Mistakes were made. Occasionally we all mess up. When millions of dollars of patent lawsuits could be hanging in the air depending on your patent search, it’s not an ideal time to commit an error and “score on your own net.”
Still, mistakes are part of life, and it’s best to be able to recognize areas in which you might be most prone to making mistakes. Are you lax when communicating with your client (internal or external)? Identifying areas for improvement can lead to a more considerate course of action, which can cut down on mistakes. Double check that email or have a co-worker do it (and help them in return!).
One time I was assigned a search which required clearing a priority date (such as you would find in a Validity search) and I happened to find the perfect reference (maybe some of you can already see where this is going). All the features matched the patent which I was comparing it (with only one or two exceptions)! It fit so neatly. It came time for me to fill out a report citing the bibliographic information from my reference and I realized in horror that my reference missed the priority date by a mere month. I quickly scrambled back to the reference’s patent family in search of a related document that would clear the date only to come up empty handed. I had lost all the time and effort dedicated to using my now irrelevant reference. It ended up being a long night as I scrambled to put the pieces back together and finish the search.
Thankfully I’ve learned how to become more efficient and double-check my work as I go along, but this is only one kind of error that can be made during a patent search. Read on to find out the five worst mistakes you can make in the process of doing a patent search (and what you can do, should they happen).
1. Forgetting to check the date – As I just mentioned, not checking your priority date (or another date important to the client) is something that can cost you a lot of time and effort. If you miss it completely, it could cost you even more since you’ve just delivered a useless product. If you discover this mistake, check the family information of your incorrect reference. You could get lucky and find a similar patent document with an earlier date.
2. Making a typo – If unchecked, this can cause a lot of confusion. You may be presenting information from one patent in your report, but have the number of another patent document listed alongside. Your client goes to pull up the PDF of the document and is stumped when it has completely different information. Another example of this kind of mistake can occur when typing a search query. Befuddled as to why your search turned up zero hits? It could be a typo. Even worse is when your typo is covered up by Boolean logic such as OR which will still return hits (although not the full range you wanted). Typos in patent numbers, other bibliographic information, and queries can be hard to spot with the naked eye, so a little careful preparation goes a long way to avoiding this mistake.
3. Not understanding the client’s needs – Didn’t realize the client wanted a full-text search? You only cited examples from the Claims section of patent documents and it’s not a Freedom-to-Operate search? It’s best to be explicit and get on the same page as the client from the get go rather than having an uncomfortable conversation after you thought you had finished your job (only to find out you have much more to do, perhaps at your expense).
4. Searching the wrong authorities – This can happen as a cousin to the previous mistake, due to poor communication. Missing the fact that your client needs Italian references to support a lawsuit in Italy could be a crucial mistake and erase all of the usefulness of your work. Again, it’s best to be clear from the outset rather than scrambling for family equivalents (which might not really be equivalent) after the fact.
5. Missing the deadline – A no-no in any service industry, missing deadlines (even tight deadlines) is a major mistake. Because they are tied to legal services, some patent searches just cannot be postponed, delayed, or extended. Make sure that any issue that could put your deadline into question is addressed with your client. You may or may not have that wiggle room available.
Have you fallen prey to any of these mistakes? Do you have any more to add to this list of maladies? Tell us your horror stories below!
This post was edited by Intellogist Team member Chris Jagalla. The Intellogist blog is provided for free by Intellogist’s parent company, Landon IP, a major provider of patent search, technical translation, and information services.
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3. 5 Biggest IP Legal Mistakes Small Companies Make When Working with Large Companies
Open Innovation guru Stefan Lindegaard recently asked me what the biggest IP legal mistakes small companies make when they are working with large companies. This is a subject very near and dear to my heart, as I am currently “moonlighting” as GC of a start up energy company that is moving toward licensing our technology into large companies. Also, as a senior IP lawyer at a multi-national consumer products company, I was on the other side of such deals on more occasions than I can count. Prior to that, I was a law firm partner representing large and small corporations in patents and licensing issues, and in doing so, I now realize that I killed more deals than I ever facilitated, a situation that is more typical of law firm lawyers than it should be, unfortunately.
In view of this multi-faceted experience, I present this list of the 5 most common mistakes companies make when working with large companies in Open Innovation.
1. Thinking you have all the answers for the large company’s problems:
As a small company, you often have only have a single idea or technology and you quite properly focus your attention in this direction. This can be damaging to your ability to do complete an Open Innovation deal with a big company, however. The large company may not care about what you see as the value of your technology because they are the experts in their products and customers. Indeed, you may be wholly wrong about why the large company is interested in speaking to you. If you want to sell or license your technology to a large company, your best bet is to focus on the specific technology aspects, and leave the business and customer issues to the other side, at least at the early stages of discussion.
2. Bringing the wrong lawyer to the table:
Very often small companies assume the lawyer who handles their intellectual property issues is the appropriate person to bring to a conversation with the big company. However, the legal skills a small company needs to obtain its patent rights are very different than what are needed to get a deal done. While protection of your small company’s IP should be paramount in any dealings with the large company, putting up complicated restrictions about the use and ownership of your IP even before you know a deal is likely to happen, which is the natural inclination of most IP attorneys, can often end up in the other party walking away before a deal is even underway. I have found the best lawyers to negotiate deals in the Open Innovation context are business-focused attorneys, who tend to be people who have served a stint in the corporate world and who might even have little experience with high-end IP issues. It can be tough to find someone with these credentials, however. As an alternative, I like to work with licensing experts, most of whom have successfully closed most deals in a year than many law firm IP lawyers see in their entire careers. These licensing experts are frequently not lawyers, but they have negotiated enough agreements to be very good at spotting the legal issues and, in this regard, they often do a better job than lawyers.
3. Putting the legal issues ahead of the business issues:
Even if you hire a business-focused attorney or licensing consultant to deal with the large company in an Open Innovation context, deals can still go awry when legal issues are discussed before a business agreement is is made in principle. When working with small companies seeking to license their technology, I typically tell them that the last person they want in the initial discussions is a lawyer. (Interestingly, this is the opposite advice I gave when I was a lawyer billing my clients on an hourly basis.) I can coach a competent business person about the basic legal issues they need to know while building a term sheet with their counterparts at the large company, but as a lawyer, I can never fully understand their business and financial details at the level needed to sufficiently issue spot these issues. If the business parties have established a good working relationship, then it should be fairly easy to renegotiate a term sheet if it is later found out that the business agreement has resulted in legal issues arising. Of course, a deal could still get done if the lawyers lead the process, but I can almost guarantee you that the process will not only cost you significantly more money, but also more aggravation if you put your attorney out in front.
4. Not understanding the economics and low probability of success of product development:
Often, small companies believe that licensing to a large company means that a big payoff will be forthcoming immediately and for a long period in the future. Hypothetically, if I was to license my start up technology to a large company today, I should expect that a product would not be in the market for 12, 18 or 24 months or more, and that it will cost the large company hundreds of thousands, or often more than a million, dollars to introduce a product into the market, depending on the specific product. Moreover, the failure rate of new products is well above 75 %, so it can be expected that event the best technology has a better than even chance of failure. Of course, by the time the small company enters into negotiations with the large company, the small company has borne all the risk, however, moving forward, the large company will now acquire substantial risk. Rather than seek a big pay-out on the front end, I strongly suggest developing a licensing arrangement directed toward risk sharing by both parties. Certainly, the large company likely has a greater ability to bear risk than a small company, but when the small company shows it is willing to have “skin in the game,” deals are more likely to get done.
5. Assuming the large company intends to “stick it to you”:
The prevailing view of the dynamics of when a small company seeks to license or sell its technology to a large company is that the latter wishes to pay as little as possible or, even better, to crush the little guy so they don’t have to pay at all. This perspective is bolstered by Hollywood and the news that like to find situations involving drama like the theft of patent rights or the like. In reality, however, large companies engaging in Open Innovation today have made the decision that they need partners to be successful in their product development efforts. The decision to go outside of one’s own company is one that signifies a collaborative environment at a large corporation, and it is less likely that a company that has truly embraced Open Innovation will be motivated to “crush” or otherwise debilitate their partner. Why would they?: If the small company thrives, the large company will likely end up making even more money. The fact that identifying and developing a new partner costs much money and opportunity costs also cannot be ignored when considering the motivations and actions of the large company. This is not to say that there will not be disagreements in the dealings between the large and small companies; lack of alignment is inevitable in any situation involving collaboration. However, in today’s Open Innovation environment, I think it is wrong for a small company to question the large company’s motives when a disagreement arises. This is a further reason for business people at the respective companies to develop a relationship before bringing the lawyers because brewing disagreements can more easily settled by people who understand their partner’s business goals before a full-blown conflict arises.
The above list is a modest attempt to identify the issues that I have often seen arising when large and small companies deal with each other. Of course, lots more can go wrong in Open Innovation dealings than I have laid out in this post. The best advice I can give to small companies that are seeking to sell or license their technology to a large company is akin to the same advice many long-term married couples often give to others who want to know what their “secret” is: become friends first, try to understand what the other party wants out of the deal and don’t be afraid to talk out your disagreements. At the end of the day, all successful business partnerships center on building relationships and strong communication, and Open Innovation is no different.
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4. Top Ten Jury Verdicts of 2010
Published: January 18, 2011
The size of the Top Ten Jury Verdicts increased again in 2010.
The average increased less than the prior year, however, rising from nearly $145 million to just under $157 million. (The average for 2009 increased nearly $33 million from the prior year.)
The top award was significantly higher in 2010 - $505 million versus $370 million. But there then was a sharp drop: the #2 award was $208.8 million, and the #3 award was $152 million. In contrast, 2009 saw three awards in the $300 million range.
The year’s top verdict went to a Las Vegas principal who developed Hepatitis C several weeks after undergoing a routine colonoscopy. During the procedure, he was given anesthesia from a 50 ml vial that had been reused from another patient.
The #2 award went to a California woman who developed mesothelioma from exposure to her husband’s asbestos-laced laundry, and three of the Top Ten were against tobacco companies.
Lawyers USA compiles the Top Ten Jury Verdicts each year, applying certain ground rules. First, verdicts must be to an individual plaintiff, defined as a single person, family or small group of individuals injured in a single incident who had their claims tried in one case before the same jury.
Second, we do not include business-against-business suits, class actions or consolidated cases. Finally, cases must have been defended - default verdicts and suits against incarcerated individuals are not included.
- Susan A. Bocamazo
10. Tobacco plaintiff wins $80 million verdict: After eight straight defense verdicts in the individual tobacco litigation in Florida, the daughter of a smoker who died of lung cancer won a resounding $80 million verdict in November, including $72 million in punitive damages.
9. Jury delivers $82.5 million verdict in gas plant blast case: A Texas jury has handed down a verdict of more than $82 million against two natural gas plant companies after a worker in a rebuilt and refurbished plant was killed in anexplosion.
8. $89 million in airplane crash case: In April of last year, a Pennsylvania jury handed down an $89 million verdict against the manufacturer of an airplane carburetor after a crash killed four people and severely injured a fifth.
7. Fla. jury awards $90.8 million to smoker’s widow: In April, a Florida jury awarded $90.8 million to the wife of a longtime smoker who died of lung cancer.
6. Law firm slammed with $103 million verdict for working against client: In October, a Mississippi jury hit the world’s largest law firm with a $103 million verdict in a suit alleging legal malpractice, breach of fiduciary duties, conspiracy and interfering with business relationships.
5. Jury awards $124.5 million in passenger van crash: A Texas jury found a bus company and driver liable for $124.5 million to seven passengers injured or killed while riding in a van in a state where it was not licensed to operate.
4. Small firm lawyers win $132.5M in Ford rollover retrial: The third time was a charm for small-firm lawyers who won $132.5 million against Ford for a rollover accident that killed 22-year-old New York Mets prospect Brian Cole.
3. $152 million for estate of woman given free cigarettes as a child: A Massachusetts jury awarded $152 million to the son of a deceased woman who received free cigarettes as a child from representatives of tobacco company Lorillard.
2. Worker’s wife awarded $208.8 million for asbestos-laced laundry: In April of 2010, 68-year-old Rhoda Evans won $208.8 million for the mesothelioma caused by asbestos contamination that her husband brought home from his job. The jury awarded $8.8 million in compensatory damages and $200 million in punitive damages. The compensatory award was split 70/30 between the pipe maker and the employer, but the pipe maker alone was held responsible the entire punitive award.
1. Small firm wins $505.1 million verdict: Arguing that oversized vials of a drug were “weapons of mass infection” that led to an outbreak of Hepatitis C at outpatient surgical centers, Las Vegas plaintiffs’ attorney Robert Eglet convinced a jury that the manufacturer and its distributor should be punished with $500 million in punitive damages, in addition to $5.1 million in compensatory damages.
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5. Australia-US Patent Prosecution Highway Extended and Expanded
announced today that the Patent Prosecution Highway (PPH) trial between the
Australian Patent Office and the US Patent and Trademark Office (USPTO), which
commenced on 14 April 2008, will once again be extended – until 13 April 2012 –
and will now be expanded to include search and examination work carried out
under the Patent Cooperation Treaty (PCT).
The PPH is an initiative of
the USPTO, now in-place with a number of national and regional patent offices
around the world, whereby an applicant may request accelerated examination in
one office (e.g. the USPTO) based on a determination by the other office (e.g.
the Australian Patent Office) that at least one claim of a corresponding
application is allowable.
Expansion to include PCT work
product, i.e. a ‘PCT-PPH’ pilot, means that a favourable outcome of an
International Search and Written Opinion issued by one office may also be used
as a basis for accelerated examination in the other.
The IP Australia
Official Notice can be found here.
BENEFITS OF THE PPH PROGRAM TO AUSTRALIAN APPLICANTS
It is our view that, in its present form at least, the Australia-US PPH favours Australian applicants over their US counterparts. The Australian Patent Office currently allows applicants to request expedited examination without the need to provide substantive reasons, and without payment of any additional official fee. An examination report generally issues in an expedited case within three months. Furthermore, it is standard practice for Australian examiners to identify and review the prosecution history of any corresponding US and/or European cases.Therefore, when the USPTO is the office of first filing, it would be possible to obtain the full effect of the PPH program in a corresponding Australian case, even if the program did not exist!
Going the other way, however, the ability to use the outcome of examination in Australia as a basis for accelerated examination in the US may be highly beneficial, considering that other grounds for acceleration (known as ‘making special’ by the USPTO) are difficult to satisfy, and/or involve the applicant making potentially prejudicial statements or admissions in relation to the application.
Furthermore, since examination may be requested and expedited at filing in Australia, resulting in acceptance of the application within as little as three months, it is at least theoretically possible to proceed from filing of an Australian priority application, to allowance of a corresponding US case, in around a year. We are, in fact, aware of at least one case in which this actually occurred.
Presumably the USPTO and IP Australia are monitoring the pilot to assess its value, and this further extension and expansion implies that they are happy with the progress to date.
We would encourage all Australian applicants for whom the early grant of a US patent may have commercial or strategic value to carefully consider use of the PPH program.
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