Volume 4 - Number 4 | August 2003
| August issue in PDF format |
| Maximizing Your Patent Prosecution Dollars: A Few Simple Considerations By Benjamin Hershkowitz According to the statistics released by the USPTO (available online at www.uspto.gov/web/offices/ac/ido/oeip/taf/reports.htm), approximately 326,508 utility patent applications were filed in 2001 in the United States and 166,045 utility patents were granted. The cost associated with the preparation and prosecution of patent applications last year was a multi-billion dollar business. In this era of cost controls, it is rare to find a patent prosecution department that is not subject to budgetary constraints. In-house patent counsel, as the gatekeepers for prosecution, need to select and work with outside patent counsel to maximize the return on their patent prosecution investment. |
| Risk Modeling, Not Patent Mining: Identifying the Best Patents for Licensing By Arthur M. Nutter Patent value increases when positive cash flow can be attributed directly to it. Ideal patents for licensing are those already being used (or, perhaps, abused) by others. Unfortunately, identifying unauthorized patent use can be like finding a needle in the proverbial haystack. Random patent mining by bibliometric methods is an extremely inefficient method of identifying licensing candidates — but many patent owners continue to use such methods out of habit. |
| To Develop a Patent Portfolio, Get Active By Christopher M. Tobin and Lanny Vincent You've conveyed the importance of developing a patent portfolio within your company, hired an IP manager, initiated an inventor incentive program, and budgeted for the costs of protecting your company's IP. Now, you are beginning to wonder where all the inventions are. |
| Vague Claim Construction Rules Lead to Reversals By Lewis R. Clayton Why can't federal trial judges figure out what patents mean? As it held en banc in Cybor Corp. v. FAS Technologies, Inc., 138 F3d 1448 (Fed. Cir. 1998), district court rulings on claim construction —interpretations of the meaning of patent claims — are reviewed de novo as questions of law by the U.S. Court of Appeals for the Federal Circuit. A recent study concluded that more than 40% of all claim construction rulings reviewed by the Federal Circuit in 2001 were reversed in whole or part. Andrew T. Zidel, "Patent Claim Construction in the Trial Courts: A Study Showing the Need for Clear Guidance from the Federal Circuit," 33 Seton Hall L. Rev. 711 (2003). |
| Patent News By Kathlyn Card-Beckles Highlights of the latest patent news and cases from across the country. |
