Clients hate paying ‘by the fry’.

Why do people love the pricing of Happy Meals?  Because they know what they are getting for one fixed price.

When it comes to IP prosecution the same principle applies: clients love fixed prices and they hate to be nickeled & dimed.  No one wants to pay for their french fries one fry at a time, and no one wants to pay for each office action, reminder email, reporting letter, or status update no matter how trivial. This is especially true for foreign prosecution of applications that are substantially similar to the lead originating application (patent or trademark) at home.

Great service means giving clients great work at the price they expected all wrapped in a very user friendly delivery.

For most clients,

• price certainty is more important than rock bottom prices, and
• ‘many tiny bills’ are extremely annoying.

Price certainty is especially important for good quality clients.  Good clients know that service costs money.  They do not expect free advice or work, and they know that quality costs.  However, good clients also tend to be organized and diligent.  That means that they expect to the know the cost of something upfront and likely have shared that estimate with other stakeholders (for instance, with the CFO of their organization).  Accordingly, good clients are particularly likely to be frustrated by budget over-runs.

Also, regardless of the total cost of something, you should be very wary of a snowstorm of small unexpected bills.  In my experience, a blizzard of small bills, no matter how reasonable the total cost, drives clients crazy.  If you are not careful, with foreign patent filings you can be billed by your associate for reporting every letter that they receive from their local patent office. Clients enjoy this about as much as they enjoy buying their french fries “one fry at a time”. It is extremely annoying and a great way to drive clients away.

The solution is to bill flat “block” fees for a given amount of work that ensures you have sufficient compensation to provide great service through the whole process.  That way, all of the little noise goes away, and you and your client and your associate can focus on what really matters.

Neil

The post What Happy Meals teach us about keeping IP clients happy. appeared first on Miltons IP.

I was recently told by a British colleague that Canadian patents were pricey. I was stunned, and did not respond properly at all. After some reflection, I put together this little video to say now what I should have said then.

The handout is:

If you insist on knowing more, here is an eBook:

Filing Patents in Canada: A Practical Guide

And our website exclusively about filing into Canada is:

Canadian Patents

The post Are Canadian patents pricey? appeared first on Miltons IP.

I always thought that it “took two to tango”. However, a recent US Federal Circuit decision disagrees: in Promega v. LifeTech the Court held that you could induce yourself to infringe by shipping from yourself in Texas to yourself in the UK.

Obviously, I think that decision is bizarre and probably not something that you want to hang your hat on.

However, where or not it is possible to induce yourself, what Promega v. LifeTech really illustrates is the importance of filing patents in major markets – as your competitors likely will have operations outside the US and can evade your US patent unless you file where they are. A patent governs the right to ‘make, use or sell’ the invention in a jurisdiction, and if any of those can happen at scale somewhere outside the US, then you need to think seriously about filing there.

Neil

The post Why file abroad appeared first on Miltons IP.

for foreign filings

It is crucial to ensure that all stakeholders have shared expectations in advance for foreign filings.
Foreign filings work if they flow smoothly, and there were shared expectations about:

• substantive issues (claims that matter, likely to be allowed)
• timing
• costs

Getting everyone on the same page starts with clear communications. Our little eBook is an example of a resource that you can use to start the dialogue.

Any and all suggestions for improvement warmly received.

Neil

The post Setting expectations appeared first on Miltons IP.

When you file patents outside the US that correspond to the patents you are already filing in the US you can add significant value to the applicant’s portfolio very cost-effectively. The applicant gains rights in large markets that may be as valuable if not more valuable as the rights in the US, depending on the product, competitors, and market forces (see this post for an example of “why you should file abroad“).

This increased geographic scope of patents can also be a very effective way to add value to your practice – you are adding value to the applicants’ portfolio cost-effectively, and this is something you can and should be rewarded for doing (whether you are inside or outside counsel).

However, not all foreign filings go smoothly. The most common problem is what I call the “death of 1,000 paper cuts”. Foreign filings rarely lurch sideways in one big mess. Instead, if they are not properly planned and implemented, it is the slow, steady accumulation of little things that must be attended to – often late, and in a rush – that gradually create client frustration. Each one of these late and unexpected little steps usually is accompanied by another invoice. And that, ultimately, puts the whole project behind schedule and over budget.

In subsequent posts I will talk about how to avoid this problem. In a nutshell, the solution is to ensure that all stakeholders have shared expectations (about cost, timing, and substantive success), that there is a good plan for execution, and that the right people put the right amount of attention into implementing the plan efficiently and effectively. Foreign filings are not a black art – pulling them off properly just requires a little know-how, some planning, and timely attention to detail.

As always, I look forward to your comments.

Neil

Free eBook

Foreign Filings

Prepared in cooperation with Dennemeyer.

Click to download now.

The post How foreign filings can go wrong appeared first on Miltons IP.

Want to avoid being sued?  Want to be a foreign filing hero?

Make sure the chain of title is correct.

In particular, we strongly recommend as best practices that you secure assignments from the inventor to the applicant:

• As soon as possible, and ideally before the first application (eg. provisional) is filed;
• Signed by both assignor and assignee;
• Properly dated;
• Have the signatures witnessed, and ideally notarized.

Following these simple steps will avoid a lot of time, cost, and grief later in prosecution.

As always, we welcome your comments and questions.

Neil

Free eBook

Foreign Filings

Prepared in cooperation with Dennemeyer.

Click to download now.

The post Assignments appeared first on Miltons IP.

Investing is a low-barrier to entry, poorly-regulated business so it should come as no surprise that many fund managers say crazy things when talking about their historic returns. Similarly, retain and angel investors prefer to glorify their returns even if it does not benefit them financially.

Recently, I have heard a number of investors refer to their ‘cash-on-cash’ rate of return. When this is specified without any reference to “the time period” it is utterly meaningless, and likely deliberately misleading. Investing is about ‘rate of return over time’. If you fail to mention the time period, you are talking gibberish, and trying to mislead. A very common retail example of the same behaviour is people talking about how much they have made owning their own home, but without any reference to the duration of the investment or its annualized real rate of return (after inflation).

One of the most significant trends of the past generation has been the ‘democratization of capitalism’. What I mean by that is that we are all, by necessity, required to try to ‘make money from money’ (which is the essence of capitalism). We are all investors now. Ands everyone has much more stake than ever before in a) saving, and b) investing these savings successfully, for retirement – and all taxpayers, as guarantor of various public sector pension plans, also have a much higher stake in understanding the liabilities that flow from weak investing returns. Sadly, the financial literacy of most people – including of most people who are nominally “investors” – has not kept pace with this transformation. We need the financial equivalent of mandatory high school – a mass education program that improves financial literacy among all adults.

Neil

The post Stupid things investors say appeared first on Miltons IP.

Here are some fundamental truths:

• Patents are not self-enforcing, nor does the state enforce your patent rights;
• A patent is nothing more than a call option to sue, and unless the patent owner enforces its rights, a patent is worthless;
• Enforcing patents is hard and requires expertise, resources, tenacity, and capital;
• No business can be good at everything; every business needs to focus on a few core competencies; and,
• Very few businesses have expertise in patent enforcement.

Accordingly, as long as we have patents, it is inevitable that we are going to have businesses whose core competency is in patent enforcement.

Moreover, for additional reasons – such as ‘reputation management’ – entities that produce a lot of patents (like universities and research labs), have a lot to gain by outsourcing the dirty work of enforcing their patents to third parties.

So it is well past time that we got past calling patent licensing and patent assertion entities nasty names, and learned to love our favorite trolls.

Neil

The post Patent trolls are here to stay appeared first on Miltons IP.

We face a crisis of ignorance about intellectual property – seriously, more people know less about IP than any other core business discipline. IP is not the be-all or end-all of business. Lots of other disciplines like marketing, sales, finance and HR are more important for more businesses than IP. But the knowledge gap in C-suites between what folks do know and what they should know is greater, in my view, for IP than any other core discipline of business and that is why I have devoted so much energy to trying to explain the basics of IP to people.

That is why it drives me bonkers when people who should know much better say stupid, deliberately misleading things about patents in order to lobby for their pet position. In this rant, I talk about some recent foolishness from the new CEO of AbbVie Canada, who happens to be a Frenchman. I am sure that his PR firm was delighted to get his speech featured in the Globe & Mail, but shame on him and shame on the Globe for mindlessly repeating drivel. Put charitably, if this came out of a four-legged animal, it would be fertilizer. Here is the article in the Globe..

Here is the key point: patent law makes it possible to ‘invent anywhere, and patent everywhere’. Whatever pharma companies may think about the scope of Canadian patent protection, it has no logical nexus to whether or not they conduct pharma R&D in Canada: none.

Sadly, there are many more examples of this self-interested misinformation about IP. In Rants to follow, I will try to highlight some choice idiocy from Google and others.

The post Misinforming people about patents appeared first on Miltons IP.

The CEO of MaRS Discovery District (an incubator in downtown Toronto) is paid an astonishing $500,000 plus pension and benefits.

This is unconscionable. It is an obscene amount of money to pay for a position that is a cross between a glorified property manager and event planner role.

Worst of all is the message that this sort of compensation sends to the very community MaRS is meant to encourage. When we pay ridiculous salaries to people in the quasi public sector (like MaRS, Ornge, hospitals, and public utilities), which are out of line with compensation in either the true public sector or the private sector, we send a clear message to entrepreneurs that they are idiots.

Clearly, the economically wise choice for anyone with leadership potential is to shun entrepreneurship and instead to pursue a career in the quasi-public sector: risk-free, high reward, easy jobs abound!

That’s my rant – I look forward to your comments.

Neil

The post Salaries that are out of this world – from MaRS really. appeared first on Miltons IP.