Intellectual Property

3 More Questions For A Patent Podcast Pro (Part II)

Considering its importance to today's IP-driven economy, it is surprising that there is not more coverage of USPTO goings-on.

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patent lawLast month, I presented Part I of my written interview with patent attorney and host of Clause 8, Eli Mazour. That column presented his answer to the first of my three questions and focused on the evolution of the Clause 8 podcast series. What follows are Eli’s answers to my remaining two questions. As usual, I have added some brief commentary to his answers below, but have otherwise presented his answers as he provided them.

Gaston Kroub: What has been notable about the early days of the Voice of IP newsletter?

Eli Mazour: I have ended up doing much more original reporting about the United States Patent and Trademark Office (USPTO) than I expected. My most popular newsletter, so far, solved the mystery surrounding a “Welcome Letter” issued by the USPTO. In the process, I talked to a USPTO official and broke some other news related to the USPTO’s current efforts. Other popular ones broke news of soaring rates of Section 101 rejections at the USPTO and USPTO’s plans for new Section 101 guidance. I ended up writing about these topics because curious patent practitioners reached out and I decided to look further into the topics.

The USPTO is a $4.5 billion government agency that wields enormous power. As far as I know, except for IPWatchdog breaking big USPTO news and Julie Burke on LinkedIn, there’s no one constantly looking into what the agency is up to. So, although the USPTO is full of well-meaning people, it’s used to operating mostly below the radar. I think there’s a great appetite from the IP community to know more about what is happening with the USPTO and why. I’m not sure if I’ll be able to keep breaking news about the USPTO, but I want to continue to help explain what the USPTO is currently doing, shed light on what it’s likely to do in the future, and provide practical tips for dealing with those developments along the way.

GK: Eli’s reporting on the scuttlebutt out of the USPTO continues the storied tradition of this site’s predecessor, Underneath Their Robes, David Lat’s insider look at the judiciary. Considering its importance to today’s IP-driven economy, it is surprising that there is not more coverage of USPTO goings-on. At the same time, it is great that the Voice of IP has managed to fill some of the void, which, coupled with Eli’s podcasting prowess, allows readers and listeners to learn things about the IP ecosystem that are simply unavailable elsewhere. I for one am looking forward to more Voice of IP scoops on under-reported on IP developments going forward.

GK: What excites you most about your return to Biglaw practice?

EM: I’m most excited about joining a team at Foley that believes in the value of patents and helping clients obtain patents in the best possible way. It has also been really cool to meet and learn from other Foley attorneys from very different practice areas.

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To be honest, I never thought I’d move back to Biglaw before my now colleague Ngai Zhang asked me to join his team at Foley. However, there’s a few reasons I’m particularly excited about making this switch at this moment in time.

First, over the last few seasons of Clause 8, I’ve noticed the best chief IP and patent counsel taking a step back and asking fundamental questions about their companies’ patent strategies. I think the impact of the great recession coinciding with the weakening of America’s patent system caused many tech companies to focus on cutting fees while continuing to pursue the same large number of patents. To some extent, their thinking was that patents aren’t important but they’ll have a huge stack in case they ever need to rely on them. However, when they ended up being involved in some cross-licensing negotiation, litigation, or tricky deal, they discovered it doesn’t quite work that way. Huge stacks of likely worthless patents not tied to any implemented technology aren’t any better in those situations than small stacks of patents. If anything, those companies wasted more engineers’ time and company resources obtaining and maintaining those patents. At the same time, even with all the changes to America’s patent system, it’s still possible to build valuable, relatively reliable patent portfolios.

The savviest in-house patent counsel observed all of that and concluded that obtaining patents just for the sake of obtaining patents is the wrong approach. If the objective is to save money, the best way to do that is not to file patent applications altogether. However, if the objective is to contribute to a company’s success, then the company needs a clear vision about the role of patents for the company. That seems to be leading many of them to conclude that if their companies will be making the significant investment internally and externally to obtain patents, then they should focus on building valuable patent portfolios that the company can hopefully rely upon as expected.

So, I believe there’s a real appetite for innovative patent prosecution counsel that knows the most effective approach to achieve that overall strategy. I think that can be done at any sized firm but fits well within a firm driven by delivering the best possible outcomes for sophisticated business clients instead of just churning out patents.

Second, I’m excited about how advancements in automation, AI, and other technologies will increasingly make it possible to efficiently provide the same types of legal services at any sized firm. I’ve previously enjoyed helping develop and implement such systems. However, I do think there’s a risk of sacrificing quality by prioritizing relying on those types of technologies purely for time savings instead of focusing on leveraging the technology to provide even better results. I think the latter really does have to be part of the DNA of a patent prosecution practice to sustain that focus over time.

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I’m also looking forward to helping diverse clients in a more holistic way. For example, I’ve loved providing guidance throughout the years about navigating and impacting patent policy developments at the USPTO, in Congress, and other parts of government. I’m excited about the possibility of incorporating that as a more regular part of my practice.

GK: As Eli’s answer demonstrates, Biglaw firms continue to offer a compelling potential home for forward-thinking and client-focused patent attorneys. As with anything, timing is of paramount importance when considering a career move, so it’s great to see that Foley and Eli were able to sync up at a point where Eli’s skill set can be put to optimal use in terms of providing strategic patent advice to Foley’s existing and prospective client base. It will be exciting to see this new partnership in action over the coming years.

My thanks to Eli for the insights and cooperation, and I wish him continued success and fulfillment with his return to Biglaw and the Voice of IP newsletter. As I have said before, it is always a privilege to hear from an established IP personality, especially one with such a big role to play in shaping today’s discourse around patent issues. I am always open to conducting interviews of this type with other IP thought leaders, so feel free to reach out if you have a compelling perspective to offer.

Please feel free to send comments or questions to me at [email protected] or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at [email protected] or follow him on Twitter: @gkroub.

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