In this section, we offer to all our clients updates on the best information and articles that we believe will help you and your company make the best decisions regarding your IP strategy, Patent Valuation, licensing and analysis. Write us with questions or comments on any of the information provided in this section.

----------------------------------------------------------------------------------------------------------------------------

8/3/12 RS  The importance of claim construction. Most inventors make the mistake of being too specific.  ST@ IPStrom

Federal Circuit Again Supports USITC Jurisdiction for Pure-Enforcement NPEs; Court Again Splits on Claim Construction

by Dennis Crouch

InterDigital v. USITC and Nokia (Fed. Cir. 2012)

InterDigital is a publicly traded company whose primary revenue comes from patent licenses. The majority of 3G mobile handset manufacturers pay royalties to the company. After conducting its investigation, the US International Trade Commission (USITC) found that Nokia did not infringe InterDigital’s patents. On appeal, the Federal Circuit has reversed based upon the USITC’s improper and unduly narrow construction of the claim terms “code” and “increased power level.”

The USITC was designed to protect US industry from “unfair” foreign competition. Thus, the staute includes a “domestic industry” requirement that must be satisfied as a precondition of enforcing patent rights through the USITC. In the appeal, Nokia argued that InterDigital could not satisfy the domestic industry requirement. That argument was rejected by the USITC and on appeal as well. The Federal Circuit held particularly that “patent licensing alone” can be sufficient to satisfy the US industry requirement and that the statute does not require that any actual articles covered by the patent be manufactured in this country. “That is, the domestic industry requirement is satisfied if there is a domestic industry based on substantial investment in the patent’s exploitation where the exploitation is achieved by various means, including licensing.” (internal formatting removed).

Writing in dissent, Judge Newman would have sided with the accused infringer and held the patent not-infringed. Newman writes:

The panel majority’s enlargement beyond the invention described in the patents, in disregard of the protocols of claim construction, simply adds uncertainty to the patent grant. In today’s technology-based commerce, rational economics requires that the patent provide a reliable basis for investment. The patentee is in control of the specification that describes the invention. The panel majority’s theory that “the inventors’ failure to include a reference to the alternative embodiment in the specification does not justify excluding that embodiment from the coverage of the claims” is a departure from routine rules of the meaning of legal documents, and in negation of the notice purpose of the patent claim. From this unsound approach to claim construction, and its incorrect conclusion on the facts of this case, I respectfully dissent.

Judge Newman’s suggestion here is to give claim terms a narrow definition when the patentee uses an ambiguous term and does not provide any limiting definition to that term.

Posted on Aug 01, 2012 at 04:35 PM | Permalink | Comments (87)

Digg This | Save to del.icio.us
6/2/12 RS  This article points out some of the reasons that your company should patent your ideas. There are many things missing or unclear in the article. Can you spot a few? Let us know. Roger.Stanley @ IPStrom

http://www.bizjournals.com/bizjournals/how-to/growth-strategies/2012/01/how-to-protect-your-intellectual.html

How to protect your intellectual property 

The Business Journals by Robyn Davis Sekula, Correspondent
Date: Tuesday, January 31, 2012, 5:46pm EST 

Vanessa Pierce Rollins, IP Law and Policy Counsel for the Intellectual Property Owners Association, says the ability to create patents, trademarks, trade secrets and copyright material is essential to an entrepreneurial economy.

So you’ve built your business around a product or created a marketing campaign with a catchphrase that you want to belong to your business, and yours alone. The best way to protect those items? Invest the time and money it takes to protect your intellectual property, experts say.

The ability to create patents, trademarks, trade secrets and copyright material is essential to an entrepreneurial economy, says Vanessa Pierce Rollins, IP Law and Policy Counsel for the Intellectual Property Owners Association .

IP protection is important because it provides an incentive for creators and enables them to recoup costs, Rollins says. “Especially in producing something such as a blockbuster movie or a new drug, something that takes a lot of investment and years of work, if a competitor was to come along and freely take that work, what incentive would there be to produce it? The only incentive would be fame or recognition in the field, but that can only go on for as long as there is money to fund that.”

In many cases, an attorney’s involvement is necessary or strongly advised, Rollins says. Attorney John Boyd, a partner with Rimon PC, a law firm with offices across the United States, says patent law in particular is not a do-it-yourself area. Boyd, also an engineer, sold five patents to Apple in 2010.

“Patent law has changed dramatically in the past 10 years,” Boyd says. “We had a patent bubble, and it has popped. It’s important that companies understand all the pitfalls and challenges. This is not a do-it-yourself area.”

Patent applications are extremely difficult for a business owner to complete, and they go through a rigorous process, called prosecution, after the applications are submitted. Patent attorneys are required to have both a technical or scientific background as well as a law school education and must pass a separate patent bar exam to file and prosecute patent applications with the U.S. Patent and Trademark Office. Patent agents are a less expensive alternative, but they usually do not have a law degree and instead have a technical background, Rollins explained.

After a patent is filed, prosecuted and granted, a business should defend the patent from infringement and then must renew it periodically. Defending the patent sometimes can require lawsuits against those who infringe on it. Patents expire and are not renewed after 20 years from the original filing.

Another area of intellectual property is copyright. Copyright applications are a very simple form that a layperson can handle, Rollins says. Copyright is good for the lifetime of the author or creator plus 70 years.

Attorneys should be involved from the beginning of the creation of a trademark, Rollins says, as they can help a business owner determine whether the item the company wishes to trademark is unusual enough to do so. They can help the company find a better trademark if another exists that is similar. Like other types of intellectual property, trademarks need to be enforced. Other organizations or businesses that are using a similar symbol or brand can dilute the value of the brand, and that can damage your business, Rollins says.

Boyd notes that an attorney often will outsource trademark research to an expert, who will usually produce a telephone-book-sized list of everything that’s similar to the trademark the company wants. This helps the business owner and the attorney determine whether it is the right trademark or whether it should be changed.
If a business owner chooses a trademark that is too similar to an existing one, the business can be forced to make expensive changes, Boyd says.

Trade secrets are items that would damage a company if revealed. Rollins cites as an example the formula for Coca-Cola or KFC’s original recipe. In some cases, companies choose not to patent a recipe, formula or other innovation because patents are public. “Can competitors easily reverse engineer it?” Rollins says. “If so, then get a patent. If not, it might be better to keep it secret and not have to police it.”

In that case, nondisclosure agreements, employment contracts and noncompete agreements can help protect those trade secrets. Involving an attorney in those discussions can help a business owner decide what needs to be covered by such contracts and agreements. Also, hold trade secrets under “lock and key,” Boyd says. Trade secrets should be disclosed only to those who absolutely have to know.
________________________________________
What is Intellectual Property?
There are four types of intellectual property, says Vanessa Pierce Rollins, IP Law and Policy Counsel for the Intellectual Property Owners Association. Here’s a brief description of each.
Patent: A useful innovation or invention.
Copyright: A creative or artistic work that can be written down, recorded or otherwise captured. Books, music and dance all can be protected by copyright.
Trademark: The value of a brand, including things such as a logo for a company.
Trade secret: Something that derives value by not being known. The recipe or formula for a food item is an example.
________________________________________
Web sites
Intellectual Property Owners Association, www.ipo.org
World Intellectual Property Association, www.wipo.int
Rimon PC, www.rimonlaw.com

5/30/12 RS  Are there really only four types of Intellectual Property? Can you name a few others?  Roger.Stanley @ IPStrom

----------------------------------------------------------------------------------------------------------------------------

4/29/12 ST   Why does Tom focus on commercial markets for patent valuation? There are many areas that can/should drive your decision to get a patent. Can you name a few?

http://www.standard.net/stories/2012/01/27/are-your-intellectual-intangible-creations-worth-protecting

Are your intellectual, intangible creations worth protecting?
By Tom Fehr
Standard-Examiner correspondent
Fri, 01/27/2012 - 11:18pm
Images
Related Stories
New group of business columnists to appear in Standard-Examiner

Almost everyone diligently strives to protect their tangible property -- be that a home, a cherished automobile, a wedding ring or an almost limitless number of other objects. Whether the value of such property is sentimental, financial or both, the property is important to us.

A desire to maintain ownership of even intangible works we create seems inherent when we are in school. We desire credit for what we have accomplished academically, usually receiving that recognition in the form of praise or good grades. In a professional sense, inventors, novelists, playwrights, composers, musicians, actors and computer programmers, to name just a few, want to safeguard the ownership of their tangible and intangible property and to receive the rewards produced by the commercial use of such property.

Our legal system, and the legal systems of virtually all nations, have throughout their existence recognized and enforced ownership rights in private property.

The branch of law that provides protection for an individual's original works is termed intellectual property law and includes patents, trademarks, copyrights, trade secrets, trade dress and unfair competition.

By excluding others from wrongfully using the original works of an individual, intellectual property law enables the creator of a work to reserve the fruits of their creativity, whether sentimental or financial.

Patents on highly technical products can be enormously valuable. News articles have discussed the likelihood of decreased profits for Pfizer Inc. because the patent on the cholesterol-fighting drug Lipitor has expired, permitting the manufacture and sale of generic versions of that drug.

And news stories concerning patent infringement lawsuits between manufacturers of smartphones have become common.

Earning a doctorate in science or engineering can be of enormous help in conceiving and creating inventions involving high technology. I have, for example, obtained a patent in biotechnology for the dean over the College of Sciences at the University of Texas in San Antonio and a patent related to nanoparticles for a professor in the Department of Biomedical Engineering at Catholic University in Washington, D.C.

Desirable, patentable inventions, however, are produced by individuals with a wide variety of talents. My efforts have resulted in patents within the U.S., Europe and Japan for a noted athlete -- former Utah Jazz Hall of Fame player John Stockton.

And the Rocket at Lagoon, as well as rides in Disneyland and throughout the world, are the subjects of patents that I helped acquire for Stan Checketts, an enormously creative man who successfully operated a cabinet business before he entered the amusement field.

A major key in deciding whether your creation economically justifies the financial investment required to seek legal protection is determining whether there is a commercial market for your creation or whether your creation is one of those rare developments -- such as the personal computer -- that will create its own market.

Even a child's toy, given the ability to mass produce and mass market the toy, has the potential for great value. A friend from law school, John Quinn, represents Mattel Inc. in a lengthy battle with MGA Entertainment Inc. over ownership rights to the Bratz line of dolls. Although it is currently under appeal, a federal court in Santa Ana, Calif., has entered a judgment in that case for $309.9 million.

My knowledge of this subject arises from being a graduate of Harvard Law School and possessing a bachelor's degree as well as a master's degree in physics from the University of Utah. I was ranked highest in the graduating class when I received my bachelor's degree and received my master's degree with distinction.

I have obtained patents throughout the world and have litigated in many state and federal courts, practicing predominantly in California and Utah.

I will be writing a series of articles describing, among other things, the various forms of intellectual property law, developments in that legal field, related principles of business law, tools you can utilize to protect your creations and how to find competent professional assistance. I hope this information will aid you in protecting your creative ideas.

Tom Fehr is a Ogden attorney with an international practice concentrating on intellectual property and patents. He can be contacted at fehrlawinfo@yahoo.com.

10/13/11 - This article points to the worth of valuing your patent portfolio. Raising the valuation of public and private companies is always an important step towards getting more funding or increasing stock prices. IPStrom is a recognized leader in IP valuation. We use valuation methods that are both industry standard and based on real world IP valuation methodology developed by IPStrom. Let us help you get the most from your Intellectual Property and patents.

http://www.ipwire.com/ip-deals-and-opinion/tcs-patent-portfolio-value-estimated-at-114-million-to-171-million-by-ipcapital-group.html                                                                                    -----------------------------------------------------------------------------------------------------------------------------

TCS Patent Portfolio Value Estimated at $114 Million to $171 Million by ipCapital Group Robert F. Held, Certified Licensing Professional, Hired to Lead Commercialization of TCS Intellectual Property

ANNAPOLIS, MD, Oct 11, 2011 (MARKETWIRE via COMTEX) -- TeleCommunication Systems, Inc. (TCS) TSYS -0.02% , a world leader in highly reliable and secure mobile communication technology, reported that a leading intellectual property strategy consulting firm, ipCapital Group, Inc., has estimated the potential value of TCS' published patent portfolio as of June 2011 at between $114 million and $171 million. The estimated value of TCS' published patents by ipCapital Group is based on ipCapital Group's proprietary and highly-regarded ipValue Model(SM) process, and represents the total risk-adjusted potential market value of TCS' 136 U.S. patents and 177 published U.S. applications, along with their foreign counterparts, in terms of a possible total portfolio patent license or sale. The value range is based on optimistic and pessimistic market size results relative to base-line forecasts derived from third-party research. The valuation report did not cover approximately 150 unpublished U.S. and foreign patent applications. Based on various forward-looking assumptions, ipCapital Group believes the potential future value of TCS' expanding patent portfolio is more than $200 million. "TCS has a strong portfolio of very unique and valuable patents in promising areas, and given the growing interest in patent acquisition and licensing, we believe it is timely that the company steps up its efforts to license and otherwise monetize its protected inventions," remarked John Cronin, managing director and chairman of ipCapital Group. "With the recent passage of the America Invents Act, companies like TCS have new opportunities to grow and better protect their intellectual property portfolio and avoid lengthy patent review processes, reduce litigation and help to allay concerns around protecting patents abroad." To lead TCS' program to strategically expand and monetize its patent portfolio, the Company has appointed Robert F. Held to the new position of senior director of intellectual asset management. ipCapital Group's research and analysis provided TCS guidance regarding opportunities and priorities for commercialization, as well as estimated valuation ranges for potential licensing partners in the wireless data, location-based services, E9-1-1, GIS/mapping and messaging markets. Mr. Held is a Certified Licensing Professional(TM) of the Licensing Executives Society (LES) and has more than 13 years of experience in the IP field. He comes to TCS from Northrop Grumman Corporation, where he served as director of the Intellectual Property & Strategic Technology Agreements business unit for the Electronic Systems Sector. He also previously held senior-level positions at BTG International and the American Society for Testing and Materials (ASTM). Held has been an active member in LES since 1998 and was recently selected as the organization's secretary for the High Technology Sector. "Bob has spearheaded a number of successful IP-related business and technology transactions around the world, including patent sales, enforcement, licensing, IP acquisition and open innovation," noted Maurice B. Tose, TCS chairman, CEO and president. "TCS has generated more than $36 million of gross proceeds from past patent license and sale transactions, so we welcome Bob as we step up our efforts to systematically mine the unrealized value of our IP portfolio, starting with guidance from the ipCapital Group report." Commented Held, "With clear strengths in the messaging, location and wireless communications fields, TCS has created an impressive IP portfolio. The rate at which the company is generating new patent awards is accelerating: the company was issued 24 new U.S. patents in 2010, and in the first nine months of 2011 has been issued an additional 38 new U.S. patents. There are significant opportunities to leverage our IP throughout the world through both licensing and partnership arrangements in core and non-core business areas." About TeleCommunication Systems, Inc. TeleCommunication Systems, Inc. (TCS) TSYS -0.02% is a world leader in highly reliable and secure mobile communication technology. TCS infrastructure forms the foundation for market leading solutions in E9-1-1, text messaging, commercial location and deployable wireless communications. TCS is at the forefront of new mobile cloud computing services providing wireless applications for navigation, hyper-local search, asset tracking, social applications and telematics. Millions of consumers around the world use TCS wireless apps as a fundamental part of their daily lives. Government agencies utilize TCS' cyber security expertise, professional services, and highly secure deployable satellite solutions for mission-critical communications. Headquartered in Annapolis, MD, TCS maintains technical, service and sales offices around the world. To learn more about emerging and innovative wireless technologies, visit www.telecomsys.com . About ipCapital Group ipCapital Group ("ipCG") is an IP strategy consulting practice helping clients develop, manage and use their intellectual property effectively to support strategic business objectives. ipCG offers a range of services and proprietary methodologies to help companies throughout the full lifecycle of IP, from creation and strategic management to value extraction. Since 1998, ipCG has worked with numerous Fortune 500, mid-size and early-stage companies in a wide variety of industries. The valuation performed by ipCG is not a legal or financial valuation of TCS. The intention of the valuation was to assist TCS in estimating the value of its patent portfolio to support decision-making relative to various monetization strategies. The conclusions, estimates, and observations contained in this press release are solely statements of opinion and not statements of fact or recommendations to purchase, hold or sell any securities or make any investment decision. ipCG and its affiliates do not guarantee the accuracy, adequacy or completeness of any information herein and shall not be responsible for any errors or omissions. The valuation conducted by ipCG on TCS' published patent portfolio was based on ipCG's analysis of the relevant competitive patent landscape, industry forecasts, foreign filing data, third-party market research, industry margins, and royalty rates derived from research into comparable intellectual property licensing and sale transactions. Furthermore, the valuation is based on the current portfolio of TCS issued patents and published applications, and does not take into account any non-published patent applications, invention disclosures, any future inventions and patents, trade secrets, or non-patented intellectual property assets or know-how. There can be no assurance that TCS will be able to successfully enter into licensing or sales agreements relating to its patent portfolio or any individual patents or that the realized value of the patent portfolio will be within the range estimated by ipCapital Group. Except for the historical information contained herein, this news release contains forward-looking statements as defined within Section 27A of the Securities Act of 1933, as amended, and Section 21E of the Securities and Exchange Act of 1934, as amended. Such statements include the estimated valuation of TCS' patents and patent applications and the ability of TCS to monetize its patents and patent applications, whether by entering into licensing or sales arrangements or otherwise. These statements are subject to risks and uncertainties and are based upon TCS' current expectations and assumptions that if incorrect would cause actual results to differ materially from those anticipated. Risks include without limitation the assertion that the patent evaluation will result in shareholders receiving future value, and those detailed from time to time in the Company's SEC reports, including the reports on Form 10-K for the year ended December 31, 2010, and on Form 10-Q for the quarter ended June 30, 2011. Existing and prospective investors are cautioned not to place undue reliance on these forward-looking statements, which speak only as of the date hereof. The Company undertakes no obligation to update or revise the information in this press release, whether as a result of new information, future events or circumstances, or otherwise.

10/11/11   Why is it important to understand how patents can be invalidated? Let us know what you think.

----------------------------------------------------------------------------------------------------------------------------

http://ipminds.wordpress.com/2008/04/26/types-of-patent-searches/

Types of Patent Searches April 26, 2008
A nice brief compilation by Vinod Kumar Singh of Competitive and Technical Intelligence Toolbox (CTIB)