- respect from peers in the technology field; and/or
- recognition (monetary or otherwise) for their hard work.
For a patent firm this may be:
- a large profit;
- high rankings in established legal publications; and/or
- a good reputation with other patent firms and prospective or current clients.
For a partner of a patent firm this may be:
- a large share of the profit divided by time spent in the office; and/or
- a low blood pressure reading.
As we can see, metrics of success may vary between stakeholders. However, there do appear to be semi-universal themes:
- Low cost (good for a company, possibly bad for patent attorneys);
- Minimal mistakes (good for everyone);
- Timely actions (good for everyone but sometimes hard for everyone); and
- High legal success rate (good for everyone).
High legal success rate (4) may include high numbers of:
- Case grants (with the caveat that the claims need to be of a good breadth);
- Cases upheld on opposition (if defending);
- Cases revoked on opposition (if opposing);
- Oral hearings won; and
- Court cases won.
I will investigate further how these can be measured in practice in a future post. I add the caveat that this is not an exhaustive list, however, rather than do nothing out of the fear of missing something, I feel it is better to do something, in full knowledge I have missed things but that these can be added on iteration.
Cost is interesting, because we see patent firms directly opposed to their clients. Their clients (i.e. companies) typically wish to minimise costs and patent firms wish to maximise profits, but patent firm profits are derived from client costs. For patent firms (as with normal companies), a client with a high profit margin is both an asset and a risk; the risk being that a patent firm of a similar caliber (e.g. with approximately equal metrics for 2-4 above) could pitch for work with a reduced (but still reasonable) profit margin. In real life there are barriers to switching firms, including the collective knowledge of the company, its products and portfolio, and social relationships and knowledge. However, everything has a price; if costs are too high and competing firms price this sunk knowledge into their charging, it is hard to reason against switching.
There is a flip side for patent firms. If they can maximise 2-4, they can rationalise higher charges; companies have a choice if they want to pay more for a firm that performs better.
On cost there is also a third option. If patent firms have comparative values for 2-4, and they wish to maintain a given profit margin, they can reduce costs through efficiencies. For most patent firms, costs are proportional to patent attorney time, reduce the time it takes to do a job and costs reduce. The question is then: how to reduce time spent on a matter while maintaining high quality, timeliness and success? This is where intelligence, automation and strategy can reap rewards.
In-house, the low cost aim still applies, wherein for a department cost may be measured in the number of patent attorneys that are needed or outside-counsel spend, as compared to a defined budget.
In private practice, and especially in the US, we often see an inverse of this measurement: a “good” patent attorney (from a patent firm perspective) is someone who maximises hourly billings, minimises write-downs, while anecdotally maintaining an adequate level for 2-4. One problem is maximising hourly billings often leads to compromise on at least 2 and 3; large volumes of work, long hours, and high stress are often not conducive to quality work. This is why I have an issue with hourly billing. A base line is that a profit per se is required, otherwise the business would not be successful. Further, a base line of profit can be set, e.g. allowing for a partner salary of X-times the most junior rate, an investment level of Y%, a bonus pool for extra work performed etc.. However, beyond that, the level of profit is a factor to maximise, subject to constraints, i.e. 1-4 above, where the constraints take priority. The best solution is to align profit with the constraints, such that maximising 1-4 maximises profit. That way everyone benefits. How we can do this will be the subject of a future post.
So, let’s return to our original question: what makes a good patent attorney?
From the above, we see it is a patent attorney that at least makes minimal mistakes, operates in a timely manner, has a high legal success rate and provides this at a low cost. In private practice, it is also a patent attorney that aligns profit with these measures.
I was lucky enough to attend a session with Debra Baker of Law Leaders Lab / GrowthPlay. One of the many good points raised by Debra was that we often need to ask ourselves: “why are we doing this?”
This follows on from the talks of Simon Sinek*.
It’s the kind of question that you answer in a covering letter for a job or in an interview. You often answer it when you have no experience of the job. You tend to forget the question more than a decade later.
So: why do I work as a patent attorney?
I love technology. Growing up my favourite possessions were a box of Lego, a BBC Micro, a cheap Bush walkman and my Casio calculator watch. In conversation I get excited about machine learning and natural language processing. Blade Runner and Terminator 2 are my favourite films. I find the Promethean ability to breath life into inert matter fascinating. Working as a patent attorney means I am immersed in technology of all kinds every day.
I like helping inventors and innovative companies. As a patent attorney you get to work with some of the smartest, most creative engineers on the planet. You also work in the real commercial world, as opposed to the more artificial confines of academia.
I enjoy diving deep into new subject matter and linking it to existing understanding. I have a “systematic” mind, I enjoy figuring out what makes things work. As a kid, I devoured Encylopedias and practically slept with a copy of the Usborne Book of Knowledge. I studied hard, partly through sheer curiosity. I always find how we know what we know fascinating. I may be the only one of my school and University peers who uses their subject knowledge everyday. Each new invention builds upon strata of past learning in a way that is deeply satisfying.
I like an intellectual challenge (the flip-side to being easily bored by the surface of things). I like wrestling an idea into language.
And the more quotidian reasons: I like being able to pay the bills; I like working in a place with free Nespresso and apples; I like having good colleagues and leadership.
Why you need the why
You need these reasons to keep going through the day-to-day work and the ups-and-downs of commercial reality.
- Nine out of ten small businesses fail, typically despite great inventions and people.
- Human contact is often lost beneath the required bureaucratic machinery of large organisations.
- Cases can be granted or refused based solely on the luck of the examiner draw.
- The gap between the hyperbole needed to sale a product and the prosaic hardwork to get the product working.
- The size of the body of previously-published materials.
- Cases you work on for years are left behind as companies pivot and cost-cut.
- There’s always a deadline or five.
- Every other patent attorney is just as driven and smart and is competing against you.
If you align why you are doing something with what you are doing then things become a lot easier.
* Caveat: I understand that this can seem a little MBA-gimmicky, and I do share your skepticism, but the underlying question is a sound one. Reflection is also a good thing, and needed now more than ever with the iPhone buzzing and blinking.
The European Patent Office has now published a case law summary for 2014 as Official Journal supplementary publication 4/2015. Sections I-C-4.1, I-C-5.1, II-A-1, and II-E-1.4 discuss case law that relates to computer-related inventions. The relevant passages are extracted and commented on below.
T 407/11 held that the relevant skilled person in the context of providing computer-system users with operating assistance via a user interface (e.g. error messages or warnings) was an expert in software ergonomics concerned with the userfriendliness of human-machine interfaces rather than an expert in software programming or in computer technology in the strict sense.
The objective problem to be solved by that skilled person was to prevent a situation whereby the user’s action caused an electronic data-processing system to execute a called function differently from intended (or even to fail to execute it at all).
In the board’s view, however, the technical effect claimed in the application (simpler operation of an object-oriented user interface, facilitating initial use and subsequent familiarisation, especially for beginners or upgrading users, and so making the resulting method easier and more intuitive to learn) could not be considered a directly derivable consequence of the distinguishing features, because attributes such as “simpler operation” or “easy and intuitive familiarisation” were generally subjective, i.e. depended on the user’s individual preferences and experience or intellectual capabilities, while the classification of users as “beginners”, “upgraders” or “advanced” was generally based on a variety of criteria which were not clearly defined.
This suggests that providing objective definitions of technical effects (e.g. millisecond time savings) may help to support an inventive step under European practice. It also further indicates a need to avoid reference to “user”-based advantages.
Applications of Algorithms
In T 2035/11 the application mainly related to navigation systems that could be tailored to a user’s particular wishes. The focus of the application was on the route-planning functionality of a navigation system.
The board held that the subject-matter of claim 1 lacked an inventive step within the meaning of Art. 52(1) and 56 EPC. It noted that mathematical algorithms may contribute to the technical character of an invention only in so far as they serve a technical purpose (see e.g. decision T 1784/06). The purpose of the algorithm was the mere display of an optimal path to the user for cognitive processing. The user could act on the information, but did not need to.
As stated in decision T 1670/07, a technical effect may arise from either the provision of data about a technical process, regardless of the presence of the user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process.
In the case at issue, the data was produced by means of an algorithm and was not applied directly in a technical process, so neither possibility applied.
Warning on Generalisation
In T 2231/09 the patent in suit concerned a method of representing and analysing images. Claim 1 of the main request set out that “… at least one said descriptor element is derived using only a subset of pixels in said image.”
The board considered the expression “subset of pixels” to be problematic under Art. 84 EPC 1973 and stressed that, while a certain degree of generalisation may be permitted, features as claimed should make it possible to clearly identify features of embodiments that are covered by the terms of a claim. Moreover, the generalised subject-matter as claimed should make it possible to understand the technical problem to be solved.
When amending claim 1, the applicant had put forward a new interpretation according to which a “region” could mean the whole image, and a “subset” could correspond to all pixels of the region. The board considered this interpretation to be inconsistent with essential parts of the described embodiments, according to which a subset corresponded to only some of the pixels of a region. The subject-matter of claim 1 was thus unclear when interpreted in the light of the description.
The board also stated that the requirements of clarity and support by the description in Art. 84 EPC 1973 were designed to reflect the principle that the terms of a claim should be commensurate with the invention’s technical contribution to the art. Taking into account the description, the board regarded the division of the image into regions and subsets as essential for achieving the technical effect underlying the invention. Therefore, the subject-matter of claim 1 was not supported by the description. The board concluded that claim 1 did not comply with Art. 84 EPC 1973.
This indicates the need, when drafting claims for computer-related inventions, to provide clear and unambiguous definitions of terms used within the claims. This is especially important when features of the claims relate to abstract entities, e.g. data within a data processing system.
Added Subject Matter and Features without Technical Contribution
In T 1779/09 the board considered that the appellant had found itself exactly in the situation envisaged in decision G 1/93 (OJ 1994, 451). As emphasised in Headnote II of G 1/93, “a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Art. 123(2) EPC.” These principles were confirmed in G 2/98 (OJ 2001, 413) and G 2/10 (OJ 2012, 376). The board in the case at issue concluded that a limiting feature which generally would not be allowable under Art. 123(2) EPC could, under certain conditions, nevertheless be maintained in the claim of an opposed patent in the particular situation addressed in decision G 1/93. It then complied with Art. 123(2) EPC by way of a legal fiction. In the case at issue, the term “only” was introduced during the examination proceedings and successfully objected to under Art. 100(c) EPC in proceedings before the opposition division by the former respondent. Since the board considered the term to be truly limiting, its deletion would extend the protection conferred and thereby infringe Art. 123(3) EPC. However, the board held that the exclusive limitation did not influence the solution of the technical problem as understood from the application as originally filed, and hence provided no technical contribution to the claimed invention (see also decision T 384/91, Headnote II). It merely excluded protection of part of the invention described in the application, thus not giving any unwarranted advantage to the applicant. Claim 1 of the appellant’s sole request was therefore deemed to comply with Art. 123(2) EPC.
The USPTO issued updated guidance on Patent Subject Matter Eligibility (i.e. things you can get a patent for in the US) at the end of July.
The materials are fairly dense and help address some of the criticisms raised by applicants. Further explanations of the approach are provided as well as an expanded list of examples.
Reading between the lines, it appears the USPTO is moving towards a position that is harmonised with European, Chinese and UK approaches on excluded subject matter.
Having a relatively simple mind, I found the following page from the guidance summary useful.
Claimed Subject Matter:
The alleged invention relates to a computer system and method for executing a point of sale transaction. In particular, the invention provides a point of sale terminal which is capable of receiving first price data from at least one item purchased by a customer and a server which receives both transaction data from the point of sale terminal and second price data pertaining to comparable competitor items from an update server so that the first and second price data can be compared and a voucher issued based on the comparison.
[This appears to be a patent application directed to Sainsbury’s Brand Match feature.]
The Hearing Officer found that the actual contribution of the invention related entirely to a method of doing business which, as it was brought about by a computer program, also related to a computer program, as such. The invention was therefore excluded by section 1(2) and the application was refused.
Section 22 shows the risk of using an argument that is not present in the specification; the Hearing Office was sceptical of an argument based around quality control / self-checking that appeared to have little basis in the application as filed. As we have seen with many Europe cases, basing an argument on advantages not described in the patent application rarely succeed.
The Applicant attempted to argue that a technical contribution lay in “the overall architecture of the computer system with technical components which in themselves are known but connected in a different way” . However, on applying step 3 of the Aerotel/Macrossan test the Hearing Officer was firmly of the view that “the actual contribution relates entirely to a way of conducting business” (see 27). This is because the actual contribution was deemed to be “about: (i) comparing prices, which manifestly is a business issue, and (ii) issuing a voucher with “value” information on it, which is also wholly a business issue”.
Section 29 has useful comments on whether the computer program exclusion is avoided. It was argued that “it is the connectivity of the components of hardware that creates the overall architecture of the invention” and that the computer program “lies in the middle of the system” but does not make up the whole system. This was found to be initially persuasive. However, the Hearing Officer concluded that the ” connectivity is necessarily brought about by a computer program” and that therefore lies “entirely in the programming itself”.
Claimed Subject Matter:
OFDM-transmitting apparatus and method, and OFDM-receiving apparatus and method.
This case provides an interesting consideration of technical prejudices.
The Appellant attempted to argue that technical prejudices of the company behind the closest prior art document (the BBC) meant that the claimed solution was not obvious.
The Board disagreed with the Appellant’s arguments stating (see 2.1.10):
In this regard, the board notes that, in general, cost considerations and technological preferences of a particular company (like the BBC in this case) cannot impose technical prejudices or uncertainties upon a technically skilled person such that he would be deterred from envisaging a technically sound and feasible solution for that reason alone. Otherwise, when analysing and interpreting the actual teaching of the closest prior art determined for the purpose of assessing inventive step according to the well-established “problem-solution approach”, internal experiences, beliefs, and preferences concerning technologies to be applied by the company from which that closest prior art originates would generally have to be taken into account. This would in turn mean that – to answer the question whether the skilled person starting out from the closest prior art would in fact arrive at the claimed solution – additional internal background information on the respective closest prior art (e.g. derived from witness statements from some employees as provided by the present appellant) would be necessary. In other words, the extent to which the notional skilled person in fact applies his skills in providing a solution to an objective technical problem would be unduly bound by such internal information (e.g. the expected infrastructure costs incurred by the BBC when proposing a change in its applied technology) at the filing date of an application instead of finding an appropriate solution to the objective problem posed. That would, however, definitely be incompatible with the problem-solution approach as generally applied.
Rather, the person skilled in a technical field (i.e. mobile communication networks in the present case) would try to seek a technical solution to an objective technical problem (i.e. choosing a certain pilot symbol pattern) under certain constraints (i.e. digital video distribution), starting with the closest prior art (i.e. document D1). However, based on the reasoning set out in points 220.127.116.11.1 to 18.104.22.168.9 , the board considers that said skilled person would arrive at the solution (i.e. using a DVB-T-based pilot symbol pattern) according to feature A) of claim 1 without exercising inventive skills.
[With thanks to Jake Loftus for help finding and reviewing these cases.]