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August 10, 2008

Greenhorn

Young James McDonough displayed inexperience in an interview in the Wall Street Journal. McDonough blamed patent trolls for the USPTO tightening examination, when it was media coverage of carping by patent-infringing computer technology corporations that provoked a PTO political response. To blame enforcers of their IP rights is like a bad omelet cook blaming chickens for laying eggs.

McDonough knows better than to slam patent trolls. He took a lesson from Patent Hawk and spun a fine paper on the subject a couple of years ago.

McDonough advises a small company to "work with a skilled intellectual-property attorney to develop a plan for building your IP portfolio" "before patenting." Small companies can't afford such luxury, Diamond Jim. If you have a patentable idea, and think it may have commercialization potential, either by yourself or others, forget the castle-in-the-sky portfolio planning and hustle to a patent agent.

McDonough confused specification with claims.

Often, an inventor's instinct is to describe his invention by describing its specific parts, which can result in inadvertently limiting the scope of the patent. As a general rule of thumb, the claims should include all possible versions of the invention, which can be accomplished by using broad, functional language in the patent.

A patent specification should cover as many variations and potential inventions in the specific area as possible. Each patent is for a single invention. A good patent specification should offer the potential for numerous patents, called divisionals.

McDonough hit a nail on the head:

The inventor and attorney will work together to refine the scope of the patent to ensure it is as broad as possible while still being able to withstand a lawsuit.

McDonough figured it costs $10,000 to $30,000 to get a patent, and up to $1000 for a patentability search. You can get a top-quality patent from Platinum Patents for $10,000 or less. Patentability searches by premier searcher Patent Hawk cost $600 or less.

McDonough on invention development:

An inventor may want to apply for a patent at the wrong time. For instance, it may be too early if the invention is not yet developed to a point that it can be sufficiently described in the patent.

Platinum Patents helps inventors develop their inventions, including pointing out the particular areas that need fleshing out to enable the invention, and suggesting extensions and variations. Top-drawer prosecutors regularly assist this way.

On enforcement, McDonough showed that he's no litigator.

[G]enerally it's pretty difficult to bring an infringement suit against a really large company because of the amount of resources available to large companies as compared to small companies... So, it's often not ideal for a small company to try to sue a really large company.

Patent Hawk can set anyone up for enforcement of a quality patent with a contingency law firm. As Todd Rundgren once sang, "If I thought I knew what was good for you I would have gone and done it for myself."

Apparently, declaratory judgment actions aren't in McDonough's view when he wrongly advised small fry to try to cozy up to infringing large fry:

You might approach the larger company and offer a license, or attempt to establish a partnership.

If you have an infringed patent, the last thing you want to do is approach the infringer. Hire a patent attorney, or, if you don't know a good patent attorney, contact Patent Hawk for referrals.

Posted by Patent Hawk at August 10, 2008 10:55 PM | The Patent System

Comments

Self serving advertisements can be annoying in a blog post.

Posted by: anon at August 11, 2008 4:59 AM

"WSJ: What are some alternatives to suing for infringement?
Mr. McDonough: You might approach the larger company and offer a license, or attempt to establish a partnership"

Or you might walk on the Moon...

Seriously, where do all those ignorant punks like Mr. McDonough come from ?
Has he seen any cases of a large (tech) company responding to a reasonable licensing proposal from a small startup of say 10 people ?
I challenge everybody here to produce a single example of a small startup "approaching the larger company and offering a license, or attempting to establish a partnership" which ended up as success story
I am not aware of any such examples, even in the pre-EBay era (remember NTP vs. RIM ? the initial licensing proposal from NTP was more than reasonable...)

Posted by: angry dude at August 11, 2008 5:31 AM

OK, Dude. You want examples, how about these:

Robt. Kearns going to Ford and Chrysler with the intermittent wiper.

Ooops, hold on. He got screwed. [Although he eventually got $50 million in jury trials.]

OK, how about Donald Richardson's motorcycle suspension and his license agreement with Suzuki? Ha!

Wait a minute. . . he got screwed, too.

Bummer, Dude, you're right. This IP aggression against small-fry will not stand. I wonder if Kearn's and Richardson's lawyers were working for a cut. Bless them, if they were.

Kearns, now deceased, is a modern folk-hero. Richardson should be a folk-hero,too. His case is less well known. Both cases make mince-meat of McDonough's opinion that small-fry cannot or should not assert their IP rights against the bullies.

Posted by: Babel Boy at August 11, 2008 7:54 AM

I agree that self serving advertisements can be annoying in a blog post.

Posted by: Patent Prosecutor at August 11, 2008 9:23 AM

The annoyance of self-serving advertisement in a blog post is duly noted, and was even considered when writing the post. Damn that evil mercantile twin of mine.

Thanks for the feedback.

Posted by: Patent Hawk at August 11, 2008 10:11 AM

This guy got out of law school about a year ago. Not to mention, he is not even qualified to prosecute a patent with that psychology degree. Ginger kids, gotta love em....lol

Posted by: Scott at August 11, 2008 11:17 AM

Of the text --I challenge everybody here to produce a single example of a small startup "approaching the larger company and offering a license, or attempting to establish a partnership" which ended up as success story
I am not aware of any such examples, even in the pre-EBay era (remember NTP vs. RIM ? the initial licensing proposal from NTP was more than reasonable...)--

In 2008, in the post-eBay era, retired professor Gertrude Neumark Rothschild filed an ITC action over US patent 5,252,499. In August 2008, Semiconductor Today reported:

Rothschild has already reached licensing deals with 13 firms, including Sony, Sanyo, Seoul Semiconductor Co Ltd, LG Electronics, Lucky Light Electronics Co Ltd, Everlight Electronics Co Ltd, Samsung Electro-Mechanical, Seiwa Electric Mfg Co Ltd, Shenzhen Unilight Electronic Co Ltd, Guangzhou Hongli Opto-Electronic Co Ltd, Samsung Electro-Mechanics Co Ltd, Samsung Electronics Co Ltd, and Lite-On Inc.

In New Jersey, the Jonathan Nyce story ended up as a pretty good deal for Nyce, who, but for killing his wife, did get lots of money for technology that didn't work too well.

Posted by: Lawrence B. Ebert at August 12, 2008 2:57 AM

Interesting..

It seems that ITC is the only venue left to exersize the only true right behind a patent - it's exclusionary power..
How about retailitory DJ lawsuits from those large foreign corporations ? Can they do it to US patent holders asserting their patents in the ITC ?
I would stay away from even approaching a large domestic corporation with licensing proposal (meaning "please pay for patented technology you already knowingly use in your products").
This will trigger DJ lawsuit with 100% certainty.
That's why those corporate dudes (like tricky Rick from Cisco - the (in)famous "patent troll tracker") whine about being sued all the time without prior warning... What goes around comes back...

AS for Jonathan Nyce, sorry dude, it's unrelevant
because it's pharmaceutical field

The current patent "deform" is not so much about big pharma vs. tech - it's more about big tech manufacturers vs. small tech inventors

Posted by: angry dude at August 12, 2008 5:51 AM

In defense of Patent Hawk and his insistence on trying to make a living. The "ads" are always presnted with a light and a sometimes an amusing touch, but also provide information regarding alternative pricing out there.

Posted by: Joyce at August 12, 2008 10:11 AM

This is odd, they called young James an "intellectual-property attorney at Fish & Richardson P.C." and ask him for detailed information about patent matters, but I don't see his name on the official list of patent attorneys and agents at the PTO web site. Wonder of wonders, imagine that! Could it be a junior litigator speaking outside of his scope of expertise? Never!

McDonough David P
McDonough Lawrence G
McDonough Michael P
McDonough Robert S
McDonough Thomas C

Maybe he's just really, really green to be talking about patent matters to anyone *except* the Wall Street Journal. Or maybe it's a paid (or self-serving) publicity stunt for tingling the anti-troll emotions of the corporate masses.

His FR page professes most of his few accomplishments to be litigation related.

"James McDonough is an Associate in the Atlanta office of Fish & Richardson. His practice emphasizes patent litigation and intellectual property litigation. Mr. McDonough was previously a part-time Law Clerk with the firm. He is a former Legal Intern for the Center for Disease Control in its Technology Transfer office (Summer 2005). He was a Program Manager at LBS Consultant (2002-2004), and a Senior Consultant at Cerner Corporation (1999-2002)."

P.S. I didn't mind the self-serving advertisements either... always thought they came with the territory in this blog. Just don't take yourself too seriously, Hawk, this is a field where even the best can make mistakes....

Posted by: NIPRA anonymous at August 13, 2008 3:30 AM

NIRPA anonymous wrote: "Just don't take yourself too seriously, Hawk, this is a field where even the best can make mistakes...."

Thanks for the advice.

The first sign of mental illness is taking yourself seriously.

The one thing I've learned is that patents are all about careful skating, as the ice is perpetually thin.

Posted by: Patent Hawk at August 13, 2008 9:02 AM

wow...you all are vicious...

i never noticed this before, but I just searched for his name in the USPTO website, and gary odom is not a patent agent or IP lawyer, or even a lawyer at all for that matter (though I admit he plays the role well on the internet). kind of funny that he's ripping on some guy working at F&R, a decent IP firm, for talking about patent law when he's not a patent attorney....kettle, meet the pot :)

somebody has to stick up for this guy, so it might as well be me......I have to be honest, this post oozes more of desperation than pure sarcasm (the usual patent hawk MO, which can be entertaining). i hope things aren't that bad for old patent hawk that he is trying to drum up business at another's expense. i read the interview, and the answers all seem fairly reasonable given the audience.... seems to be just a fluff interview for small business owners and intended to drum up business. I can't imagine the WSJ wants an ode to MedImmune or an in depth discussion about the difference between claims and specifications. did you all read the questions? they were pretty simplistic.... "what are some alternatives to suing for infringement?" what are you going to say, "nothing?" of course not, you give a few options and tell them to call a lawyer before they do anything...then you start billing them ;)

Here is my take: bravo for him being so young and pulling an interview with WSJ...don't really know how he did it, they certainly haven't knocked on my door...if it was meant to be an in depth discussion of patent law with actual advice, then I might slam him. but it's pretty clearly a high level piece that essentially says: "don't do it yourself, hire an attorney"...whatever....more power to him...

Posted by: Tutor Help at August 13, 2008 2:55 PM

"wow...you all are vicious..."

And you're judgmental? You may not wish to take yourself so seriously, Tutor. :-)

"gary odom is not a patent agent or IP lawyer, or even a lawyer at all for that matter"

And that makes you better than him how?

Or perhaps you were suggesting that WSJ should have interviewed Gary instead of James?

[BTW, the purpose of the comments was not to roast James, but rather to expose the continual dis-infornmation about trolls and patents which the WSJ spews in the MSM... and the self-interested people outside of the patent system that happen to make themselves "useful" for that lucrative purpose. The current patent war is being 98% motivated by politics and money from both sides, with precious few people (and perhaps none at WSJ) thinking about the progress of science and the useful arts which the patent system, when it was working properly, promoted.]


Posted by: NIPRA anonymous at August 13, 2008 4:08 PM

Tutor Help, thanks for the comment.

You didn't need to search for my credentials. I don't have any. I could have told you that. My blurb bio on the Patent Hawk site tells you that.

Why anyone would hire a patent technical consultant, or read a patent law blog, from an uncredentialed bum like me, may seem mysterious. Maybe it has something to do with the fact that credentials and competence have but the slightest acquaintance, as anyone with competence and experience knows. Almost ironic this comes up in a blog entry about someone who is credentialed, as are practically all of the characters in my blog entries where my tone is less than salutational.

Careful reading of my entry shows that I did not rip into James. James McDonough is a very nice guy. For whatever reason, he didn't come off too well in the WSJ interview, at least to those in the know. You're right, good for him for even getting such an interview. Looks like he got a few things wrong, or was misquoted. I pointed out where he got something right. I don't doubt it was a learning experience for James. For the best of us, that's what life is: a learning experience.

Posted by: Patent Hawk at August 13, 2008 4:26 PM

Of licensing, note from BNET:

Avistar Communications Corp. , a desktop video collaboration platform provider, and its wholly-owned subsidiary, Collaboration Properties, Inc. (CPI), today announced that CPI has entered into an agreement to license CPI's extensive patent portfolio on a non-exclusive, worldwide basis to Sony Corporation and its subsidiaries, the multinational manufacturer of audio, video, and communication and information technology products for the consumer and professional markets.

Of course, during licensing talks, Microsoft decided to submit Avistar patents for re-exam.

Also, the initial challenge --I challenge everybody here to produce a single example of a small startup "approaching the larger company and offering a license, or attempting to establish a partnership" which ended up as success story -- was not tech-area limited.

Posted by: Lawrence B. Ebert at August 14, 2008 6:59 AM

Nice writing. You are on my RSS reader now so I can read more from you down the road.

Allen Taylor

Posted by: electronics at April 5, 2009 5:23 AM