Rainmaking - It's All About Networking

Here are some rainmaking ideas for patent practitioners who are starting out as solo practitioners or joining a new firm. Rainmaking is all about bringing in the business, that is, paying the rent. More than anything, business development is about being known and recognized.

Networking opportunities you might consider:

LinkedIn - a business networking portal where you enter details about yourself and build a network of connections
<http://www.linkedin.com/home?trk=logo>

LinkedIn Questions and Answers, where you respond to queries. Here is the IP section:
<http://www.linkedin.com/answers/browse/law-legal/corporate-law/intellectual-property/LAW_COR_IPP>

Law Guru IP discussion Forum:
<http://www.lawguru.com/cgi/bbs/mesg.cgi?l=all&c=16>

Create a blog and establish yourself as a pundit in some IP area:
<http://www.blogger.com/start>

Respond to IP related blog entries:
<http://patentlaw.typepad.com/patent/>

<http://www.legalsanity.com/>

Patent Law Practice Mailing List:
<http://groups.yahoo.com/group/PatentLawPractice/join%7C%5D%5D%5B%5Bhttp://groups.yahoo.com/group/PatentLawPractice/join>

Troll the Craigslist Legal Services section:
<http://www.craigslist.org/lgs/>

Start your own newsletter.

Create a seminar for professionals. Teach them.

Publish a general interest article in local newpaper, IP trade magazine, Bar Assoc., etc.

Get a spot on local PBS radio station or another, talk about IP law, trolls, answer call ins, whatever.

Sponsor a local sports little league team, charity event, etc.

Speak at an IEEE, ACM, etc. local section meeting.

Do some related pro bono work for a charity, United Way, etc.

See also:
<http://www.abanet.org/genpractice/magazine/2003/jul-aug/stevens.html>

<http://www.coachingforchange.com/pub07.html>

Post articles you author on your web site. Make them a regular feature with real advice.

Meet with clients, prospects, on their turf, not yours.

Leverage LexisNexis:
<http://www.lexisnexis.com/associates/career/career0705.asp>

Read this book:
<http://www.rainmakingmadesimple.com/endorsements.htm>

Hire a legal marketing personal consultant:
<http://www.lawmarketing.com/pages/articles.asp?Action=Article&ArticleCategoryID=7&ArticleID=520>

<http://legalease.blogs.com/> - one of the best!

Refine your elevator pitch, e.g.,
"I’m John Smith, an attorney helping individuals and companies protect their intellectual property with an emphasis on valuing my clients assets and making the process as worry-free for all involved." [Note that no multi-name law firm was mentioned here. Stick to what people can remember!]

And finally, the ultimate marketing tool--write a book!

Patent Quality Metrics

Over at the IPO Assoc. website, President Marc Adler proposes some "new" patent quality metrics.

For patent applications, Adler suggests:

• "Did the applicant conduct a thorough prior art search before the application was filed?
• Did the applicant identify the single closest prior art reference in the information disclosure statement as compared to the reference being first cited and applied by the USPTO examiner?
• Was the technical advance over the closest prior art clearly demonstrated in the application or did such a showing have to be submitted by declaration?
• Were the initially filed claims allowed as filed or amended during prosecution?
• Did the specification contain definitions of terms used in the claims?
• Was there internal consistency between the terms and ranges presented in the specification and those in the claims?"

Likewise, for post grant metrics:

• "Did the granted patent claims cover a commercial product/process?
• How successful has the covered product been in the marketplace?
• Did the patent claims that issued have a fatal flaw and not effectively preclude competitive alternatives?
• Have non-infringing alternative products been introduced?
• How many and when?
• Has the patent been cited by others having a competitive product?
• Have others with competitive products received patents?
• How long did it take for others to design around the patent?
• Did the patent covering the product withstand or fail a validity test, as by opposition or litigation?
• Was new art cited during the opposition or validity challenge to invalidate the patent?
• Were the claims construed as applicant argued or were the claims construed against patentees?"

Most patent practitioners have been down this rocky road before. I applaud Mr. Adler's renewed call to define useful metrics. But I wonder if it is to anyone's advantage, especially a large company, to actually make public the types of quality metrics used internally. The old adage, "hold on to the sand that makes the pearl", seems to be a prudent strategy for companies having the most to lose in a patent skirmish.

On the heels of Adler's call for better metrics, The Patent Board has released their top ten list of patent innovators in telecommunications. For the Information Technology industry The Patent Board's list can be viewed here. You may recall that the Board is working with the Wall Street Journal to create patent and technology strength metrics as part of the Journal's financial coverage.

I would be interested in your comments and suggestions for patent quality metrics. If you don't care to leave them here in public, feel free to email them to isoquanticATSYMBOLcox.net. Anyone sending me suggestions will receive my compiled list once the dust has settled.

USPTO Patent Performance in 2006

Source: <http://www.uspto.gov/web/offices/com/speeches/06-73.htm>

"Patent examiners completed 332,000 patent applications in 2006, the largest number ever, while achieving the lowest patent allowance error rate -- 3.5% -- in over 20 years. At 54%, the patent allowance rate was also the lowest on record. [See Figure below] Patent allowance rate is the percentage of applications reviewed by examiners that are approved."

"The USPTO received in excess of 440,000 patent applications in 2006, a record number. To help meet the demand, the agency hired a record 1,218 patent examiners, exceeding its goal by more than 200 people. To support this dramatic hiring increase, the USPTO replaced its one-on-one training model with a university approach for new hires. This allowed the agency to deliver comprehensive training to new examiners, while more experienced examiners and supervisors focused on quality examination. The agency will continue to hire over 1,000 patent examiners each year for the next five years. Even so, the volume of applications will continue to outpace the agency's capacity to examine them. USPTO continues to look for ways, beyond hiring, to reduce the backlog, while maintaining examination quality. "

Working at home: "The first 500 patent examiners began working from home four days a week, using a hoteling program to book office space the one day a week they are in the office. The agency expects that an additional 500 examiners will be added to those already working from home each year for at least the next five years."

From the numbers above, we see that the USPTO is receiving more patent applications than they are completing, i.e., the USPTO is completing one application for every 1.32 applications received. From 1997 to 2006, the number of patent applications being filed have increased by 87 percent. In 2006, the backlog of patent applications exceeded 700,000! This backlog increased the USPTO pendency (see figure below) for taking action on the submitted application.

As shown in the Figure above, USPTO first action pendency is now exceeding 22 months. Average first action pendency measures the average time in months from filing until an examiner’s initial determination is made of the patentability of an invention. Indeed, some business method patent applications have taken over ten years before issuance!

Day in The Life of a Patent Analyst

What does a person who works with intellectual property and is not an attorney do day to day? I work as a wireless patent forensic specialist. So what exactly does that mean?

Briefly, wireless technical intellectual property (IP) forensic analysis comprises the following activities: validity, invalidity, infringement, non-infringement, valuation, assertion targeting, acquisition due diligence, prior-art review, claim charts, Markman ruling assessment, Rule 11 preparation, claim construction, application ghost-writing, licensing carve-out language, and more.

More specifically the services I provide are as follows:

* Provide technical product insight to legal counsel for the protection of IP assets; serve as the technical liaison with outside law firms, for filing or protection in litigation, oppositions, and patent interferences.

* Participate / assist in worldwide patent application preparation and prosecution.

* Assist in preparation and prosecution patent applications before the USPTO.

* Review and conduct patent searches, and prior art searches for patents involving semiconductor technology and other technology related patents.

* Assist in the legal and factual research and, review and edit pleadings, applications and other technical and legal documents in connection with a variety of intellectual property issues.

* Assist in procuring rights to technology and participate in due diligence reviews.

* Assist in managing licensed-in filings from acquired companies; coordinate with licensor's attorneys to secure patents.

* Help analyze patents and prepare infringement, validity, and freedom-to-operate opinions, including working with outside counsel.

*Assist in developing clients' strategy on how they can develop an area, strengthen patents and work around roadblocks in patents.

* Counsel clients through participation in various levels of R&D and other cross-functional team meetings.

* Identify research subject to filing of patent applications.

* Conduct educational seminars with internal staff on technology and intellectual property.

* Help review agreements such as material transfer agreements.

As inferred, my daily life is basically a solitary activity using my resources gained from over two decades of experience in the wireless telecommunications industry. In a subsequent blog entry I will take a deeper dive showing the reader how I go about dissecting a patent for use by intellectual property attorneys use in offensive or defensive matters.