Saturday, May 28, 2016
Fun with Patents : The irreverent guide for the investor, the entrepeneur and the inventory by Kfir Luzzatto
I am none of the above (except for having a Ph.D. and being occassionally irreverent). That means to say, that not only am I not a Kfir, a Luzzatto or a new book, but I am also not an investor, entrepeneur or inventor so clearly I am not the target audience.
The book has a prominent disclaimer that it is not advice and for specific cases, the reader should consult with a patent attorney. Like other patent attorneys in private practice, I regularly give advice, sometimes gratis and sometimes for significant consultancy fees, to investors, entrepreneurs and inventors so am familiar with the target audience, and think that reading a book like this would be of immense value to them, whilst agreeing wholeheartedly with Kfir’s disclaimer that the book is not a substitute for specific advice and the reader should consult with a qualified patent attorney on specific matters.
What I can do, is compare the non-advice that Kfir offers with that which I dispense to a similar audience. In this regard I have not found any statements in the book that I disagree with. The book is very readable and is packed with good advice based on the accumulated experience of a long career. Although the chapter order is not a conventional one, there is an index at the back that may help when referring to a topic again.
Kfir emphasizes the difference between being an inventor and owning a patent, and notes the importance of accurately determining the inventors, particularly in the US. He warns against filing insufficient disclosures in provisional applications and expecting to obtain a priority date for that not taught therein. He also warns against the inventor then talking about his invention wrongly assuming that they are protected. All this advice is correct and good. Luckily for Kfir, myself and other practitioners, the intended audience probably won’t read it, or will decide that the advice does not apply to them, and so there is likely to be plenty of work in trying to correct the self-inflicted damage that clients cause themselves by seeking professional advice too late.
Kfir is descended from Renaissance men and I suspect likes to see and present himself as one. The book is resplendent with quotations from authors in different fields and gives the impression that Kfir is well read, or at least has access to good reference books. I particularly enjoyed the quote from the Ramchal, Kfir’s illustrious ancestor. Kfir describes himself as of the male persuasion, thereby justifying writing in the masculine instead of the tiresome he/she. However, he then referred to sitting around on our fannies, which to this British ear, seemed totally inappropriate. Nevertheless, though informal by intent, and with the occasional odd grammatical error, the book is generally well written and makes an enjoyable read.
The book is somewhat similar to a volume he brought out in Hebrew a decade ago. That book was called “The World of Patents” and was based on a weekly column he had in Globes, one of Israel’s business newspapers. As Kfir himself mentions, each chapter is self-standing. This is not a merely a rework and translation of the earlier book as a lot has changed over the past decade. nevertheless, most chapters are fairly brief. This may create a problem in that the chapters are not comprehensive, and even after reading the entire book, the reader can only know about what is included and not about what is left out. For example, there is a chapter that describes various types of patents. It starts with legal definitions, such as provisional applications, PCT international applications, patents for devices and patents for processes, patents of addition, and continuations. Then it mentions multi-disciplinary patents that may require more than one patent attorney to draft and that this can lead to tension due to different approaches. This is certainly true, but it is not a type of patent in the same sense as the others. The chapter then goes on to discuss petty patents and designs, explaining that designs are not patents. There is no clear statement to the effect that aesthetic designs are called design patents by the USPTO. Plant patents are also not mentioned.
One of the early chapters discusses obviousness and comes to the conclusion that different patent offices around the world come to remarkably similar standards with regards to obviousness. The term obviousness is used interchangeably with inventive step. Certainly, and Kfir himself discusses in later chapters, the allowed claims in different jurisdictions may be different. so here is the criticism. The chapter precedes the one that mentions that a patent has to be novel and useful as well as inventive. There is no distinction made between the US concept of obviousness and the European concept of inventive step. The two are very similar in practice, but are based on different underlining philosophies that go a long way to explain the difference in practice between the different authorities.
Sometimes, I disagrees to things intimated rather than spelled out. For example, when discussing IP managers, Kfir explains the type that is not good and then gives a list of pointers to be wary of. Kfir warns against the manager who finds ways to miraculously cut costs, and piously plagiarizes Milton Friedman to inform us that in patents there is no such thing as a free lunch. True, we are only warned to look into this carefully. Nevertheless, looking back over the past few years, there have been various IP developments that may save costs. The patent prosecution highways PPH and additional countries offering PCT international search reports, the changes in American patent law due to the American Invents Act have made first filing in local jurisdiction rather than filing provisional applications more popular, and more applicants are filing chapter 2 of the PCT, electing for preliminary examination. Globalization affects the patent industry and some tasks can be off-shored to countries with highly qualified lower waged staff. Some patents and designs that are being maintained should not be. I think that a good manager taking over a patent portfolio in a company that does things one way for historic reasons, may well make savings. I don’t think Kfir would disagree. He also correctly warns against advisers with a one-size-fits-all strategy.
Sometimes Kfir is certainly correct, like when he notes that just because one hs been awarded a patent, that does not mean that one is not infringing one or more competitor’s patents. That said, a US litigator once noted that it is worth using the argument that your client was awarded a patent for his product, since although not relevant to the question of infringement, both juries and judges make this mistake. Sometimes Kfir gives specific advice like the importance of reviewing the art before bringing a product to market to make sure that one is not infringing competitor’s products. He does not, however, mention the triple damages in the US for intentional infringement. So despite advising them, I suspect that in some scenarios he would not advise clients to conduct extensive freedom to operate searches as it may be easier to deal with infringing issues if and when they come up. However, no book is comprehensive and this one does not even claim to be.
Taken as a whole, this is a useful book for those intending of using patents to read. As Professor Jeremy Phillips points out in the introduction, the book is not a guide to drafting and filing a patent without professional assistance, which he compares to surgically removing one’s appendix oneself, instead of checking into a hospital.