Good-Bye for Now

It all began 4.5 years ago.

I embarked on a journey that I could never see coming when I started my law career in 1998.

I started a part-time solo intellectual property law practice out of my home.

If you knew me back then, you would have been surprised.  Why would a woman who vowed never to work in a law firm (and didn’t for her entire legal career) choose to start her own firm?  Especially when she had told everyone that she wanted to be a stay-at-home mom until her child went off to school?

Oh, life holds many surprises, least of which was how much I didn’t like being a full-time stay-at-home mom.  I missed my job.  I missed the people.  I missed dressing up to go to work.

At the same time, I didn’t quite want to let my mom aspirations die.

So what’s a girl with a law degree to do?  Start a law firm of course.

I went back into law part-time on my own terms, and it was good for a while.  It solved my immediate problems of boredom and loneliness.

But it never felt comfortable.  In fact, I felt like I was trying to be something I’m not.

Much to my surprise, I discovered over time that I really don’t like practicing law.  I don’t find the work challenging.  Not like when I was in-house.

I began taking stock of my career and my life.  What do I like?  What do I want to do?  What appeals to me now at this time of my life?

What did I love about my in-house career?  Strategy and teaching.

What did I learn from my years of solo practice?  What it takes to build a great law firm in today’s challenging legal market.

Can I put what I love and what I learned together?  You bet!

Early in 2013, I felt this overwhelming sense that I needed to start something new, a new business dedicated to challenging the legal industry standards and change the way attorneys market and sell their legal services.

In late spring, Lawducate was born.

I worked on my business model over the summer, and am so excited to start this new chapter in my life.

Unfortunately, that means I must say good-bye to my intellectual property practice.

That is such a hard thing to write.   I’ve wanted to be an attorney since I was 13 years old, and I LOVE intellectual property law.  I would not have practiced law if I couldn’t practice IP.

Letting go is not easy, but I’m ready to move on to bigger and better things. Sometimes, you have to say farewell to something, to say hello to something else.

Thank you for reading this blog over the years.  Thank you all for your support.

It’s good-bye law practice, hello Lawducate.

The IP made simple name will live on as a brand new program to train in-house IP counsel, just one of the many unique offerings at Lawducate.

Come visit me soon at my new website, www.lawducate.com.  Follow me now on Twitter at @lawducate.

 

Obama Administration Intervenes in Apple v. Samsung Dispute at the USITC

In a rare intervention, on Saturday, August 3, 2103 the Obama Administration reversed a US International Trade Commission (USITC) decision against Apple.

In June, 2013, the USITC determined that Apple had violated Section 337 of the 1930 Tariff Act, as amended, by importing certain electronic devices into the United States.

Apple products were found to have infringed Samsung’s US Patent No. 7,706,348.  As a result of this finding of infringement, the USITC issued an exclusion order, banning Apple from importing unlicensed smart phones and tablet computers, including the iPhone 4 and the iPad.  They also issued a cease and desist order preventing Apple from selling these products in the United States.

Under Section 337, the President, through the US Trade Representative, has 60 days to review such orders.   The President can approve or disapprove the order, or do nothing, based on “policy grounds”.

What are “policy grounds”?

According to the letter disapproving of the order, “policy grounds” include:

1.  Public health and welfare; 2. Competitive conditions in the US economy; 3. Production of competitive articles in the United States; 4. U.S. Consumers; and 5. U.S. foreign relations, economic and political.

Another policy consideration is whether or not the patent in question is a Standard Essential Patent (“SEP”).  SEPs are patents which cover technology allowing for the interoperability of devices used by a large number of consumers.  In this case, smart phones and tablet computers are subject to certain technology standards.

Companies, on a voluntary basis, can offer licenses to other companies seeking to implement the standard on terms that are fair, reasonable, and non-discriminatory (“FRAND”).  If they offer such licenses, they cannot assert the patent to exclude an implementer of the standard.

Samsung has made a commitment to FRAND licensing of it patents.

Therefore, the US Trade Representative, after careful consideration, based his disapproval on the effect the orders would have on the US economy and the US consumer in light of Samsung’s voluntary commitment to FRAND licensing.

It should be noted that this determination does not prevent Samsung from pursuing a remedy through the US Court System, which Samsung has already done.  A patent infringement lawsuit is currently pending in Federal Court in Delaware.  That case was stayed (with consent of both parties) pending outcome of the USITC case.

New Judge for the US Court of Appeals for the Federal Circuit

Raymond_T__ChenOn August 1, the US Senate unanimously confirmed Raymond T. Chen for a seaton the United States Court of Appeals for the Federal Circuit.  (Who knew both parties could work together to solve our nation’s problems?)

What does this have to do with IP?

Mr. Chen is currently the Deputy General Counsel for Intellectual Property Law and Solicitor for the United States Patent and Trademark Office.  According to a February 2013 White House press release, Mr. Chen has been working in that capacity since 2008, and has vast experience that will serve him well in his new position.

Since joining the USPTO, Chen has represented the agency in numerous appeals before the Federal Circuit and personally argued over 20 cases, issued guidance to patent examiners to ensure consistency with developing law, advised the agency on legal and policy issues, and helped promulgate regulations.  He has co-chaired the Patent and Trademark Office Committee of the Federal Circuit Bar Association and is a member of the Advisory Council for the United States Court of Appeals for the Federal Circuit.

His knowledge of and experience in intellectual property law matters will be a welcome addition to the US Court of Appeals for the Federal Circuit.

Speaking at Founders League Tomorrow

founders_league_logo-83d63f529a032b32f63f5b1d482ba6d3Are you starting a business around a cool new product that you and your team invented?  Are you thinking about what is the best way to protect your business from copycats?  Maybe you would like to know a bit more about the role intellectual property plays in your startup.

Don’t know much about intellectual property?  Know problem.

For anyone who is in the Providence, RI area tomorrow, July 17, I will be speaking from noon to 1pm.

The topic is Intellectual Property 101.  I’ll be giving a short presentation followed by lots of Q&A.

Location: Founders League

95 Chestnut Street

Providence, RI

All the details to sign-up can be found here.

Hope to see you there!

Happy Independence Day!

What’s more American than the Walt Disney Company who just happen to be the largest consumer of fireworks in the world.

Here’s their US Patent No. 5,339,741 for Precision Fireworks Display System Having a Decreased Environmental Impact.

Fireworks PatentMickey Mouse fireworks

 

Breaking News: US Supreme Court Rejects Isolated Gene Patents

supreme courtIn a unanimous decision yesterday, the United States Supreme Court held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.”

So what does this mean?

In his written opinion, Justice Clarence Thomas focused on the fact that Myriad did not create anything by isolating DNA sequences.  They merely discovered, and seek to patent, naturally occurring genetic information.

“Myr­iad’s claims are simply not expressed in terms of chemical composition, nor do they rely in any way on the chemi­cal changes that result from the isolation of a particular section of DNA. Instead, the claims understandably focus on the genetic information encoded in the BRCA1 and BRCA2 genes.”

Slip Opinion p. 14-15

It is a fundamental principal of patent law that “laws of nature, natural phenomena, and abstract ideas are basic tools of scientific and technological work that lie beyond the domain of patent protection.”  Because Myriad merely discovered the DNA sequence as it occurs in nature, that discovery is not accorded patent protection.

However, the news was not all bad for Myriad.

The Court made a distinction between unpatentable isolated DNA and patentable complementary DNA, or cDNA, synthetic versions of DNA that omit non-coding portions.

cDNA can be patented according to Justice Thomas’ Opinion because:

“the lab technician unquestionably creates something new when cDNA is made.  cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As a result, cDNA is not a “product of nature” and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA.

Slip Opinion p. 16-17 (Emphasis added.)

It is important to note the exception spelled out at the end.  It appears that the Supreme Court is requiring a certain amount of human manipulation that results in significant changes to the DNA to put cDNA in a position for patent eligibility.

I for one am happy to see the US Supreme Court supports the idea that the human component of invention , the creating of something new, as opposed to discovering something as it exists in its natural state (like DNA, laws of physics, naturally occurring elements) is still an important part of patent eligibility.

Could you imagine the slippery slope that would be created if companies were allowed to own naturally occurring genes?  Imagine a world where one company owns the autism gene and another owns the gene for Parkinson’s disease.  This is an absurd notion.  How can someone own a gene that so many people share?  Do those that have the gene infringe the patent?

Discovery is important and expensive and I sympathize with Myriad, but they did not invent the BRCA1 and BRCA2 genes.  (If they did, that would be a completely different legal discussion.)  They found them.  And I’m glad there’s still a difference.

The Only Way to Stop Patent Trolls

obamaAfter seeing the Obama Administration’s June 4 announcement on its plan to combat non-practicing entities (NPEs), a.k.a. patent trolls, and reading commentary on the President’s actions and recommendations, I’m having a hard time understanding why anyone in the patent community sees this as real progress toward a viable solution.

The Administration is going about this all wrong.  In typical Washington fashion, they’re not addressing the real problem.

The administration wants to outmaneuver NPEs by improving patent quality as well as the quality of our enforcement agencies.  It also seeks to punish trolls by allowing judges to award attorney’s fees in patent litigation where the plaintiff loses at trial.

But will that really stop patent trolls from suing companies and startups?

My answer is no.

The Administration is working off of a presumption that trolls thrive because of bad patents, in particular bad software patents. The assumption is that overbroad ill-defined patents allow trolls to go after multiple defendants even ones that the patent isn’t meant to cover.   Why doesn the Federal Government care?  If money is spent on patent litigation, it isn’t being spent on R&D thus weakening our economy.

Touting his solutions, the President is basically saying: “Ha ha, NPEs!  We’ll make better patents so you can’t enforce crappy patents anymore.  And if you try to enforce crappy patents, you’ll have to pay up.  What do you have to say about that patent trolls?”

Well if I’m a patent troll, here’s what I would say. “Thanks!  I’ll take the risk of punishment and enforce those better patents.”

Don’t get me wrong. I think improving patent and enforcement quality should be a top priority. It makes the entire system better, but I just don’t see how it specifically helps companies sued by NPEs.  It’s not like they can’t enforce better patents too.

(And just as an aside, better patents mean better ammunition for these well-funded litigation machines.  Better patents means their harder to invalidate, right?)

The real problem goes so much deeper than patent quality and punishment.

In my opinion, the real issue is the cost defendants must pay to defend themselves against patent infringement claims.

Patent litigation is one of the most expensive types of litigation a company can engage in, costing both parties millions of dollars if the case goes to trial.  Most companies, let alone startups, don’t have this type of money.

If you can’t afford to defend yourself, you will settle the case or stop the alleged infringing activity before a judge or jury can find a patent invalid or a judge can award attorney’s fees.

It doesn’t matter if the patent is good, bad, or ugly, or what powers the judge is given, if the case never goes to trial.

If Google and the other Silicon Valley technology giants really think trolls are a problem, then they need to start a fund to help startups pay for patent litigation defense.  Or better yet, stop settling these cases and use their resources to defend themselves in court.

It’s the only way the Administration’s recommendations are going to work.

Silicon Valley must stop paying Washington to solve their problems because the only solutions the President and Congress can come up with won’t work without companies challenging the NPEs in court, which means paying a lot of money to defend themselves.

NPEs aren’t banking on bad patents. They’re banking on the fact that defendants won’t be able to mount a defense.  If defendants can’t defend, patents can’t be found invalid and judges can’t award attorney’s fees.

It’s about money.  

It’s as simple as that.

5/16: 3rd Annual Super Marketing Conference for Lawyers

Calling all lawyers!

The 3rd Annual Super Marketing Conference will take place on Thursday, May 16, 2013 at Suffolk University Law School in Boston, Massachusetts.

What makes this all-day conference special?

  1. It was created by lawyers for lawyers.  This conference specifically addresses the unique marketing requirements of our profession keeping in mind our ethics rules and marketing constraints.  There’s also a heavy focus on the needs of solo and small firm attorneys.
  2. You can attend from anywhere.  They’re offering an on-line viewing option.  You can register to attend via the web here.
  3. The conference offers great networking opportunities for solo and small firm lawyers.  If you can, you really should attend in person to maximize the experience.  Register to join in person here.
  4. It’s affordable at only $69!  Breakfast and lunch are included.   And last but not least…
  5. It will help you market your firm and your services better.

This year’s conference will focus on web marketing, with an impressive lineup of speakers addressing lawyer advertising online.  Avvo Founder and CEO Mark Britton will be the keynote speaker, and will address ‘Ten Opportunities Lawyers Miss in Online Marketing’.

If you’re a solo or small firm lawyer who needs help with your marketing, you really should attend.

I get nothing out of telling you this.  I just love this conference.  I’ve gone the past 2 years, and walked away both times with great information, new contacts, and a sense that I can tackle this marketing thing.  I wouldn’t miss it this year and I don’t want you to miss out on a great learning opportunity.

You can find all of the details here.

The True Nature of Patents

Patents are limited, legal monopolies.

By their very nature, they are exclusionary.  They keep people, companies, and competitors out.

If you have a patent you have the right to exclude others from the space that the patent covers.  In essence, as a patent owner, you have the right to stop competition for a short period of time.

Think about that.

Patents are very powerful.

What Are You Thankful For?

Hi Everyone.

Can you believe it’s that time of year again?

The weather up here in New England is turning cold, the leaves have already fallen, and the Holiday catalogues are in the mailbox.

It’s the time of year when we small business owners and solo entrepreneurs look at our to do lists and ask “How can I possibly get all of this done before the end of the year?”  Sadly, the answer that typically comes back is “You’re not.”   I know about this first hand.

It’s been an eventful year for me with lots of changes to the business.  There’s been a new website, new products, and a new attitude.

I reignited my passion for intellectual property in January.  It has taken me longer than I thought to get things into shape. There have been false starts, major edits, and few course corrections along the way.  C’est la vie!  This is the life of the entrepreneur and I’m loving every minute of it.

I’m truly grateful for the business that I am building, and I would just like to say thank you to those who are helping me navigate this journey.

First, to Monica, a very smart, creative woman who became my friend this year.  Thank you for listening to my crazy ideas, encouraging me to move forward, and bringing me down to reality on occasion.  I love our lunch dates!

Second, to Tea, a very saucy gal.  Thank you for helping me use my words.  You taught me more than you will ever know about websites, copywriting, and reaching an audience.

Third, to my Lincoln Mastermind Group.  I learn so much from each and every one of you.  Your passion for your businesses really blows me away.  Thank you for your honesty and compassion.  I know that you understand.

Fourth, to Valerie, a new friend building her own dream.  I look forward to watching your journey through entrepreneurship.

Last on the list but first in my heart, to Bob and Amanda.  Bob, you make this entire journey worth it.  I am so grateful to be sharing this life with you.  Amanda Rose, I truly do this for you!  The only job title I will ever need is “Amanda’s Mom”.

Peace and blessings to you all.  I hope you have a happy Thanksgiving!