Should I Apply for Patents in My Tech Start-Up? (Part 2)

In my previous article (which you can find here, if you have not already read it) I wrote about the strategic role of patents, and other forms of intellectual property, in capturing the intangible assets of a business in a form that can be owned and managed.

I also outlined some of the reasons why a start-up venture might choose not to pursue patent protection for some, or all, of its innovative technology namely:

1. the start-up’s technology is not eligible for patenting;
2. the timing is not yet right, and the business has higher priorities;
3. a patent is not the best option for protecting the company’s IP; or
4. the value that a patent will add to the business does not justify the cost.

In this second part I will discuss some of the benefits that patents may bring to technology start-ups, including: assisting in obtaining funding; setting a business up for success; providing additional revenue streams; protecting market share; establishing technology leadership; and strengthening the company’s position in business negotiations.

 Read full article ► 

Tags: Intellectual Asset Management, Strategy, Valuation

Should I Apply for Patents in My Tech Start-Up? (Part 1)

Anybody starting a new technology venture based on some novel idea will need to address the issue of whether or not to apply for one or more patents to protect the idea.  In fact, the question is not merely whether to apply, but also when to apply and what to apply for.  Furthermore, these questions must be considered in the context of the overall business strategy of the start-up venture.

For the purposes of this article I am assuming that the bulk of the value in a technology start-up resides in its intellectual assets.  This should be self-evident – a new company typically has no tangible assets to speak of, and generally relies on what its founders bring to the table, namely their ideas, creativity, experience and skills in the relevant fields of technology and business.  The biggest problem with these initial intangible assets is not that you cannot ‘see’ them, it is that you cannot nail them down, buy them or sell them.  If a key founder bails, burns out, or suffers illness or accident, the start-up could be over before it has even begun.

Of course, investors and financiers know all this.  Up to a point, they will invest in people despite the inherent risks.  Indeed, the people are critical because the only way the risk can be mitigated at all is by trying to ensure that the right team is in place.  But ultimately people are not possessions to be owned, bought and sold.  They are free to come and go as they please, and they are subject to the whims of fate.

Patents provide one mechanism by which ‘free’ knowledge and ideas can be captured and owned by a business, in order to increase competitive advantage and add value.  In this series of two articles I will look at how this happens, and discuss some of the main issues to be considered when deciding whether or not to apply for patents.  Later in this first article, I will run through some of the reasons why a start-up might decide not to file patent applications.  The second article will focus on the key considerations on the other side, i.e. when and why start-ups should file patent applications.

 Read full article ► 

Tags: Intellectual Asset Management, Strategy, Valuation

So What’s the Real Reason Twitpic is Shutting Up Shop?

As regular readers will be aware, I do not usually write about trade mark matters on this blog.  However, I am completely mystified by Twitpic’s announcement this week that it will be closing down on 25 September 2014, allegedly because it lacks the resources to take on Twitter in a trade mark dispute, and so I want to put the question out there: what is really going on at Twitpic?

Twitpic, if you are unfamiliar with the company, launched in February 2008, providing a service to enable users easily to ‘attach’ photos or other images to their tweets on Twitter.  A tweet cannot actually contain an image, but it can include a link to an image which is stored anywhere on the internet.  Services like Twitpic (there are now many others, including Instagram, and Twitter’s own image-hosting platform) upload users’ images to their own servers, and post tweets on behalf of the users which contain links to the images.

The implication seems to be that Twitter is trying to deprive Twitpic of the right to use its name, and that this is why the service is shutting down.

The problem I have with this is that it is not true.

Twitter has no problem with Twitpic continuing to use the Twitpic name.  What Twitter will not do, however, is to allow Twitpic to register its name as a trade mark.

 Read full article ► 

Tags: Intellectual Asset Management, Strategy, Trademarks

Tesla ‘Open Sources’ a Wall of Patents

In a blog post yesterday, Tesla Motors’ founder and CEO Elon Musk announced that the company had taken down a ‘wall of patents’ in the lobby of its Palo Alto headquarters, and ‘will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.’

I have mixed feelings about this manoeuvre.  On the one hand, I am sure it is absolutely the right move for Tesla.  Elon Musk is nobody’s fool, so if he has decided that a wall of patents is delivering no value to the company as a barrier to competition, then who am I to argue?

On the other hand, I am troubled by Musk’s claiming of the ‘high ground’ in making this grand symbolic gesture (and yes, I will explain why I think it is ‘symbolic’).  His claim that Tesla is freeing its patents ‘in the spirit of the open source movement’ has had predictable results in the usual anti-patent circles: amongst others, a piece at Ars Technica asserts that ‘Tesla will use patents to subvert patent system’, while the Electronic Frontier Foundation opines that this is ‘a welcome alternative to current trends’.

What a lot of idealistic rot this is!  Tesla is a business.  It wants to succeed and make money.  More specifically, it wants to succeed in making the world’s first true mass-market electric vehicle over the next three years or so.  And to make this a reality, it also proposes to build a lithium-ion power cell ‘Gigafactory’ in order to take advantage of massive economies of scale to bring costs down.  The site for this $5bn construction project has reportedly become a political football, with Texas, Arizona, New Mexico and Nevada all vying to host the factory.

 Read full article ► 

Tags: Intellectual Asset Management, Strategy

NZ’s PowerbyProxi Sits on a Potential SEP Goldmine

A $4 million investment by Samsung Ventures Investment Corporation in New Zealand company PowerbyProxi Limited has received wide coverage over the past week (see, e.g., the IAM Magazine blog, scoop.co.nz, gigaom.com and AllThingsD, among many others).

On the face of it this is a good news story for the NZ start-up company, which was founded in 2007 based, in part, on intellectual property originally developed at the University of Auckland.  PowerbyProxi claims to have developed the world’s most advanced and safest wireless power system, and the first commercial wireless recharging system capable of 3D power transfer, regardless of how a device (such as a smartphone) is oriented within the recharging unit.  It also claims to own a portfolio of 126 granted patents worldwide, along with numerous further pending applications.

There are two components to the Samsung deal.  Samsung Electro-Mechanics has entered into a strategic partnership with PowerbyProxi, under which it will license the NZ company’s consumer electronics and home appliance wireless power IP and technology.  The other component is the $4 million in strategic funding from Samsung Ventures Investment Corporation, which will also see Samsung Ventures America senior investment manager Michael Pachos joining the PowerbyProxi board, suggesting that the deal gives Samsung a substantial equity interest in the company.

 Read full article ► 

Tags: Innovation, Intellectual Asset Management, Licensing, New Zealand, Technology standards

Six Tips for Your Business to Avoid Wasting Money on Patents

For many small and medium sized businesses, it can seem difficult to justify spending thousands of dollars on the preparation and filing of a provisional patent application, let alone spending tens of thousands more on obtaining actual granted patents over the subsequent years.

On the other hand, those same businesses may have annual salary costs in the hundreds of thousands, or millions, of dollars.  And they may think nothing of spending ten thousand dollars or more on attending an international trade show to promote their products or services.  These expenses, along with many others, are simply the cost of doing business.  After all, you have to spend money to make money.

A patent can protect innovative features, which differentiate a product or service in the marketplace, from copying by competitors.  Those features may have cost tens or hundreds of thousands of dollars in direct and indirect costs to develop, promote, and bring to market.  They may be the result of particularly innovative thinking on the part of highly-valued (and highly-priced) key staff within the business. 

If this sounds like the kind of thing that happens in your own business, why would you not be looking to protect this investment against copying?  Part of the problem seems to be that many businesses lack experience with intellectual property management and protection, and therefore do not have a sense of what constitutes a ‘reasonable’ cost for these activities.  Intellectual property, by its very nature, is intangible – it is very difficult to determine exactly what it is worth.

So if you are looking to build a patent portfolio, how do you know if you are getting good value for money?  And how do you avoid ‘wasting’ money on services and IP assets that do not contribute value to your business? 

There are no simple answers to these questions, and certainly none that are universally applicable.  Nonetheless, here are a few tips that may help you to avoid some of the mistakes that many businesses make, which cause them to waste money on patents and advice that are not adding corresponding value to the business.

 Read full article ► 

Tags: Intellectual Asset Management, Strategy

Can I – and Should I – Patent My Smartphone App?

One of the most common types of enquiry we receive in our day-to-day practice is about patenting of smartphone (i.e. iOS or Android) apps.  Indeed, if we had a dollar for every prospective new client who had rung up or emailed to ask how to protect their ‘million dollar app’ idea, we would have… well… probably more money than we have made from actually preparing and filing patent applications based on these enquiries!  Because most of them end up going nowhere, once we have had a conversation about the pros and cons of patenting.

This post will explain why.  And it is not because smartphone apps cannot be patented – many of them most probably can be.  However, for most inventors the appropriate question is not ‘can I patent my smartphone app?’ but ‘should I patent my smartphone app?’  This second question is difficult to answer without having a solid business plan, which is something that has rarely been considered by people calling a patent attorney because a friend or relative told them: ‘that is a great idea, you should patent it!’

These days, the Apple iTunes App Store and Google Play (the Android equivalent) are incredibly competitive marketplaces.  According to recent data from app analytics specialists Flurry, there are over 600,000 apps now available from each of these markets.  Wikipedia entries for the two stores place these figures for September 2012 at 700,000 apps in the Apple App Store and 675,000 apps on Google Play.  Whichever figures are most accurate, this is an awfully large number of apps!

If you are going to make any money in these markets – whether by app sales, through in-app revenue and/or via advertising – you are going to have to get noticed first.  And clearly there is much more to this than just having a great idea.  (In fact, this may be the least important element, unless you are the sort of person who thinks that flinging kamikaze birds at green pigs with a slingshot is a ‘great’ idea!)

Ask not, therefore, whether your app idea can be patented.  Ask instead whether it is worth patenting.  This is as much a business question as an IP issue, and for many – perhaps the majority – of app inventors, the answer may well be ‘no’.

 Read full article ► 

Tags: Android, Computer programs, Intellectual Asset Management, iOS, Strategy

Edison Updated for a New Decade

Book Review – Edison in the Boardroom Revisited: How Leading Companies Realize Value from Their Intellectual Property, by Suzanne S Harrison and Patrick H Sullivan (John Wiley & Sons, 2011)

The original Edison in the Boardroom has become a classic text in the intellectual property field, and introduced many people to the basic concepts of intellectual capital, intellectual assets, and their management.

The cover notes of the first edition – published in 2001 – described it as ‘an in-depth look at the revolutionary concept of intellectual asset management (IAM) [which] is changing the way companies all over the world are doing business.’

It is therefore somewhat surprising that, over a decade later, IAM remains a relatively rarefied discipline, explicitly practised by only a small number of specialist service providers.  Indeed, the only private-practice firm of professional advisors which appears in the first ten Google search results for the exact phrase “intellectual asset management” is Watermark [the author’s employer, in the interests of full disclosure].  This perhaps reflects a fragmentation in terminology, as much as conservatism on the part of many traditional providers of IP legal services.

Yet the management practices of many of the world’s largest and most sophisticated owners, developers, commercialisers and monetisers of intellectual capital have advanced significantly since 2001.  Some of the best (or worst, depending on your point of view) examples of this are patent aggregators, such as Intellectual Ventures, RPX Corporation and Acacia Research, amongst others, which have developed a number of novel business models around the acquisition and monetisation of patents for both defensive and offensive purposes.  At the same time, Microsoft is rapidly gaining on IBM in its ability to generate licensing revenues from partners and competitors alike, while Apple is currently giving a number of its own competitors (most notably Samsung) an object lesson in IP strategy.

We have frequently recommended the original Edison in the Boardroom to clients and colleagues, both as an introduction for those new to IAM, and as a useful insight into the best practices of top companies for those with some IP management experience. However, we were becoming concerned that the examples and practices described in the book were somewhat dated in an increasingly fast-moving field.

 Read full article ► 

Tags: Book review, Intellectual Asset Management, Strategy

Apple v Android Part V: Open standards, IP strategy, Resolution?

The patent landscape maps in part four of this series showed that the key Android advocates – including Samsung and Motorola/Google – are massively superior to Apple in terms of the sheer numbers of patents in their portfolios.

But, as we explain in this fifth and final part, many of these patents are encumbered by licensing obligations arising from their relationship to industry standards.  While the scope of these obligations is yet to be fully tested in court – and may differ from country to country – it is already clear that such encumbrances can significantly complicate the deployment of patents for both offensive and defensive purposes.

With neither Apple nor any of its Android-supporting rivals having clearly established an upper hand, we can no doubt look forward to more strategic manoeuvring on all sides before any final resolution of the ongoing disputes.

Samsung’s FRAND dilemma

Samsung’s patent portfolio is by far the largest in the mobile communications space. It is common wisdom now that one justification for building a portfolio is to provide a strategic defence against infringement suits brought by competitors – a.k.a. the MAD (mutually-assured destruction) theory of patent stockpiling. However, the ongoing litigation with Apple is revealing a strategic weakness of Samsung’s portfolio, in the form of the company’s involvement in the setting of industry standards for mobile communications protocols and technology. Samsung has been extensively involved with the 3rd Generation Partnership Project (3GPP), which is responsible for maintaining and developing standards for mobile communications from GSM onwards. Over time, it has developed and contributed many technical solutions to the various challenges and problems encountered in the implementation of workable, robust and widely supported standards. The R&D effort involved in making such contributions is not insubstantial, but also not without reward.

 Read full article ► 

Tags: Apple-v-Samsung, Intellectual Asset Management, Smartphone wars

Apple v Android Part IV: The IP Landscape

We concluded Part III in this series with a chart showing the relative sizes of the relevant patent portfolios of some of the major players in the mobile marketplace.  This showed Apple to be substantially out-gunned by the likes of Samsung, Motorola and Microsoft, in terms of patent numbers.

But there is more to a patent portfolio than the sheer number of patents it contains.  It is also important to look at what the patents cover, since some will be strategically more valuable than others.  Of course, it is completely impractical to read nearly 60,000 patents to determine what each one of them is about.  Fortunately, there are visualisation tools, such as the ThemeScape mapping capabilities of the Thomson Innovation package, which allow us to get a view of the big picture, without the need to drill down into all the details.

Overview

The figures in the sections below show the results of patent landscape mapping based on the portfolios of mobile patents held by Samsung, Motorola, Microsoft, the Rockstar Bidco consortium, Apple, Oracle, HTC and Google, which were identified in the search described in Part III. 

The maps reveal the strengths and weaknesses of each company’s portfolio. In summary:

1. The starkest contrast is between Microsoft and Samsung, which dominate completely different regions of the landscape, reflecting their strengths in software and hardware respectively.
2. Google’s acquisition of Motorola Mobility will give its portfolio a profile that is very similar to Samsung’s, albeit on a smaller scale.
3. While Apple’s portfolio is smaller, it has significant concentrations of patents in the critical region between the Microsoft-dominated software zone and the hardware zones which are heavily populated by Samsung, Motorola and Nortel.

The strength of Apple’s portfolio therefore appears to lie in areas that are essential to the user experience, including touch-screen and display technologies, image and audio processing, and user interaction – literally, as well as in the virtual geography of the map, at the interface between software and hardware. This is certainly an area in which Apple has contributed significant innovation and may well represent a strategic sweet spot in the mobile device space.

 Read full article ► 

Tags: Apple-v-Samsung, Intellectual Asset Management, Smartphone wars

Apple v Android Part III: The IP Armoury

In the previous article in this series, we looked back at the struggle between Apple and Microsoft for ‘ownership’ of the desktop.  We argued that this was a confrontation between opposing ‘closed’ and ‘open’ models – not only of the software and hardware platforms, but also of the fundamental way in which the two companies do business.

There is no question that Microsoft was the clear winner, despite some of the uglier consequences of trying to support a huge range of different hardware and software configurations.  Yet despite this loss, Apple – and Steve Jobs – have persisted with the closed platform model.  So what did they learn from history?

 Read full article ► 

Tags: Apple-v-Samsung, Intellectual Asset Management, Smartphone wars

Apple v Android Part II: Old Rivals – Apple v Microsoft

In the first part of this series of articles we introduced the current state-of-play between Apple and its Android rivals, particularly Samsung. 

This is not the first time that Apple has engaged in litigation with a competitor over who would gain a dominant place in consumers’ lives.

We are all familiar with the sometimes bitter rivalry between Apple and Microsoft.  But it is worth looking back at history to see what it might tell us about the origins of Apple’s apparent great animosity towards Android.

Background – the struggle for control of the desktop

Apple is no stranger to litigation over IP rights – or to accusations of copying. In 1982 Apple filed a copyright complaint against Franklin Computer Corp, alleging that Franklin’s ACE 100 personal computer included unauthorised copies of the Apple II operating system and ROM. In those days the reach of copyright law in relation to computer software was unclear and it was only on appeal that Apple was vindicated, with the Court of Appeals for the Third Circuit ruling that executable object code, as well as human-readable source code, was protected by US copyright law.

 Read full article ► 

Tags: Apple-v-Samsung, Intellectual Asset Management, Smartphone wars

Apple v Android Part I: Shall We Play a Game?

Patentology recently contributed a long piece to IAM Magazine entitled ‘Apple vs Android – The Struggle for IP Supremacy in the Mobile Market’, which was published as the cover story of issue no. 52, March/April 2012.  We published an edited extract back in February as Apple vs Android – IP Supremacy and the Mobile Market, while some early results of the patent landscape mapping ultimately used in the article were previewed in How Apple Punches Above Its Weight in Smartphone Disputes in November 2011.

With issue no. 53 of IAM Magazine now on the shelves, we are free of our undertaking not to republish the full article.  We are therefore pleased to present the complete piece for readers of the Patentology blog.  Due to its length, we will be publishing it in five parts.

In this first part, we look at the present state of the complex relationship between Apple and Samsung: bitter rivals in the courts on one hand, multi-billion dollar supplier and customer on the other.

“Shall we play a game?”

In the 1983 film War Games a teenage computer whiz – played by a young Matthew Broderick – inadvertently sets the world on a path to Armageddon when he hacks into a top-secret military supercomputer and challenges it to a game of “Global Thermonuclear War”. Fortunately, the computer – named “Joshua” by its creator – is equipped with cutting-edge artificial intelligence, programmed to develop improved battle strategy by repeated simulation. When directed to play tic-tac-toe against itself, Joshua discovers that the game cannot be won by either player and, by extending the principle to the nuclear war scenarios that it has devised, learns the concepts of futility and mutually assured destruction (MAD). Disaster is averted and the world returns to the status quo of the Cold War standoff.

 Read full article ► 

Tags: Apple-v-Samsung, Intellectual Asset Management, Smartphone wars

Instagram, AOL … Are We Headed for an Intangible Meltdown?

‘Those who cannot remember the past are condemned to repeat it’ – George Santayana, Reason in Common Sense (1905)

In March 2000, Facebook co-founder Mark Zuckerberg was 15.  Instagram founders Keven Systrom and Mike Krieger were 16 and 14 respectively.  In the past week these three people – all still under 30 – have done a deal in which Zuckerberg’s company has acquired Systrom and Krieger’s for a cool US$1 billion.

At almost the same time, Microsoft has acquired 800 patents from AOL for just over US$1 billion.

These deals follow hot on the heels of last year’s acquisition of Motorola Mobility by Google for US$9.8 billion, and the purchase of 6000 former Nortel patents by the Rockstar Bidco consortium (Apple, Microsoft, RIM, EMC, Ericsson and Sony) for US$4.5 billion.

All of these deals have in common the fact that the entire valuation is based on intangible assets.  How do you put a price on a bundle of patents?  On a team of great employees?  On a loved brand?  Or on the future potential of a technology?

Are the recent valuations justified, or are we heading for another industry meltdown similar to the ‘dot-com’ bust of March 2000?  After all, the Zuckerbergs, Systroms and Kriegers of the world could be excused for failing to learn the lessons of history – they were little more than kids at the time!

 Read full article ► 

Tags: Economics, Intellectual Asset Management, Patents and society

Why Attacks on Yahoo! Over Facebook Lawsuit Are Unjustified

Last week, Yahoo! sued Facebook in a US Federal District Court in San Jose, alleging that the soon-to-be public social media giant is infringing ten Yahoo! patents relating to online advertising, privacy, Web customization, social networking, and messaging.  (See Yahoo Sues Facebook for Patent Infringement… at allthingsd.com.)

The reaction from users and pundits across the internet has been almost uniformly negative, although this is perhaps not surprising considering that Facebook is rapidly heading towards one billion users.  Many of those users no doubt view themselves as part of a huge Facebook online community, and an attack on the company is – in a way – an attack on that community.

The move was described by All Things Digital as ‘either the boldest gamble of its history or the most boneheaded’, blaming Yahoo!’s ‘aggressive’ turn on new CEO Scott Thompson. Ars Technica kindly described one of the patents as being ‘written in dense legalese’, suggesting that they are overly broad and that Yahoo! has broken ‘a tacit agreement among major software firms not to sue competitors for patent infringement’.  Ars has also provided a discussion of each one of the ten patents on which Yahoo! is relying.  Even TangibleIP – the blog run by international intellectual property strategy and consulting company ipVA – has provocatively referred to Yahoo! as ‘the new troll on the block’.

 Read full article ► 

Tags: Computer programs, Intellectual Asset Management, Patent litigation

Apple vs Android – IP Supremacy and the Mobile Market

The following is a heavily-edited extract from an article I wrote for IAM Magazine.  The original, entitled ‘Apple vs Android – The Struggle for IP Supremacy in the Mobile Market’ is the cover story of the current issue (no. 52, March/April 2012).

The full version is around three times as long, covering many aspects of the story – such as the history between Apple and Microsoft, and between Apple and Samsung – in much greater detail.  It also includes images and further discussion of patent themescape maps similar to those presented in Patentology’s most popular ever article, How Apple Punches Above Its Weight in Smartphone Disputes.

IAM Magazine is a subscription product, however a free trial is available upon registration.  There is also much on the website that can be accessed permanently once you have registered.  It is a great resource, and highly recommended!

 
Steve Jobs had already become a multi-millionaire by the age of 25, when Apple Computer, Inc (as it then was) went public in December 1980 on the back of having effectively launched the personal computer revolution with the Apple II. In January 1983, Apple launched the Lisa – featuring a graphical user interface (GUI) based on a ‘desktop’ metaphor – and though this machine would have limited commercial success, due to its high price-tag, Jobs was already leading the team at Apple which was working on something called the ‘Macintosh project’. Of course, the resulting product would go on, once again, to revolutionise the way humans interacted with computers.

Jobs was a child of the cold war, who grew up in the sixties and seventies and was strongly influenced by Zen Buddhism (he went on a spiritual journey to India in 1974). But he had, by all accounts, a complex personality, and he would probably have seen no irony or contradiction in his angry pronouncement to his biographer, Walter Isaacson, in 2010 that he was willing to ‘go thermonuclear war’ on Google’s Android operating system, and ‘to spend every penny of Apple’s $40 billion in the bank’, if necessary.

Opening Moves

Apple’s first-strike against Android was a complaint, filed in March 2010 in the US District Court for the District of Delaware and the US International Trade Commission (ITC), alleging infringement of 20 Apple patents – relating to the iPhone’s user interface, underlying architecture and hardware – by Taiwanese smart phone manufacturer HTC Corporation.

Since then, the face-off between Apple and its best-performing Android-based competitors has escalated. By December 2010 a further dispute with Motorola Mobility, Inc had coalesced into litigation over infringement and validity of 24 Apple patents, and 18 Motorola patents, across the ITC and the US District Courts of Delaware, the Western District of Wisconsin and the Southern District of Florida.

 Read full article ► 

Tags: Apple-v-Samsung, Intellectual Asset Management, Smartphone wars

Australian Patent Attorneys Accused of ‘Crippling’ Entrepreneurs

An article appeared this week on the news and information website startupsmart.com.au under the by-line of Michelle Hammond, entitled ‘Patent attorneys under fire over “crippling” fees’.

The article opens with the allegation that:

Australia’s patent attorneys have come under attack for charging too much for patent filing, with claims that some attorneys charge as much as $150,000 to file patents overseas.

Before we turn to the substantive issues raised by the article, we note that this opening raises (at least) the questions of who has launched this ‘attack’, which attorneys are charging ‘as much as $150,000’, and what exactly are these fees covering?

The answer to the first question is pretty clear from the remainder of the article, which shows all the hallmarks of modern media release ‘journalism’.  The source of this particular story is the foreign filing service provider inovia, which is just one of a number of such companies that have emerged in recent times to compete directly with ‘traditional’ patent attorneys in the specific area of filing foreign patent applications, and particularly handling PCT national phase entry, European patent validation and patent translations.

The answers to the second and third questions are far less clear, and the StartupSmart article really serves only to muddy the waters further with claims that are in dire need of some sanity-checking.

In this article, we will look at the differences between the filing services provided by patent attorney firms, and those of companies like inovia.  We will also address some of the other assertions in the StartupSmart article.  And, despite our obvious potential for self-interest in these matters, we will endeavour to do so in a reasonably fair and balanced manner!

 Read full article ► 

Tags: Intellectual Asset Management, International treaties, Patent attorney profession, Patent filing, PCT

How Apple Punches Above Its Weight in Smartphone Disputes

We have written previously on this blog about ‘patent analytics’, patent ‘landscapes’ and ‘theme maps’ (see IP Australia on Collision Course with Private Practitioners?).  Tools for mining and analysing patent data, i.e. the contents of the databases maintained by national and international patent authorities, are provided (at not insignificant cost) by companies such as Thomson Reuters, with its Thomson Innovation product.

Thomson’s ThemeScape maps employ a visual analogy with geographic contour maps, to present large quantities of complex information as a two-dimensional ‘landscape’.  As part of some ongoing research for an article likely to be published in the coming months in IAM Magazine, we have been working with our colleagues in the Information Services team at Watermark Intellectual Asset Management on some ThemeScape mapping relevant to the ongoing disputes in the ‘smartphone/tablet’ space involving companies such as Apple, Samsung, Microsoft, Google and Motorola.  The preliminary results of this research are extremely interesting, so we thought we would share a few insights as a taste of what is to come in the final article.

In essence, what the results show so far is that the mobile technology patent landscape is dominated on the ‘hardware’ side by the major traditional manufacturers, such as Samsung and Motorola, and on the ‘software’ side by Microsoft.  And while Apple’s portfolio is small by comparison, its recent successes in various courts around the world are strong evidence that the patents Apple does hold are of particular strategic significance.

 Read full article ► 

Tags: Apple-v-Samsung, Intellectual Asset Management, Patent analytics, Patent litigation, Smartphone wars

IP Australia Director General 'Talks Up' Economic Recovery

According to a story posted on ABC News Online, entitled Business confidence boosts patent applications, new filings 'for patents on inventions ... for Australian businesses have increased for the first time since the global financial crisis', going on to claim that 'patent applications protecting intellectual property are creeping back to levels recorded three years ago, reaching 26,473 in 2010-11.'

We are not sure that there is a great deal of evidence for this, although it is only natural for IP Australia, as the national IP rights-granting authority, to wish to put a positive spin on the numbers as we move into a new financial year.

IP Australia Director General Philip Noonan is quoted as saying:

"It's a very welcome sign that patent applications are coming back on line, ... [b]ecause intellectual property is really the cornerstone of new industries in the future, and the sustainable source of jobs in the future."

...

"When the global financial crisis hit, and funding is withdrawn, but it is a little while before that flows through to effect the number of patents," he said.

"So the pattern for patents has been that applications were down more slowly and are only just starting back up."

We wish that all of this positivity was entirely convincing, and that we could believe that everything is looking up.  But, as we have noted before (most recently in The Fate of Australian Industries for 2011-12), there are plenty of signs that the current relative strength of the Australian economy (and currency) continues to be based more on the exploitation of natural resources than it is upon investment in innovation.

 Read full article ► 

Tags: Australia, Innovation policy, Intellectual Asset Management, News, Patent Office

IP Australia on Collision Course with Private Practitioners?

Last week the Director General of IP Australia, Philip Noonan, gave a presentation at the conference 'Perspectives on Metrics-Based Research Evaluation – Two Years On', held at the University of Queensland.  The presentation was entitled The hidden value of patent information: What can universities learn?  In it, Mr Noonan described the features and benefits of ‘patent analytics’, and set out IP Australia’s plans for a ‘National Patent Analytics Pilot’.

A copy of the presentation slides is available from the conference website.  Mr Noonan’s comments have also been reported in The Australian newspaper.

IP Australia obviously subscribes to commercial patent information services to support its patent searching and examination activities.  We have been hearing whispers for some time that it would like to extract additional value (and revenue) from these subscriptions by providing additional intelligence services, such as patent analytics.  The National Patent Analytics Pilot appears to be an example of such a service.

However, this clearly raises questions about the proper role of a government authority in offering ‘value-added’ services that potentially compete with private enterprise providers.  IP Australia’s core task is to administer statutes (e.g. the Patents Act 1990, Trade Marks Act 1995 and Designs Act 2003) relating to IP, and to grant exclusive IP rights for defined periods of time in accordance with those statutes.  It also has responsibilities in shaping IP policy. 

It is not at all clear, however, that IP Australia should be getting involved in providing services that are already available from commercial service providers on a competitive basis.  And if it is going to become a player in this market, the existing providers may have a legitimate concern as to whether IP Australia’s services will be offered on a truly competitive basis, considering that it already has essentially all of the resources and infrastructure necessary – funded from its core activities – to provide these services.

In this article, we will therefore delve more deeply into ‘patent analytics’, and the potential concerns in relation to IP Australia’s proposed pilot program and future activities.

 Read full article ► 

Tags: Australia, Intellectual Asset Management, Patent analytics, Patent Office