[00:00.000 --> 00:00.760]  Patent attorney.
[00:06.160 --> 00:14.740]  This talk is intended to be a sort of practical guide, I suppose.
[00:16.260 --> 00:22.860]  It's not really intended to get into philosophical justifications for patents.
[00:23.100 --> 00:26.080]  But I want to start off just to gauge my audience.
[00:27.300 --> 00:29.840]  I want to know, first of all, are there...
[00:29.840 --> 00:34.940]  How many among you think that the patent system is generally a good idea and works pretty well?
[00:35.160 --> 00:35.520]  Two.
[00:38.340 --> 00:42.960]  Well, the second question is a refinement because the second question is whether...
[00:42.960 --> 00:49.820]  How many among you think that the patent system is a good idea but doesn't work particularly well and could use improvement?
[00:50.420 --> 00:50.680]  Okay.
[00:51.100 --> 00:55.360]  And how many of you think that the patent system is a fundamentally bad idea?
[00:56.960 --> 01:00.560]  Okay, I'm in a better place than I kind of expected to be.
[01:05.400 --> 01:08.540]  Alright, the way this talk is going to go is I have a few goals.
[01:09.440 --> 01:12.700]  I want to teach you all how to read a patent and how to be...
[01:12.700 --> 01:18.940]  Basically, when you have that legal document in your hand, how to extract from it the important information.
[01:19.360 --> 01:25.280]  I want to teach you how to use these patents effectively for your own purposes.
[01:25.920 --> 01:33.380]  And that can mean if you are, you know, an entrepreneur or a startup, how to go about seeking patent protection.
[01:33.580 --> 01:40.940]  And it can also mean how to defend yourself against others who are, you know, trying to keep you down.
[01:41.460 --> 01:46.040]  And finally, that last bullet point, I want to raise the level of discourse on Slashdot.
[01:46.260 --> 01:51.900]  Because god damn, every time I read a patent article on Slashdot, it makes me cry.
[01:55.280 --> 01:59.520]  Okay, so the basic idea of why we have patents is they're valuable.
[02:00.120 --> 02:05.720]  The way our system is set up is you can extract money from a patent.
[02:06.960 --> 02:19.520]  Usually by using it against people, basically in the form of licensing in a more benign sense, and in the form of litigation in a more hostile sense.
[02:19.840 --> 02:28.540]  The idea is that once you have this document, once you have this patent protection, you own the monopoly on that patent, and you are the only one who's allowed to use it.
[02:28.540 --> 02:30.980]  Other people can then pay you for the right to use it.
[02:31.840 --> 02:37.040]  Or you can then go and find people who are infringing and make them stop using it.
[02:38.820 --> 02:53.440]  To get into a little bit more of how you use patents for defense, though, there's kind of an unfortunate habit, which I'm sure you're all very familiar with among patent holders, which is to basically shake down their competitors.
[02:54.980 --> 03:00.900]  It is often the case... there are a few companies who just have obscene numbers of patents.
[03:01.040 --> 03:05.800]  And I say that as a patent attorney who makes my money off of patents.
[03:05.860 --> 03:08.000]  They just have a ridiculous number.
[03:08.220 --> 03:23.240]  And so what they can do, just by virtue of the sheer mass of their patent holdings, they can go up to a competitor without any patents or with fewer patents and say, hey, I don't really care if you actually infringe any of these because we have 10,000
[03:23.240 --> 03:24.320]  this year.
[03:25.640 --> 03:30.560]  So how about we cross... you know, you license this from us for one hojillion dollars.
[03:30.940 --> 03:31.920]  Thank you very much.
[03:32.900 --> 03:36.800]  So the way you can use patents defensively is as a deterrent.
[03:37.380 --> 03:44.480]  If you have a stockpile of patents of your own, you essentially create a mutually asserted destruction scenario.
[03:45.180 --> 03:48.920]  And you can file a countersuit or cross-license or whatever.
[03:51.660 --> 03:58.840]  So, once you have that patent document in hand, it's kind of a complicated thing.
[03:59.240 --> 04:05.880]  And if you don't have actual... like, if you're not a lawyer, it can often be hard to squeeze out of it exactly what is going on.
[04:06.040 --> 04:11.660]  But the idea underlying the whole patent system is that you're making a trade.
[04:11.900 --> 04:18.820]  You're giving... you're putting into this document everything somebody having ordinary skill in the art, whatever that may be.
[04:19.100 --> 04:25.440]  You're giving that person the ability to use your idea and to implement that invention.
[04:26.320 --> 04:31.940]  So I've got here an example of a patent and it's got a whole bunch of stuff and we're going to get into that.
[04:33.700 --> 04:39.540]  On the left-hand side, you have sort of basic formal legal stuff.
[04:40.460 --> 04:49.600]  This includes the filing date of the patent, the priority date of the patent, and these kind of determine how that patent's lifetime is going to go.
[04:49.840 --> 04:57.820]  If you look at the upper right-hand corner there, you have the date of issue of the patent, which is the date it becomes legally enforceable.
[04:58.480 --> 05:02.180]  And then you have some more general information about that patent.
[05:02.380 --> 05:08.640]  The references that were considered in judging whether it was valid and just a quick abstract of what's going on inside.
[05:09.740 --> 05:16.840]  A patent lifetime is not an immediately clear-cut thing just because they keep changing it.
[05:17.720 --> 05:24.380]  In 1995, anything filed before then, you have a lifetime of 17 years from the date of issue.
[05:24.380 --> 05:26.820]  So from the date on the top right-hand corner.
[05:29.500 --> 05:34.500]  After 1995, it's a 20-year period from the date of filing.
[05:34.740 --> 05:37.260]  And there's a very good reason for why they changed that.
[05:37.620 --> 05:55.920]  For a while, there were what were called submarine patents, where somebody would file a patent and just keep it in prosecution, keep it in the patent office for decades, and just keep it going and going and going until somebody finally started to use that technology.
[05:56.580 --> 06:02.180]  And then they would pop up and say, oh yeah, we'll take that patent now and go sue that guy.
[06:03.260 --> 06:04.760]  So they fixed that problem.
[06:04.860 --> 06:08.200]  And they do keep trying to fix the problems in the system.
[06:08.320 --> 06:09.820]  It's not a complete vacuum.
[06:11.420 --> 06:23.740]  And in fact, just last year, Congress passed, and it got signed into law, a new set of patent reforms which arguably address some of the issues.
[06:29.100 --> 06:34.180]  So the way a patent is broken down is you have these three basic components.
[06:34.440 --> 06:39.320]  You have the written specification, the drawings, and at the end, the set of claims.
[06:39.320 --> 06:44.460]  And I'm going to go into a little bit of depth for what each of these is and how you can go about breaking them down.
[06:45.720 --> 06:53.840]  The specification and the drawings have the purpose of actually communicating the information of how to implement this invention.
[06:54.280 --> 06:58.280]  So that's the part that satisfies the inventor's end of the bargain.
[06:58.560 --> 07:10.700]  They put together this specification and drawings, hopefully in a clear and understandable way, so that some... so that you guys can sit down and 20 years after the filing actually use it.
[07:12.700 --> 07:18.140]  So I have over here... for the last time I gave a talk like this, it had a golf ball, but I chose a more appropriate example.
[07:18.400 --> 07:22.040]  This is one of the first mouses from Apple.
[07:23.040 --> 07:26.220]  That's the patent drawing that they used to describe it.
[07:26.480 --> 07:29.080]  And then below it I have a bit of the text.
[07:30.080 --> 07:35.840]  And the way this works is everything in the patent is described with reference to the drawings.
[07:36.380 --> 07:46.620]  You know, there may be some sort of narrative, descriptive text, but the meat of it is really going to come down to this drawing and what those individual reference numbers indicate.
[07:49.660 --> 07:57.740]  The important thing to remember when you're reading the specification is that it does not... and I... oh good, I did underline that.
[07:58.000 --> 08:02.260]  Does not define what this patent covers.
[08:02.500 --> 08:07.440]  And this gets back to why I want to raise the level of discourse about this stuff.
[08:07.540 --> 08:20.200]  Because what happens a lot of the time when I read discussions about patents is somebody picks up a patent that is, you know, a minor improvement on some particular GUI in some system.
[08:20.460 --> 08:28.380]  But in order to explain that, first they explain what a GUI is and they explain what a window is and, you know, how a mouse works.
[08:28.680 --> 08:33.780]  And so they, you know, somebody who picks this up says, they're patenting GUIs.
[08:33.900 --> 08:34.570]  Those jerks.
[08:34.660 --> 08:37.550]  We've been doing GUIs for millions of years.
[08:37.550 --> 08:43.430]  Um, just because it's in the specification doesn't mean you're actually bound by it.
[08:44.140 --> 08:47.290]  The legal scope of the patent comes from the claims.
[08:47.830 --> 08:49.450]  Why do you still not specification?
[08:49.850 --> 08:53.090]  Is there any risk of limiting your patent in the specification?
[08:53.550 --> 09:00.110]  The question is, is there a risk of, if you are an inventor, of limiting your patent when you write your specification?
[09:00.310 --> 09:01.190]  The answer is yes.
[09:01.190 --> 09:15.330]  If you state in your specification, we can't do X, and then somebody comes out and does X, or we do not use this particular material in our structure, and somebody does, you've basically disclaimed that.
[09:15.570 --> 09:24.950]  The idea of this document is not only so that you can implement it, but also so that you know the explicit scope.
[09:26.990 --> 09:32.490]  So, when reading this document, you take it as a whole to sort of find the boundaries.
[09:32.590 --> 09:36.210]  But in order to find what it covers, you look at the claims.
[09:36.640 --> 09:42.210]  And if you look on the right-hand side there, that is part of the claim of that mouse.
[09:42.670 --> 09:45.290]  It goes on quite a bit more.
[09:45.930 --> 09:54.210]  Just to give you an idea that not all patents are these ridiculously broad, we did a thing with a thing kind of approaches.
[09:55.190 --> 10:00.990]  And I get the impression that a lot of people kind of think of patents that way, or at least in their most degenerate form, that's what they are.
[10:02.310 --> 10:09.310]  In order to infringe this claim, you need to make sure, or you need to have something that covers every single point there.
[10:09.310 --> 10:25.400]  Not just the explicit...excuse me...not just the explicit statement of, we have a wheel, it has a ball, the ball moves on the wheel, it turns a thing, but also the interrelations between those parts.
[10:25.550 --> 10:34.210]  So, if you have...if this were to explicitly say we have a ball in an enclosure, and your ball is on the outside of the enclosure, that doesn't infringe the patent.
[10:35.330 --> 10:37.110]  And this breaks it down a little bit more.
[10:37.110 --> 10:43.950]  The patent is broken down into the preamble, which generally doesn't have too much weight.
[10:44.230 --> 10:46.790]  It's just saying what kind of thing we're talking about.
[10:46.900 --> 10:51.900]  In this case, a device for providing signals, dot, dot, dot.
[10:52.520 --> 10:55.380]  And then you get into various claim structure.
[10:55.440 --> 11:00.640]  In this case, the housing, a unitary frame, and so on.
[11:00.640 --> 11:10.330]  And then going even further in, limiting language that establishes what these things do, how they relate to each other, and how the whole thing works.
[11:13.080 --> 11:15.490]  You have, in addition, dependent claims.
[11:15.680 --> 11:18.820]  So, you can imagine claim number one is an independent claim.
[11:18.970 --> 11:20.200]  It stands on its own.
[11:20.960 --> 11:23.140]  The dependent claims you can think of as backups.
[11:23.900 --> 11:28.590]  Every dependent claim is a further elaboration on what came before it.
[11:28.970 --> 11:31.110]  So, claim two depends off of claim one.
[11:31.420 --> 11:32.920]  Claim three off of claim two.
[11:33.080 --> 11:34.280]  Claim four off of claim three.
[11:35.180 --> 11:35.640]  And...
[11:36.330 --> 11:41.040]  So, this is going to come into play later when we talk about how to invalidate a patent.
[11:41.750 --> 11:49.230]  Because every time you knock out a patent, like a claim, you haven't necessarily taken care of the dependent claims.
[11:50.470 --> 11:54.080]  You have, like I said, you have to make sure every one of those elements is hit.
[11:54.210 --> 12:01.850]  So, if you find a piece of prior art, just to foreshadow a little bit, that covers all of claim one, but doesn't cover claim two, claim two is still alive.
[12:04.140 --> 12:09.160]  So, the dependent claims tend to be for more specific inventions than the...
[12:09.160 --> 12:09.560]  Yes.
[12:10.040 --> 12:17.540]  Each feature, each word in this claim limits the legal scope of that claim.
[12:18.080 --> 12:23.830]  So, you know, just in sort of a quick glance, the longer a claim, the more specific the invention is.
[12:23.970 --> 12:26.760]  And every dependent claim tacks more language onto that.
[12:27.400 --> 12:35.900]  At what point in a tree of dependent claims does the matter need to be specific enough to be patentable?
[12:35.900 --> 12:46.350]  And as a hypothetical extreme, I claim to patent an object, full stop, dependent claim number one, the object of whatever, where, specific, specific, specific.
[12:46.560 --> 12:52.660]  The question is, at what point do the claims need to be specific enough that they are actually patentable?
[12:52.760 --> 12:55.280]  With the example of being claim one, an object.
[12:55.490 --> 12:57.680]  Claim two, an object that does a thing.
[12:57.680 --> 13:05.880]  Claim three, the object, wherein the thing is indicating with signals the position of a cursor.
[13:06.400 --> 13:12.840]  And, you know, the answer is, if it gets to a patent, every single one of those claims needs to be patentable.
[13:14.580 --> 13:23.900]  During prosecution, and again, this is foreshadowing a bit, during prosecution, when you are getting a patent, it's a dialogue with the patent office.
[13:24.160 --> 13:28.180]  And they're going to reject your claims, and you're going to try and convince them why they're wrong.
[13:28.180 --> 13:32.180]  So, this process is called patent prosecution.
[13:32.980 --> 13:34.440]  Oh, hey, I just said that.
[13:35.500 --> 13:42.580]  Prosecution consists of convincing federal employees that they are incorrect, which, I will say, is often difficult.
[13:42.580 --> 13:43.780]  And that's why they pay me.
[13:45.480 --> 13:49.380]  And if they're not wrong, you then change the claims to make them wrong.
[13:50.620 --> 13:51.980]  And so that's what I do.
[13:52.380 --> 13:53.580]  That is my profession.
[13:53.580 --> 14:05.140]  I argue with patent examiners, and hope to eventually get something useful for the client out of that, in addition to the personal satisfaction that I derive from it.
[14:06.320 --> 14:08.600]  So this process has a couple steps.
[14:09.300 --> 14:16.020]  You start off by creating the patent application, and you continue with that process of prosecution.
[14:16.660 --> 14:33.220]  When you're creating an application, and generally this is also part of my job, we take a disclosure from the inventor, which hopefully is well developed, and if not, I'm often called on to flesh it out and make it more of a understandable thing.
[14:33.980 --> 14:41.800]  Put it into the form that you guys saw with the drawings, the specification, and the claims, and launch it off to Alexandria, Virginia.
[14:42.940 --> 14:49.160]  Once that happens, a period of time passes, and I get usually a rejection.
[14:49.160 --> 14:58.000]  Because the patent office, and this is probably contrary to your expectations, the patent office is actually pretty much biased toward rejection.
[14:59.180 --> 15:03.200]  It's very rare that in the first case you get allowed claims back.
[15:04.120 --> 15:09.940]  Because, and I don't know what the fundamental reason is, I assume it's because they're lazy.
[15:11.760 --> 15:19.220]  We have rejections, that comes to me, I argue or I make an amendment to change the claims, I send it back.
[15:19.420 --> 15:25.860]  This goes back and forth until we either reach a resolution, or we hit a roadblock.
[15:26.140 --> 15:40.640]  And at that point I have the option of appealing, and going to an internal board of examiners who will review it, taking it out of the patent examiners' hands, and then if I disagree with them, I can take it up to the federal courts.
[15:44.190 --> 15:47.210]  What is the value of filing a provisional patent?
[15:48.230 --> 15:50.930]  The question is, what is the value of filing a provisional patent?
[15:51.070 --> 15:52.750]  It's something I kind of skimmed over.
[15:53.450 --> 15:54.510]  Provisional patents...
[15:54.970 --> 15:56.770]  Actually, can you save that to the end?
[15:56.970 --> 15:58.950]  It's kind of... I'd like to move on.
[15:59.490 --> 16:03.410]  So this process is not a quick one, and it's certainly not a cheap one.
[16:04.390 --> 16:09.890]  You can expect it to last at least two years if it's in a crowded technology art.
[16:10.090 --> 16:19.510]  So if you were dealing with something like image or video compression or something like that, it could go for quite a bit longer because they have a very large backlog of applications.
[16:21.710 --> 16:25.970]  So the way this goes, at t equals zero, you file your application.
[16:25.970 --> 16:29.710]  Roughly 18 months later, that application becomes published.
[16:29.970 --> 16:31.570]  And this is something that's worth keeping in mind.
[16:31.770 --> 16:36.210]  This entire process, after that 18 month mark, is public.
[16:36.590 --> 16:50.490]  And so if you are following a patent application that you have particular interest in, you can not only see the published application, but you can actually follow the arguments made by both the examiner and the patent attorney.
[16:50.490 --> 16:54.650]  And you can download those and do whatever you want with them, I guess.
[16:55.590 --> 17:02.630]  But the point is that at the end of the day, you can sit down and figure out exactly what transpired.
[17:03.010 --> 17:14.270]  And if somebody made a mistake, that becomes very relevant in a litigation scenario, or if you're trying to invalidate that patent for whatever righteous purposes you may have.
[17:14.270 --> 17:15.210]  Yeah?
[17:15.450 --> 17:17.590]  At t zero, it's patent pending?
[17:17.950 --> 17:18.250]  Yes.
[17:18.790 --> 17:27.090]  At the moment you file that patent, you get to slap patent pending on your invention or just declare it to the world.
[17:27.690 --> 17:30.770]  And that ends the moment you abandon your application.
[17:33.250 --> 17:33.540]  Right.
[17:34.070 --> 17:36.730]  So each... as I described it before...
[17:36.730 --> 17:37.870]  Yeah, just a quick one, please.
[17:38.130 --> 17:39.750]  The question about the published application.
[17:46.860 --> 17:52.140]  Well, the question is how many patents are published per day and how... what's the volume in terms of pages?
[17:52.520 --> 17:57.180]  If you're running a startup and you're interested in a certain area, you don't have a lot of...
[17:57.180 --> 17:57.660]  Oh, I see.
[17:57.720 --> 18:05.480]  With the purpose of asking how hard is it to keep track in a particular area of what is happening out there.
[18:06.140 --> 18:08.380]  The answer is probably very hard.
[18:08.900 --> 18:12.580]  Well, there are a lot of patents that... patent applications that get filed.
[18:12.720 --> 18:13.860]  Just an extraordinary number.
[18:14.540 --> 18:20.540]  We just passed the eight millionth patent... issued patent pretty recently.
[18:22.280 --> 18:23.620]  I couldn't tell you.
[18:23.720 --> 18:26.360]  I mean, it... and it... as it applies to your particular...
[18:26.360 --> 18:27.020]  It's massive.
[18:27.300 --> 18:27.500]  Yeah.
[18:27.700 --> 18:29.780]  Well, as a whole, it's definitely massive.
[18:29.820 --> 18:33.940]  As it applies to your particular technology interest, it might be much more limited.
[18:34.500 --> 18:35.220]  I don't know.
[18:35.720 --> 18:39.140]  And I'm going to forge ahead here just to get this slide out of the way.
[18:39.840 --> 18:45.280]  The median... and I looked this up because Patently Obvious, the blog, has awesome statistics.
[18:45.560 --> 18:49.260]  The median patent application pendency is three to four years.
[18:50.100 --> 18:52.340]  So, that is about what you can expect.
[18:52.600 --> 18:54.780]  Most of them apparently are done by nine years.
[18:57.340 --> 19:01.900]  I mean, there are still some submarine patents that are pending from back before 1995.
[19:01.900 --> 19:06.300]  And those could go on forever because they got it in before the bar.
[19:08.200 --> 19:11.060]  So, going to the question of how broad a patent should be.
[19:11.940 --> 19:19.100]  As... as a patent lawyer, people basically assume that my job is to get the patent on the thing that does the thing.
[19:19.520 --> 19:21.720]  And that's really not a valuable patent.
[19:21.980 --> 19:23.980]  Because on the face of it, it's invalid.
[19:24.260 --> 19:24.420]  Right?
[19:24.420 --> 19:25.340]  Anybody can look at that.
[19:25.500 --> 19:33.760]  And even if I were to manage to trick the patent examiner into allowing this patent, the only thing I would get out of that is a certain amount of pride.
[19:34.720 --> 19:36.360]  That would not be a useful patent.
[19:36.480 --> 19:37.680]  It would not be a valuable patent.
[19:37.680 --> 19:40.300]  Because anybody could come in and knock it out.
[19:41.120 --> 19:41.580]  Trivially.
[19:42.580 --> 19:45.980]  And so, having extremely broad patents really isn't the goal.
[19:46.500 --> 19:55.180]  Any reasonable patent attorney who's actually interested in protecting the interest of his clients is going to say, Look, this is too broad.
[19:55.400 --> 19:57.060]  It's going to get knocked out later.
[19:57.280 --> 19:59.680]  I don't have a piece of art that's going to show it.
[20:00.200 --> 20:01.480]  But trust me on this.
[20:01.580 --> 20:03.100]  You want to make it a reasonable scope.
[20:03.320 --> 20:06.620]  And so, the vast majority of patents fall into that category.
[20:06.760 --> 20:07.240]  They're reasonable.
[20:07.420 --> 20:12.000]  They cover what the inventor actually was talking about.
[20:12.760 --> 20:17.820]  And they, you know, this isn't a, this is a system that fails sometimes.
[20:18.400 --> 20:19.780]  But it's not endemic.
[20:20.420 --> 20:21.960]  It's not an endemic issue.
[20:23.100 --> 20:24.280]  From my point of view.
[20:27.440 --> 20:27.880]  Okay.
[20:28.400 --> 20:34.220]  So, this is going to continue on in the topic of how to get it and what you can expect if you are filing a patent.
[20:34.640 --> 20:40.240]  Each rejection, each office action they're called, is going to consist most likely of a set of rejections.
[20:40.240 --> 20:46.300]  And they're going to say claims one through four are rejected on the grounds of obviousness.
[20:46.620 --> 20:51.120]  Claims five through ten are rejected because you can't spell anything.
[20:51.420 --> 20:52.960]  And they're going to break it down like that.
[20:53.100 --> 20:55.260]  So, these are, these are formal rejections.
[20:55.900 --> 20:57.620]  And I'm just going to throw these numbers out.
[20:57.680 --> 21:00.620]  I don't really expect you to mean any, them to mean anything to you.
[21:00.880 --> 21:04.320]  They're just there for the sake of, of disambiguation.
[21:04.320 --> 21:10.420]  Section 112 is directed to the clarity and usefulness of the specification.
[21:10.800 --> 21:16.720]  There are certain formal requirements that go into how you put together a specification, how you write your claims.
[21:16.920 --> 21:24.260]  And if you get a rejection along that line, it might mean that the patent attorney that you hired is an idiot.
[21:24.260 --> 21:27.380]  It might mean that the patent examiner is an idiot.
[21:28.200 --> 21:30.000]  And didn't understand what you were saying.
[21:31.080 --> 21:31.480]  Or both!
[21:31.740 --> 21:32.500]  Or both!
[21:32.960 --> 21:33.480]  Hey!
[21:33.920 --> 21:35.740]  There's more than enough blame to go around.
[21:36.940 --> 21:41.840]  Under 101, actually 101 is really the, the part that I expect most of you to be interested in.
[21:41.920 --> 21:49.020]  This is whether the subject matter of the invention is provided for, by statute.
[21:49.020 --> 21:56.700]  And so the, you know, general set of things is a method or an apparatus or a chemical composition.
[21:56.980 --> 22:03.900]  There are other types of patents that extend into, you know, ornamental designs and plants and things.
[22:04.540 --> 22:10.000]  But what really is going to come down to the, the contention here is software patents, I imagine.
[22:11.460 --> 22:13.840]  Which come down to the Bilski decision.
[22:16.160 --> 22:23.240]  Unfortunately, the, the bad news I have to give you is that the Bilski decision did not make patent, software patents invalid.
[22:24.100 --> 22:34.060]  It basically just set up a formalistic requirement of how to deal with, with software patents.
[22:34.060 --> 22:47.300]  Um, the, the Bilski decisions came down and said, uh, we like this whole must include a transformation or a piece of hardware idea that the Federal Circuit came up with.
[22:47.580 --> 22:50.240]  But it really doesn't fit with anything we've done before.
[22:50.520 --> 22:54.660]  Uh, and that's really how the dialogue between the Federal Circuit and the Supreme Court usually goes.
[22:54.980 --> 23:01.240]  Is the Federal Circuit tries to come up with a clever solution and the Supreme Court tells them no in very strong language.
[23:01.240 --> 23:05.460]  Um, this was actually, the Bilski decision was actually much more pleasant than they usually are.
[23:05.940 --> 23:13.960]  Um, but what they came down and said is, our jurisprudence says that abstract ideas are not patentable.
[23:14.080 --> 23:15.560]  So just kind of stick to that.
[23:15.800 --> 23:23.360]  They didn't provide any real, um, explanation for what an abstract idea is and is not.
[23:23.820 --> 23:30.640]  And so the way this is still getting interpreted at the patent office is that you need to tie in some piece of hardware.
[23:30.640 --> 23:39.740]  Or you need to have a really good argument, which I've never seen, for, for why a, a piece of pure software is not an abstract idea.
[23:40.320 --> 23:47.000]  But what we do is we say, we find the most important step and we say, oh yeah, that was done by a processor.
[23:47.480 --> 23:51.600]  And the patent examiner accepts that and we get an allowed patent.
[23:53.740 --> 23:54.180]  Yes.
[23:54.400 --> 23:59.580]  So the processor is left big, you don't specify it's this sort of processor, you just, you just say a processor.
[23:59.920 --> 24:03.580]  The question is how, how specific, how specific is that processor?
[24:03.780 --> 24:05.460]  And it is literally just a processor.
[24:05.820 --> 24:10.320]  I've had some patent examiners come back and say, well that could be a word processor.
[24:10.800 --> 24:13.020]  Which I responded with, no it couldn't.
[24:13.160 --> 24:14.480]  And that was the end of that.
[24:14.960 --> 24:15.400]  Yeah.
[24:17.860 --> 24:19.340]  What about a virtual machine?
[24:19.900 --> 24:20.960]  I'm not sure what you mean.
[24:21.580 --> 24:25.480]  Where the hardware is completely abstracted, so like if you were...
[24:25.480 --> 24:28.060]  It's still going to be running on a processor presumably.
[24:28.640 --> 24:29.080]  Correct?
[24:30.420 --> 24:36.180]  I mean unless you have a virtual machine in your head, I think ultimately every virtual machine is going to come down to a piece of hardware.
[24:36.180 --> 24:38.500]  Okay, so that abstract link isn't up.
[24:39.100 --> 24:43.940]  It's, it's, you know, it's just that at some point this step is being performed by a processor.
[24:44.180 --> 24:51.360]  Even if the processor is a pretend processor in the imagination of another processor, at some point there's a processor that's doing the processing.
[24:52.480 --> 24:52.960]  Yes.
[24:53.560 --> 24:56.480]  Is it all software running on a Turing machine?
[24:58.670 --> 24:59.650]  You're getting it, yeah.
[24:59.890 --> 25:04.490]  The question is whether all software is actually running on a processor and the answer is yes.
[25:04.490 --> 25:13.710]  And that's why Bilski doesn't actually, as long as we are allowed to do this, Bilski doesn't actually prevent us from claiming software patents.
[25:15.890 --> 25:16.730]  Excuse me?
[25:16.750 --> 25:17.670]  When was this decision?
[25:17.950 --> 25:20.390]  Bilski was last year.
[25:21.350 --> 25:25.490]  There have been a couple more decisions since then, including...
[25:27.190 --> 25:27.790]  Prometheus.
[25:27.790 --> 25:28.430]  Prometheus, thank you.
[25:28.430 --> 25:36.930]  Prometheus photography, which is a, uh, more of a biological patent but does get to the topic of, um, abstract ideas and lays it out a little bit better.
[25:37.230 --> 25:41.450]  Um, but all that's really done has made the Federal circuit scratch its head really hard.
[25:41.630 --> 25:43.350]  I, I, I came prepared.
[25:43.370 --> 25:50.970]  And I actually have a quote from the most recent decision on this topic, uh, from the 9th of July in CLS v Alice Corp.
[25:50.970 --> 26:09.030]  This court holds that when, after taking all of the claim recitations into consideration, it is not manifestly evident that a claim is directed to a patent-ineligible abstract idea, that patent must not be deemed for that reason to be inadequate under 101,
[26:09.030 --> 26:26.630]  unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to specific applications, it is inappropriate to hold that the claim is directed to a patent-ineligible abstract idea.
[26:27.410 --> 26:32.590]  So the patent... and there's conflicting case law right now from the federal circuit.
[26:33.230 --> 26:35.630]  That decision had a very strong dissent.
[26:35.850 --> 26:42.770]  And so the end result is, we're just going to keep doing that until somebody figures out a better way.
[26:43.170 --> 26:44.130]  Hand in the back, yeah.
[26:51.500 --> 26:57.080]  The question is, whether there is a limitation to that, or can you attach on computers to any sentence?
[26:57.300 --> 27:01.780]  The answer is that you can't actually say, this is done on a computer and have it work.
[27:01.960 --> 27:05.100]  You have to say something like, this is done by a processor.
[27:08.300 --> 27:08.740]  Yes.
[27:13.780 --> 27:16.020]  The question is, what about business methods?
[27:16.240 --> 27:24.060]  The answer is, as long as they're not an abstract idea, they're okay.
[27:24.440 --> 27:24.960]  They're okay.
[27:24.960 --> 27:33.040]  And I just read the current standard as of July 9th for how the federal circuit is determining what an abstract idea is.
[27:33.220 --> 27:39.720]  Which is that, unless it's pretty clearly stated, this is an abstract idea, we're going to let it go.
[27:41.160 --> 27:42.800]  Were there any other questions about that?
[27:43.000 --> 27:43.380]  All right.
[27:43.540 --> 27:43.720]  Great.
[27:45.620 --> 27:47.660]  And I have lost focus.
[27:48.260 --> 27:49.040]  Here we go.
[27:49.780 --> 27:52.040]  Okay, so this gets back to what I was saying earlier about...
[27:57.600 --> 27:59.960]  I think you're accidentally back a ways.
[28:01.520 --> 28:02.520]  Oh, did I already talk?
[28:02.660 --> 28:03.340]  Hey, wow.
[28:03.640 --> 28:04.540]  I did go back a ways.
[28:05.060 --> 28:05.360]  Okay.
[28:06.320 --> 28:06.820]  Thank you.
[28:08.220 --> 28:12.440]  So, in addition to those formal rejections, and I do consider Bilski to be a formal...
[28:12.440 --> 28:20.000]  Bilski issues to be a formal issue because the only real solution to it is changing the language to include a processor.
[28:21.320 --> 28:23.300]  There are substantive rejections.
[28:23.500 --> 28:25.120]  And these really get into the...
[28:26.520 --> 28:30.560]  the stuff that you think about a lot in terms of, this has been done before.
[28:30.860 --> 28:34.540]  Or if it hasn't been done before, it would have been obvious to do it before.
[28:34.820 --> 28:37.360]  Those are sections 102 and 103 respectively.
[28:39.620 --> 28:43.480]  The way this works is the patent examiner comes in with specific references.
[28:43.940 --> 28:45.540]  They've gone out and they've done a search.
[28:46.040 --> 28:52.100]  They've, generally speaking, only looked at actual patents and patent applications to determine what has been done before.
[28:53.340 --> 28:57.080]  Sometimes, if it's a particularly ambitious examiner, they'll use Google.
[28:59.880 --> 29:07.480]  And they just kind of... they find a way to apply something like this to all of your claims and give you that first rejection.
[29:07.780 --> 29:14.820]  And then again, it's the patent attorney's job to either overcome that by argument, by saying, look, this really doesn't teach what you think it teaches.
[29:16.020 --> 29:18.340]  Or, you didn't understand what I said.
[29:18.600 --> 29:23.320]  Or, changing everything so that the examiner has to go back and start over.
[29:24.040 --> 29:24.440]  Yes?
[29:24.720 --> 29:26.480]  So, on something of obviousness...
[29:26.480 --> 29:29.100]  I'm actually going to get into obviousness in a little bit more detail.
[29:29.260 --> 29:36.480]  So, hopefully, that will answer your questions when I talk about how to beat a patent.
[29:38.360 --> 29:40.160]  So, all of this process costs money.
[29:40.460 --> 29:42.120]  It's not cheap to get a patent.
[29:43.840 --> 29:47.680]  You can read up there, filing an application costs $12.50.
[29:48.940 --> 29:53.120]  Getting that patent issued after it's been allowed.
[29:53.300 --> 29:56.560]  That is to say, after you've convinced the examiner costs you another $2,000.
[29:57.800 --> 30:01.480]  There is a 50% discount if you are a small entity, however.
[30:01.800 --> 30:03.580]  So, if you're a startup...
[30:03.580 --> 30:09.400]  Basically, if you belong to an entity that is less than 500 people, you get that 50% discount.
[30:09.400 --> 30:15.460]  And, someday, they're going to institute what's called a micro-entity discount, which is a 75% discount.
[30:15.720 --> 30:16.960]  They just haven't done it yet.
[30:17.660 --> 30:19.560]  And, you can get the full fee schedule there.
[30:19.780 --> 30:21.020]  There are a lot of fees.
[30:23.620 --> 30:25.040]  So, now we're going to get into...
[30:25.040 --> 30:33.780]  Now that you've got this patent, and now that many other people have their patents, how can you knock those patents out of the water so that they are not a threat to you and those you love?
[30:36.420 --> 30:41.040]  As we all know, patents are a big deal when they're used against you.
[30:41.840 --> 30:47.200]  If you are in a startup or some kind of small endeavor, a patent lawsuit can sink you.
[30:47.740 --> 30:52.260]  Even if you win the attorney's fees for...
[30:52.260 --> 30:53.800]  Actually, I want to jump right back here.
[30:54.260 --> 31:00.420]  Attorney's fees are also a very relevant consideration and are several times the bare filing fees at best.
[31:00.420 --> 31:07.100]  If you get a fancy Manhattan firm, you're looking at over $10,000 just to prepare that application.
[31:10.340 --> 31:13.980]  Attorney's fees for a patent litigation, the standard quote is a million dollars.
[31:16.140 --> 31:19.400]  If it goes all the way to trial, that is how much you will be out of pocket.
[31:20.860 --> 31:21.780]  On either side?
[31:22.180 --> 31:23.480]  Yes, on either side.
[31:23.640 --> 31:33.800]  Because either side is going to have to do discovery, is going to have to get their own respective experts, and is going to have to pay their attorneys hazard pay to go to trial.
[31:34.960 --> 31:36.420]  Yeah, it's basically what it comes down to.
[31:36.500 --> 31:38.140]  They get a premium for going to trial.
[31:41.460 --> 31:43.720]  So, let's say you're stuck in this situation.
[31:43.920 --> 31:47.740]  Obviously, the best way not to get stuck in this situation is not to infringe.
[31:47.960 --> 31:53.320]  But as we all know, that's not always an option, or not always something that you realize is about to happen.
[31:53.740 --> 32:02.480]  So, you are now in a litigation scenario, or you believe you may be about to be in a litigation scenario, and you have to figure out how to get out of this.
[32:03.600 --> 32:10.220]  The best tactic is to show both that you don't infringe, and that the other guy never should have had that patent in the first place.
[32:11.520 --> 32:14.940]  Beating a patent is basically the reverse of getting a patent.
[32:15.160 --> 32:19.360]  Instead of sitting in the position of the inventor, now you're sitting in the position of the examiner.
[32:19.500 --> 32:28.940]  And you're going to take that document and try and find a way, using one of those rejections I stated earlier, why this patent should be invalid.
[32:30.280 --> 32:36.760]  Unfortunately, for the person in that position, and I'm not a litigator, so I don't particularly care.
[32:37.520 --> 32:46.320]  Unfortunately, the standard of evidence for proving that is clear and convincing, which in legal speak means really hard.
[32:47.060 --> 32:54.480]  You have to show well beyond like a 50% chance that the examiner was wrong.
[32:54.480 --> 32:58.680]  That means you have to find all new art that was not considered generally.
[32:58.820 --> 33:03.640]  You have to have really airtight arguments, and it's just generally an unpleasant experience.
[33:04.500 --> 33:11.780]  Which in part makes patent litigation, once you have patents, a very attractive proposal.
[33:11.800 --> 33:17.080]  And it's what makes shaking people down very possible, because it's hard to invalidate patents.
[33:17.320 --> 33:23.340]  And so even if you have kind of a weak argument, if you have a patent, you're in a good position.
[33:26.950 --> 33:30.670]  So how this works is this all happens in federal court.
[33:31.150 --> 33:34.210]  They can sue you in federal district court for infringement.
[33:34.710 --> 33:37.050]  I just talked about the presumption of validity.
[33:38.570 --> 33:41.250]  And I covered this entire slide already.
[33:41.870 --> 33:47.510]  You can use basically any trick in your bag to try and knock it out, as long as you are really, really good at it.
[33:47.690 --> 33:47.830]  Yes?
[33:51.250 --> 33:52.290]  Other stuff.
[33:54.570 --> 33:58.710]  I mean, to answer your question, frankly, I don't know, because it never comes up.
[33:59.450 --> 34:07.070]  There are things in there relating to, you know, jurisdictional issues, how to sue, stuff like that.
[34:07.170 --> 34:11.850]  But these are the sections that come up on a day-to-day basis, in terms of the validity of a patent.
[34:13.170 --> 34:22.110]  So getting into the nitty-gritty of how to knock a patent out, we'll start with 102, which is basically somebody did this before.
[34:22.590 --> 34:26.530]  Every element in your claim has been shown in the prior art.
[34:26.530 --> 34:31.410]  And that word prior art is a very particular word.
[34:32.550 --> 34:35.510]  Not everything that happened before you was prior art.
[34:35.710 --> 34:39.210]  Not everything that other people have done that was similar is prior art.
[34:39.710 --> 34:41.330]  But what comes to...
[34:41.330 --> 34:54.070]  What generally defines a prior art reference is some document or an invention or something that was done or published by somebody in specific places.
[34:54.070 --> 34:58.410]  So it can be the invention was known or used by others in the U.S.
[34:58.670 --> 35:00.050]  or published anywhere.
[35:00.370 --> 35:08.130]  So if somebody made your invention in Swaziland and didn't publish it, that's okay for a U.S.
[35:08.190 --> 35:08.430]  patent.
[35:08.990 --> 35:11.930]  But if it was published anywhere, then you're in trouble.
[35:12.050 --> 35:14.830]  And publication, I'm actually going to define a little bit better.
[35:16.690 --> 35:18.990]  Publication is a very broad term.
[35:18.990 --> 35:29.710]  A thing is public... considered published if it's just like somebody's thesis that was printed out and put into their university's library somewhere at some point.
[35:30.270 --> 35:32.670]  Which raises the question of how anybody ever finds it.
[35:32.870 --> 35:37.070]  But it's still considered... if that happens, it's considered to be prior art.
[35:38.130 --> 35:42.230]  And then you also have this possibility of what's called secret prior art.
[35:42.230 --> 35:54.810]  Because there's a lag time between patent application and patent publication of 18 months, things that were filed before you filed but published after you filed are still held against you.
[35:57.730 --> 36:00.170]  So I already talked about what a publication is.
[36:00.530 --> 36:09.730]  If you yourself published something, you have a one-year grace period in which your own publications aren't held against you.
[36:10.390 --> 36:15.530]  After which, it doesn't matter whether you wrote it, whether your mother wrote it.
[36:17.770 --> 36:19.550]  It's considered to be prior art.
[36:19.690 --> 36:22.050]  And then that gets into what secret prior art is a little bit better.
[36:22.890 --> 36:25.970]  So anticipation is a very easy thing to deal with.
[36:26.330 --> 36:28.450]  It's sort of a one-to-one correspondence.
[36:28.730 --> 36:30.830]  Everything in your claim is in this document.
[36:31.030 --> 36:31.870]  End of story.
[36:32.550 --> 36:34.290]  Obviousness is a much trickier issue.
[36:35.250 --> 36:39.290]  It's not the way you think of the word obvious.
[36:40.390 --> 36:49.710]  Obvious, for us, means every element was in some reference and we can find some connection between those references.
[36:50.150 --> 36:54.650]  Generally speaking, that means that the references were part of a similar field of art.
[36:54.950 --> 37:06.310]  So if they were both, you know, encryption papers that were published and they said, oh yeah, you did half this, these guys covered most of your idea, except for this one fiddly little bit that this guy did over here.
[37:06.470 --> 37:13.410]  And so it would have been obvious to use that fiddly bit with this guy's encryption to make your thing obvious.
[37:16.710 --> 37:30.750]  What counts as analogous art and what counts as reasonably pertinent, such that somebody would have considered it obvious, is really a tough thing to define and goes back to me arguing with the examiner.
[37:33.030 --> 37:41.490]  Generally speaking, the goal here, in terms of knocking down the patent, is to say, clearly these were analogous.
[37:41.610 --> 37:44.830]  Whereas my job is to say, clearly these weren't analogous.
[37:47.630 --> 37:53.870]  So as a result of that, you know, people have a kind of a vague idea of what it means for an invention to be obvious.
[37:55.410 --> 37:59.850]  And this is really where that clear and convincing standard gets thorny.
[38:00.050 --> 38:04.050]  If you have one reference that really shows everything, your job is done.
[38:04.410 --> 38:08.530]  If you have to prove that it was obvious, it becomes much more difficult.
[38:10.810 --> 38:12.450]  That's all I really have to say about that.
[38:12.770 --> 38:16.810]  It's an unpleasant thing to deal with for everybody involved.
[38:17.170 --> 38:19.310]  Now, all of this is about to change.
[38:20.650 --> 38:28.770]  Like I said, last September, Congress issued a reform act which greatly simplifies what goes into being prior art.
[38:29.190 --> 38:30.670]  And that's the quote.
[38:31.050 --> 38:32.350]  That is what prior art is.
[38:32.410 --> 38:41.650]  The claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
[38:42.930 --> 38:56.930]  And there is still a grace period where your own publications don't count against you, and anything after your initial disclosure don't count against you for one year.
[38:58.710 --> 39:03.530]  I have very little intuitive idea for how that's going to play out yet, just because it hasn't.
[39:06.250 --> 39:13.310]  I don't even... Oh yeah, there are sort of extrajudicial ways of challenging a patent.
[39:13.810 --> 39:17.010]  These happen outside of the federal court system.
[39:17.790 --> 39:24.430]  Basically, it means going to the patent office instead of the federal courts and making the same kind of arguments.
[39:24.710 --> 39:30.810]  The advantage is that the standard of proof is lower, so it's easier to deal with.
[39:33.730 --> 39:36.970]  But generally speaking, there are extra rules involved.
[39:37.290 --> 39:41.190]  For example, in the court system, you could make a 112 argument.
[39:41.330 --> 39:42.670]  You could say, these claims aren't clear.
[39:42.970 --> 39:45.190]  Nobody knows what this guy is talking about.
[39:45.470 --> 39:46.850]  Therefore, the patent is invalid.
[39:47.090 --> 39:49.070]  You can't do that at a re-examination.
[39:49.270 --> 39:52.610]  The re-examination is only done by prior art references.
[39:54.870 --> 39:56.990]  And of course, all of this is changing as well.
[39:58.770 --> 40:04.950]  Beginning in September, there's going to be something called inter partes review, which is where...
[40:04.950 --> 40:09.330]  It's basically a little litigation, except it's happening at the patent office.
[40:09.590 --> 40:17.310]  The way it stands right now is re-examination has an ex parte option, which is sort of fire and forget.
[40:17.310 --> 40:20.510]  You put together a bundle, you send it to the patent office, and they deal with it.
[40:20.890 --> 40:24.550]  There is an inter partes option that's getting tweaked in September.
[40:24.870 --> 40:32.230]  But the general idea is that you now get to argue directly for why this should be invalid.
[40:33.370 --> 40:39.170]  And then finally, we have post-grant review, which is entirely new.
[40:40.390 --> 40:46.950]  The idea being, you have a period of nine months after the application is actually issued.
[40:47.350 --> 40:51.050]  Which is really when most people are going to notice.
[40:51.870 --> 40:52.010]  You know?
[40:52.750 --> 40:53.390]  After...
[40:53.390 --> 40:57.730]  When this happens, you have nine months to start the post-grant review process.
[40:58.370 --> 41:03.470]  You can use any grounds of rejection, you know, 112, 101, whatever.
[41:05.390 --> 41:10.830]  And the thing about these extrajudicial reviews is that they are extremely expensive.
[41:11.390 --> 41:17.970]  And when I say that, I mean tens of thousands of dollars just to file the petition for review.
[41:19.490 --> 41:23.650]  And that's how you kill a patent, and that's how you get a patent, and that's how you read a patent.
[41:24.090 --> 41:25.190]  Are there any questions?
[41:26.970 --> 41:28.530]  Yes, you in the orange.
[41:34.770 --> 41:37.910]  There was a patented technology that I was doing.
[41:38.330 --> 41:47.330]  And it seems to me like every single aspect of their patent was covered in a different academic paper than probably 15 years prior to the patent.
[41:48.210 --> 41:55.990]  If my employer decided not to go without this patent, but if they had, would we have had any issues with you?
[41:56.170 --> 41:57.890]  In your opinion, not legal advice?
[41:58.490 --> 42:02.290]  Would there have been issues with going down?
[42:02.490 --> 42:05.230]  Would we have been able to have that
[42:08.330 --> 42:08.590]  power?
[42:08.590 --> 42:17.290]  So the question is from somebody who was asked to review a patent his employer was thinking of infringing.
[42:19.150 --> 42:37.730]  And how he had found several references that he believed knocked it out in his non-legal opinion, that all of these elements were covered in one or more previous references, and his employer chose not to pursue it despite that.
[42:37.730 --> 42:41.850]  And the question then is whether they would have been okay, I guess?
[42:42.090 --> 42:44.930]  Well, we were kind of putting licensing this technology.
[42:45.210 --> 42:45.550]  Okay.
[42:50.030 --> 42:50.510]  But...
[42:50.510 --> 42:51.250]  All right.
[42:51.270 --> 42:53.050]  Well, give me a hypothetical I can answer.
[42:57.020 --> 42:57.420]  Okay.
[42:58.200 --> 43:03.980]  The answer is, to the sort of broad question of whether you would have been okay, is I don't know.
[43:05.360 --> 43:09.720]  Generally speaking, when you're in that position, you don't ask an engineer to figure it out.
[43:09.840 --> 43:11.480]  You ask the lawyer to figure it out.
[43:11.720 --> 43:12.440]  Because then...
[43:12.960 --> 43:14.100]  And it's not a diss.
[43:14.240 --> 43:14.540]  Shut up.
[43:14.880 --> 43:16.980]  Because the lawyer is going to put their...
[43:16.980 --> 43:20.040]  You know, is trained in this, and they deal with this a lot.
[43:20.040 --> 43:26.420]  And they basically put their credibility and liability on the line if you get burnt.
[43:27.580 --> 43:29.120]  Which is why you do that.
[43:30.380 --> 43:33.020]  That said, even if...
[43:33.020 --> 43:37.900]  You know, it's not necessarily a crazy thing that they chose not to infringe it.
[43:38.260 --> 43:39.360]  Assuming it worked.
[43:40.300 --> 43:41.980]  That they chose not to infringe it.
[43:42.040 --> 43:47.500]  Just because the potential costs of having that argument with the other side can be enormous.
[43:48.700 --> 43:49.340]  Yes?
[43:49.340 --> 43:50.800]  How does brand work?
[43:51.160 --> 43:52.100]  Can you say that again?
[43:52.280 --> 43:53.500]  How does brand work?
[43:54.440 --> 43:54.920]  Brand?
[43:55.380 --> 43:55.780]  I think
[44:00.490 --> 44:01.090]  that's...
[44:01.090 --> 44:05.910]  Oh, you mean in a sort of forced licensing situation?
[44:06.330 --> 44:09.090]  Or like in a litigation, sometimes people...
[44:09.090 --> 44:18.010]  Are some patents considered just so necessary to a given industry that the person owning the patent is forced to license them at a feasible rate?
[44:18.270 --> 44:20.770]  I mean, I'm not personally too familiar with that.
[44:20.850 --> 44:21.870]  Like I said, I'm not a litigator.
[44:23.390 --> 44:27.130]  What often happens is people are forced to...
[44:27.130 --> 44:32.850]  And this actually happens a lot in terms of non-practicing entities, which some may know better as trolls.
[44:34.950 --> 44:40.310]  In those situations, an entity can be forced to accept a royalty.
[44:41.370 --> 44:51.810]  Because if you aren't practicing it yourself, and you are trying to prevent other people from practicing it, that's kind of against, I don't know, public policy.
[44:51.810 --> 44:53.890]  So then brand only deals with...
[44:53.890 --> 44:55.870]  I've really never heard that acronym before, Frand.
[44:57.530 --> 44:59.870]  No, I understand, I understand, I've just never heard it.
[45:00.050 --> 45:00.910]  I think it might...
[45:04.060 --> 45:04.260]  Yeah.
[45:04.900 --> 45:05.180]  Okay.
[45:06.380 --> 45:07.760]  Oh, I have heard about a thing...
[45:07.760 --> 45:08.560]  Yeah, okay.
[45:12.230 --> 45:12.810]  All right.
[45:13.070 --> 45:15.790]  I mean, it was huge in the Google case that I was following.
[45:15.970 --> 45:16.730]  They were mentioning...
[45:33.140 --> 45:33.600]  Limits.
[45:33.700 --> 45:36.500]  Was this the Posner case that Posner wrote?
[45:36.760 --> 45:37.780]  Happened very recently?
[45:38.000 --> 45:38.220]  Yeah.
[45:39.340 --> 45:39.600]  Okay.
[45:40.180 --> 45:40.920]  Posner's crazy.
[45:41.160 --> 45:41.420]  I don't know.
[45:43.340 --> 45:43.980]  I'm sorry.
[45:44.120 --> 45:45.340]  I don't have a good answer for you.
[45:46.080 --> 45:46.640]  Yes.
[45:50.460 --> 45:51.700]  Oh, that's right.
[45:51.860 --> 45:52.460]  Somebody asked...
[45:52.460 --> 45:56.160]  This gentleman asked what the purpose of a provisional patent is.
[45:56.320 --> 45:57.820]  It's basically a placeholder.
[45:58.080 --> 45:59.100]  You get about...
[45:59.100 --> 46:06.620]  You get a year from the filing of your provisional patent until you have to file your full application.
[46:06.860 --> 46:13.140]  And you get the benefit of that provisionals filing date in terms of what counts as prior art.
[46:13.140 --> 46:15.120]  And your count...
[46:15.120 --> 46:18.580]  Your clock for the lifetime of the patent starts when you file the full application.
[46:19.380 --> 46:19.940]  Excuse me.
[46:20.140 --> 46:23.200]  The problem with a provisional is they're not particularly useful.
[46:23.300 --> 46:25.240]  And they don't really save you any money.
[46:26.380 --> 46:30.040]  People kind of want to do provisionals so that they can just get something in the door.
[46:30.380 --> 46:32.860]  And then go get funding for it.
[46:33.040 --> 46:38.960]  But in terms of the amount of work that's required to generate a good provisional that'll hold you in good stead down the line.
[46:40.560 --> 46:44.940]  You're going to be paying roughly the same to a patent attorney to do that.
[46:45.580 --> 46:49.340]  So I generally don't personally recommend that people do provisionals.
[46:50.180 --> 46:52.580]  So it doesn't really provide much protection?
[46:52.940 --> 46:59.420]  It's the sort of situation where like if you're worried that people are going to do something with this right away.
[46:59.420 --> 47:02.620]  And you need to get, you know, block off any possible prior art.
[47:02.860 --> 47:05.720]  That, you know, in that sort of a situation you slap together what you've got.
[47:05.820 --> 47:06.680]  You file the provisional.
[47:07.000 --> 47:07.700]  And you hope.
[47:09.140 --> 47:09.500]  Yeah.
[47:09.700 --> 47:10.000]  Yes.
[47:22.320 --> 47:23.040]  It's difficult.
[47:24.580 --> 47:26.500]  I feel like I could go do it for myself.
[47:29.740 --> 47:31.140]  Yeah, it's not an easy process.
[47:31.140 --> 47:41.600]  There is, you know, there's a little bit you can do as an individual to figure out the system a little bit better and to negotiate the prosecution process a little bit better.
[47:42.040 --> 47:46.760]  One of the tools you can use is you can actually pick up the phone and talk to the patent examiner who issued your rejection.
[47:47.120 --> 47:50.180]  And if you don't understand something, you can ask them to explain it.
[47:51.240 --> 47:52.780]  Sometimes they're difficult to understand.
[47:53.420 --> 47:55.160]  I mean, I mean the examiners themselves.
[47:56.440 --> 47:59.240]  And sometimes they don't really know what's going on.
[48:00.880 --> 48:05.100]  So, you know, it does help if you have somebody who knows what's going on and can fill them in.
[48:06.860 --> 48:09.300]  But generally, it's going to be hard but not impossible.
[48:10.300 --> 48:10.400]  Yeah.
[48:11.040 --> 48:11.700]  Yes, Guy.
[48:23.200 --> 48:30.680]  I mean, like I just said, if you're picking up the phone and talking to a patent examiner, they will try and help, you know, they will explain it to you as long as you're polite.
[48:30.860 --> 48:33.440]  You know, if you're not a jerk to them, they're not going to be a jerk to you.
[48:33.520 --> 48:35.440]  They're just federal employees doing their job.
[48:36.520 --> 48:45.940]  If you have questions about procedure and how, you know, the nuts and bolts of filing a thing work, yeah, you can talk to like one of the technology centers and they'll explain everything to you.
[48:46.060 --> 48:49.760]  And I don't personally know the numbers to call for that.
[48:49.940 --> 48:52.180]  But it's presumably somewhere on their website.
[48:53.940 --> 48:54.940]  Ah, okay.
[48:55.420 --> 48:56.840]  I'm going to keep working back.
[48:57.160 --> 48:58.580]  Somebody back there who raised their hand.
[48:58.860 --> 48:59.700]  Mr. in the red.
[49:01.820 --> 49:02.300]  Submarine.
[49:02.840 --> 49:03.900]  Submarine patents, yes.
[49:03.900 --> 49:05.100]  Is there a list of...
[49:07.190 --> 49:08.980]  Is there a list of submarine patents out there?
[49:09.620 --> 49:09.790]  Yeah.
[49:10.840 --> 49:11.320]  Um...
[49:11.320 --> 49:12.310]  I don't know.
[49:13.620 --> 49:13.900]  I mean...
[49:13.900 --> 49:15.300]  There's a value to those.
[49:16.060 --> 49:17.080]  You can actually flush.
[49:17.320 --> 49:18.040]  You can...
[49:18.040 --> 49:18.690]  If there is...
[49:18.690 --> 49:22.400]  You can say, well, let's do something that looks like...
[49:22.400 --> 49:25.340]  Try and bait somebody into using their submarine patent against you?
[49:26.230 --> 49:26.710]  Um...
[49:26.710 --> 49:27.300]  Maybe...
[49:28.180 --> 49:28.660]  I...
[49:28.660 --> 49:38.100]  The question is whether there's a list of submarine patents out there that we could then use to scare the submarine patent holders out of hiding.
[49:38.940 --> 49:39.500]  Um...
[49:39.500 --> 49:40.080]  I don't know.
[49:41.080 --> 49:43.290]  Presumably, if they're public, you can go find them.
[49:43.460 --> 49:46.660]  They would be the ones that have been pending since before 1995.
[49:47.880 --> 49:48.440]  Um...
[49:48.440 --> 49:49.060]  By the column.
[49:49.060 --> 49:49.560]  Um...
[49:49.560 --> 49:50.160]  Um...
[49:57.430 --> 49:58.030]  Um...
[49:58.030 --> 50:05.750]  It sounded like maybe you said that your patent can be issued, but then you'd be stuck into a path by that secret prior art.
[50:05.910 --> 50:10.980]  My question is towards public...
[50:10.980 --> 50:11.240]  Okay.
[50:11.540 --> 50:13.620]  The question is...
[50:13.620 --> 50:13.840]  Is...
[50:13.840 --> 50:20.080]  Is secret prior art available to the patent examiner before it's published?
[50:20.840 --> 50:24.840]  The answer is, in practical terms, it would never really come up.
[50:25.040 --> 50:32.360]  Because the lag time between filing and receiving your first office action can be, you know, is generally on the order of two years.
[50:32.680 --> 50:39.940]  So that exceeds the publication date, which means by the time an examiner actually sits down to do the search, all of that secret prior art has already been flushed out.
[50:39.940 --> 50:40.500]  So...
[50:40.500 --> 50:45.940]  So I guess really it comes into play when, say, you do some diligent search before you file your application.
[50:47.300 --> 50:47.800]  Exactly.
[50:48.080 --> 50:48.340]  It's...
[50:48.340 --> 50:49.380]  It's an issue of...
[50:49.380 --> 50:50.080]  If you are do...
[50:50.080 --> 50:53.100]  If you're trying to do the right thing and find all of the...
[50:53.100 --> 50:59.040]  All of the potentially troublesome stuff out there, you might not find all of it because it's secret.
[51:00.440 --> 51:00.940]  Um...
[51:00.940 --> 51:01.480]  Yes, in the back.
[51:02.120 --> 51:02.320]  Yeah.
[51:05.530 --> 51:08.550]  Some of it is pedestrian depending on who you ask.
[51:08.990 --> 51:09.430]  Um...
[51:09.430 --> 51:11.870]  But I see that we essentially have three choices.
[51:12.990 --> 51:13.430]  Uh...
[51:13.430 --> 51:16.170]  Files patterns we hope that they hold in court.
[51:17.170 --> 51:17.610]  Or...
[51:17.610 --> 51:19.010]  Files patterns just for defense.
[51:19.250 --> 51:21.630]  And I'm not really care what they hold or not just for scare of the people.
[51:22.410 --> 51:22.850]  Or...
[51:22.850 --> 51:23.030]  Uh...
[51:23.030 --> 51:24.210]  Not file patterns at all.
[51:24.490 --> 51:27.650]  Use the money to actually get the wrong software and hope that it works out.
[51:28.610 --> 51:29.050]  Um...
[51:29.050 --> 51:29.550]  We don't.
[51:29.790 --> 51:32.190]  We can only do more about the company that I've worked for.
[51:32.370 --> 51:38.510]  Is there some kind of rule of challenge or questions you would ask to decide which one of these three strategies to do with that?
[51:38.770 --> 51:40.430]  The option...
[51:40.430 --> 51:40.670]  Uh...
[51:40.670 --> 51:43.170]  And again, this is coming from a relatively biased perspective.
[51:43.430 --> 51:44.070]  The option...
[51:44.070 --> 51:48.370]  The best course of action if you have the money to do it is usually not don't get patents.
[51:49.050 --> 51:49.490]  Um...
[51:49.490 --> 51:49.710]  That's...
[51:49.710 --> 51:53.270]  That's not going to be a good course of action in terms of your strategic position.
[51:54.110 --> 51:54.550]  Um...
[51:55.050 --> 51:55.490]  Usually...
[51:55.490 --> 51:59.810]  I mean, my point of view is that a patent is an asset for your startup.
[52:00.890 --> 52:09.270]  And even if you don't have a particular need to use this patent today, if you're looking to sell the company later, that's what you're selling.
[52:09.750 --> 52:12.230]  You are selling your assets.
[52:12.530 --> 52:14.250]  And maybe that is your human resources.
[52:14.450 --> 52:19.050]  You know, maybe that's the people you have, uh, working for you who are then going to go work for the new guy.
[52:19.230 --> 52:25.230]  But frequently, that means the technologies you've developed and can hand to them when they hand you a check.
[52:25.910 --> 52:26.270]  Um...
[52:26.270 --> 52:26.930]  So in my...
[52:26.930 --> 52:31.070]  You know, from my point of view, patents are huge for a startup.
[52:31.650 --> 52:32.070]  Um...
[52:32.070 --> 52:33.090]  And they should be pursued.
[52:33.090 --> 52:34.470]  I don't remember what...
[52:34.470 --> 52:34.910]  What your two...
[52:34.910 --> 52:35.670]  Uh...
[52:35.670 --> 52:37.690]  Was the defensive publication one of those options?
[52:38.050 --> 52:38.070]  Yeah.
[52:38.490 --> 52:38.710]  Um...
[52:38.710 --> 52:42.290]  Defensive publication is an option.
[52:42.830 --> 52:43.330]  Um...
[52:43.330 --> 52:46.650]  At the very least, it'll make it so that your own stuff won't get used against you.
[52:47.810 --> 52:48.370]  Um...
[52:48.370 --> 52:50.570]  Or at least help to make that so.
[52:51.830 --> 52:52.390]  Um...
[52:52.390 --> 52:58.030]  But doesn't really give you much in terms of building value for your own company.
[53:00.230 --> 53:00.590]  Um...
[53:00.590 --> 53:02.350]  I'm gonna start in the back here and work my way forward.
[53:02.470 --> 53:03.670]  Anybody in the back on my left here?
[53:03.850 --> 53:04.050]  Yes.
[53:04.630 --> 53:04.990]  Um...
[53:04.990 --> 53:13.160]  A little indemnity thing, which I feel like is sort of important if people are gonna dive in and start reading patents, that they may
[53:16.200 --> 53:16.440]  recognize.
[53:16.980 --> 53:19.680]  Can you define what you mean by the triple indemnity thing?
[53:19.800 --> 53:21.100]  So, uh...
[53:24.680 --> 53:27.680]  And then, somehow, you thought
[53:38.720 --> 53:40.800]  I was actually just an accidental infringer.
[53:40.980 --> 53:41.660]  It's a different rate.
[53:41.820 --> 53:42.040]  Yes.
[53:42.360 --> 53:44.380]  The question goes to, um...
[53:44.380 --> 53:48.220]  Why didn't I tell people about the potential for triple damages?
[53:49.440 --> 53:50.000]  Um...
[53:50.000 --> 53:51.740]  The answer is...
[53:51.740 --> 53:53.260]  Because I only have an hour?
[53:54.140 --> 53:54.700]  Um...
[53:55.500 --> 53:56.060]  Uh...
[53:56.060 --> 53:56.480]  Oh, okay.
[53:56.760 --> 53:57.120]  I mean, yeah.
[53:57.120 --> 53:59.480]  It is worth mentioning that, um...
[53:59.480 --> 54:12.320]  If you are willfully infringing a patent, so you know this patent exists, and you decide to infringe it anyway, and you get sued, you know, you get burnt on that, and somebody sues you, you will...
[54:12.320 --> 54:13.520]  And you get fined...
[54:13.520 --> 54:20.180]  You are found to have infringed it, and the patent is valid, and everything goes against you, you can pay triple damages.
[54:20.180 --> 54:28.740]  And damages, generally speaking, in the patent world, go to either a reasonable royalty, or lost profits, or, you know, things like that.
[54:29.480 --> 54:34.360]  So, further than actual willfulness, what I've found in working as a software engineer,
[54:38.890 --> 54:45.070]  infringes some patents already, so do not ever read any patents, and that way you can avoid being more willful later.
[54:45.210 --> 54:46.270]  That, um...
[54:46.270 --> 54:59.770]  A good point has been raised, uh, following, um, pursuant to that, which is that there's really no advantage to going out and finding, um, prior art if you're worried.
[55:00.090 --> 55:00.890]  Like, if you're...
[55:00.890 --> 55:01.150]  Okay.
[55:01.830 --> 55:04.210]  As a general rule, I never do a patent search.
[55:04.330 --> 55:07.730]  And I don't advise people to do patent searches before they file their inventions.
[55:07.970 --> 55:10.850]  Unless it's something that seems really obvious.
[55:11.310 --> 55:16.630]  Um, if it seems obvious, then yeah, you go onto Google, you spend 10 minutes, you save yourself $10,000.
[55:17.070 --> 55:17.570]  Hooray!
[55:19.710 --> 55:20.210]  Um...
[55:20.210 --> 55:31.250]  However, if you're in, you know, uh, a devout, you know, uh, an advanced field, and you know what other people are doing, generally speaking, you don't want to go out and start reading the prior art.
[55:31.590 --> 55:32.790]  All it can, you know, at the end...
[55:32.790 --> 55:35.210]  At the end of the day, it can only be used against you.
[55:35.390 --> 55:42.350]  You will have a duty to disclose it to the patent office, and if you find something that you do infringe, you are now a willful infringer.
[55:43.410 --> 55:43.890]  Yes?
[55:44.210 --> 55:53.790]  Uh, speaking of patent trolling, uh, I'm looking at a patent application filed by Halliburton for patent acquisition and assertion by a non-inventor...
[55:55.060 --> 55:57.920]  Are you citing a patent on patent trolling?
[56:04.120 --> 56:08.020]  Patent acquisition and assertion by a non-inventor first party against a second...
[56:08.020 --> 56:08.580]  That's pretty cool.
[56:09.100 --> 56:09.960]  Did they get a patent?
[56:10.040 --> 56:10.440]  No, no, no.
[56:10.540 --> 56:11.360]  That's just an application.
[56:11.560 --> 56:12.020]  That's not a patent.
[56:12.180 --> 56:12.260]  Okay.
[56:13.980 --> 56:15.020]  Yeah, 2008.
[56:15.640 --> 56:15.720]  Yeah.
[56:16.100 --> 56:16.540]  I don't know.
[56:18.840 --> 56:19.360]  I...
[56:19.360 --> 56:19.700]  Listen.
[56:20.020 --> 56:24.020]  I don't profess to belong to a spotless profession.
[56:25.140 --> 56:25.660]  Yes?
[56:26.100 --> 56:27.760]  Years ago, I was able to go to review
[56:32.430 --> 56:33.770]  your training as an unventor.
[56:33.910 --> 56:34.090]  Yes.
[56:35.090 --> 56:41.830]  The question is whether you can still have an in-person interview with an examiner, and the answer is yes, if you are in Alexandria.
[56:42.090 --> 56:48.490]  Actually, they're just now opening up other patent offices across the country, which is kind interesting.
[56:49.070 --> 56:50.630]  So I guess now if you are...
[56:50.630 --> 56:58.650]  I think in Denver, Colorado, and maybe Chicago, and San Jose, you can go in person and talk to a patent examiner.
[56:58.950 --> 57:00.430]  If they're the ones...
[57:00.430 --> 57:00.510]  Anyway.
[57:00.990 --> 57:01.150]  Yes?
[57:01.330 --> 57:03.670]  Is there any software to create a patent?
[57:04.950 --> 57:06.650]  Well, I use Microsoft Word.
[57:09.670 --> 57:10.110]  Yes.
[57:10.850 --> 57:11.290]  Yes.
[57:11.430 --> 57:11.690]  That's a processor.
[57:11.690 --> 57:12.090]  Yes, that's a processor.
[57:12.730 --> 57:13.510]  So I have...
[57:13.510 --> 57:16.430]  I'm going to file an application on creating a patent with a processor.
[57:18.110 --> 57:18.590]  Vizio.
[57:18.750 --> 57:20.710]  I mean, honestly, it's whatever you use.
[57:20.810 --> 57:22.430]  XFIG would do just fine.
[57:23.970 --> 57:25.430]  Scanning for more questions.
[57:25.750 --> 57:26.010]  Scanning...
[57:26.010 --> 57:26.150]  Yes?
[57:37.070 --> 57:40.670]  I mean, the question is if you are filing patents defensively.
[57:40.810 --> 57:46.570]  If you're publishing defensively, so you just want to put out a prior card, basically.
[57:47.090 --> 57:49.790]  If you are publishing defensively, should you create claims?
[57:50.550 --> 57:52.070]  I'm not sure I understand your question.
[57:52.070 --> 57:56.510]  How much like patents should your...
[57:56.510 --> 57:58.670]  Oh, I see.
[57:58.910 --> 58:04.770]  The question is how much like a patent, if you are publishing defensively, how much like a patent should your patent...
[58:05.390 --> 58:07.330]  Or should your publication look?
[58:07.510 --> 58:09.290]  And the answer is, it doesn't really matter.
[58:09.430 --> 58:13.090]  As long as it's clear and understandable so that anybody who's reading it would understand.
[58:13.250 --> 58:14.410]  Oh yeah, I see what's going on.
[58:14.550 --> 58:16.410]  Clearly this other guy, he's trying to do the same thing.
[58:16.670 --> 58:19.270]  That's all you're looking for if you're publishing defensively.
[58:20.270 --> 58:21.190]  And we're done.
[58:27.000 --> 58:29.760]  And I guess if you want to ask me more things, I'll hang out over there.
[58:30.680 --> 58:31.140]  Oh, yeah.