Quantum Patent Talk

Interviewee: Mark Bloomberg
Of Counsel at Zuber Lawler
Interviewer: Rhian Granleese
Partner at Marks & Clerk




[Rhian] Welcome to a DCLC interview. I’m Rhian Granleese. I’m a patent attorney who works in prosecution of their patents before the European and UK patent offices. And I’m joined by my fellow DCLC Blogger, our fellow editorial board member, Mark Bloomberg from Zuber Lawler. Mark has been a patent litigator for 35 years now?

[Mark] Uh, 38

[Rhian] 38? Oh, dear. I’ll admit I’m a newbie at this I’ve already been in it for 26. But we’ve been working together on the DCLC blog now for over two years. And it’s so nice to, you know, continue again, everything will resume but we are in the same room we can prove we are there’s not some funny division software, we are actually sitting in the Zoom Room. So question wanted to ask your 38 years.

[Mark] Yes

[Rhian] What have you done during that time? And how would you just sort of get into what? Why did you stay?

[Mark] I decided to do this when I was a freshman. In college, what I did is I prior to school, I was I was sort of a “mad science” kind of guy. So MIT seemed like the place to go. And during the my freshman year, I enjoyed that greatly. But I thought maybe there’s some other things that I wanted to do. And I ended up in taking a couple of legal courses. And then I began to think that that’s what I wanted to do. So when I was a freshman, I decided that I would go to law school. In fact, I decided I would go for specific purpose of going into patent law. And so I got a bachelor’s and master’s degree in mechanical engineering from MIT, and then then went up the road to Harvard to go to law school. And that’s what I wanted to do. And at that time, because I started law school in 1981, to go into patent law, everybody looked at you like you were crazy, because it was not interesting. There was no such thing as intellectual property law it was, you know, patents, copyrights, and trademarks. And it was not a big thing. But that’s what I decided to do. And it was absolutely the right decision. So I began working in at 1984, when I graduate from law school, on a patent for mainly doing litigation, but the way that it works is that you do a lot of counseling and licensing and things like that along the way. And I’ve done basically everything and then and then with time, you know, began to develop, doing things having to do with assisting people in acquisitions and supervising people in terms of patent prosecution. And so that’s how I got into it and been doing it, I guess, seemingly forever. So again, well tell us how did you get into this?

[Rhian] Yeah, quite, quite similar in a lot of ways. I was another “math-physics” person, and decided I wanted to read physics. So I went to Cambridge. And I absolutely loved it. And I found my people, if you like as I enjoyed being a geeky physicist. And I stayed on to do a PhD in solid state physics. And I was in the semiconductor physics group. And we had the sort of name of quantum toy department because we what we used to do is look at a lot of low temperature effects in quantum devices. And I felt, yeah, I was really happy, but I couldn’t see myself doing it in 10 years’ time. I saw the people that were in 10 years ahead of me, and I yeah, I knew I just didn’t have that. I enjoyed it, I really enjoyed it. But I didn’t see academic life being for me. And looking back at it yeah, I felt that I was probably more academia than industry. I also at the huge privilege of being sponsored by a Japanese company for my PhD so I stayed on at Cambridge to do my PhD. I loved working with them and the thing that was sounded great but was I was becoming narrower and narrower and narrower. And I enjoyed being a bit more of a general physicist, so I started looking at other options. And I met a patent attorney didn’t have a clue what it was. I think my parents think I went door to door selling because at the time we were called patent agents in the UK. So decided that’s how that’s where I wanted to go. So in the UK, the situation is slightly different. And to become a patent attorney, you have to have a technical degree, which I had, but then you sit the exams while you’re working. So you train on the on the job, it’s an apprenticeship. So you sit, we have to be dual qualified to some British finals after three years, or round, or three years. And that’s that my European payments as well. So I came into this job in 1996. And I’m still here. So I was recruited actually, because I had a quantum background. And at that time, there was a lot of investment in quantum technology, it was seen as going to be the way forward. However, various things didn’t sort of quite come to market as we’re expected. And it’s sort of gone quiet. And now it’s research. And again, 20 years later, and it’s doing very similar cycle to what AI did AI sort of popped his head up every 20 years for a while until the processes got to the level. I came in as a quantum person. But at the time, I do some contentious work, I do European opposition work. But most of my time is spent in prosecution. And because I’ve sat on the other side of the fence as an inventor, I really like working with inventors. And I like working with high tech companies. So over the years, I’ve started to do a lot of I started to do a lot of software work, such as a lot of AI work, computer vision, speech recognition, technology, medical diagnosis, technology. And now yes, my quantum work is rising again. So it’s quite nice. I feel to sort of be gone back to back to my roots. But yeah, that’s, that’s my background. One of the questions I really want to ask is, what do you see the big mistakes companies make with their IP portfolios?

[Mark] I think some of the big mistakes they make is first in identifying what they want it. Many times they will not patent what is important. Many times they will patent what is not important, that becomes a complicated question because they need to think about not what is important today, but what is going to be important three years and onward. For technology, particularly technology that that evolves. Another mistake that they make is waiting to file. Waiting to file has a number of problems. First, someone might file before you in which case, you can’t get patented. Second, you might say or do something publicly in advance of filing, which can cause a problem. In Europe, if you do anything. It’s a problem in the United States, you have a one year grace period, but people frequently don’t understand that that’s running and they can run into a problem there, so being prompt is another problem. And the other reason to be prompt is that you want the application to be good and thought through both by the attorneys, and by scientists, and to think carefully also about what the commercial implications are. And you could write the patent application today if you really had to, but it won’t be very good. So you want to give everybody time to understand what the invention is, make sure it’s being described properly, and make sure that it’s as good a patent as it can be. And that’s another reason to start the process earlier rather than waiting till the last minute.

[Rhian] Yeah, that’s a really good point. What I tend to see is that there’s a tendency sometimes for clients not to be completely focused on what a patent portfolio is for, you know, a successful patent portfolio needs to protect you commercially. But it also needs to protect you at a reasonable cost. And sort of looking at the sort of commercial protection. First of all, and I’m coming on to your sort of delaying point. I, I see a tendency, particularly with high tech companies and quantum tech companies that the patent portfolio gets driven by the scientific paper publication cycle, the need to publish at conferences. Now when you’ve got amazing scientists and you want to attract the best, the best, the best. Keep out of that ecosystems, letting them present their work and prestigious journals. And also in the I’d also got a key conferences bet. That isn’t the only consideration providing the patent. And certainly some of the times when I’ve been sort of quite time pressured, it’s when the pattern when the patent is getting driven completely by paper applications and conference deadlines.

[Mark] Another issue with that is, scientists have a certain view as to things and they think of technology and wonderful inventions. And some do not focus as much as the business people do on what is commercially important. And so you end up with this marvelous technology, and that’s great, But it’s not really what you want to do for your business, which ultimately, is the most important thing in terms of getting a patent.

[Rhian] It’s quite often that I almost see the cycle, the kinds of quite often the first, patents from Stelter groundbreaking there. They’ve really sort of developed it, they’ve protected the core ideas. But quite often, the really commercially useful ones are the ones that the next generation or from that which explain how the invention really operates. Quite often, the first one is very, very broad. But the second one has the second layer down, it’s the how do you develop world beating product? And that type of well, quite often the how it’s not the glamorous side of the of the sort of invention harvesting process. And that’s how very rarely ends up in scientific papers in conference publications. And for that reason, it’s important to also, you know, when you’re developing your patent portfolio, when you’re developing your strategy, looking at not only what have we done, but how have we done it, it comes back to the sort of, you know, also sort of what I mentioned earlier about sort of protecting things at a reasonable cost. It’s focusing on right, what is this really going to do for your business? How is it going? What is it actually protecting for you? What will it allow you to stop competitors doing? Doesn’t mean you necessarily want to fight with your competitors, because that can be expensive. But what are they going to look at and go “ Oh, actually, we are going to need to seek legal counsel.”

[Mark] Right, not only is a question of fighting, but any reasonable competitor is going to look at what other patents are out there and not get in someone else’s space, because they don’t want to have a problem. That’s one thing. Another thing is a competitor may realize that you have technology that is interesting to them, and may pay a royalty for that, which could be a good thing. In addition, a very important aspect of that is cross licensing. Sometimes you have technology that is good. And they have technologies good and you need to combine it sort of the classical example of that is the airplane. The Wright brothers, what they actually invented was a wing that would enable a plane to change direction without crashing. But it turns out that Curtis invented a lightweight engine, that would get the plane in the air. So without the Wright Brothers curves could get up in the air, but he would crash. And without Curtis, the Wright Brothers couldn’t get up in the air. And so what they decided is why don’t we cross license our technology to each other? We’ll share it and we’ll build airplanes and nobody else can. And that’s what they did. And you know, it’s an old example. But it’s, it’s a valuable thing for to think about how you can use your technology.

[Rhian] Why do we protect IP at all let’s why around why is IP and inventions valuable? And you know, as we’ve said, it prevents the use of the invention by others. And they either have to pay your license, which when they’re trying to decide how they’re going to price their product and they’re trying to get investment, the fact they have to pay a license can be problematic. You can also license your invention to obtain royalties as well. Some companies develop a very sort of aggressive patenting strategy where they just want to keep everybody out of the space. Others are very keen to sort of push the invention for others to use. Because frequently it’s very difficult with hardware startups for a company to Be able to produce absolutely everything they need to develop the to get their invention to market, they will quite often be relying on a third party to manufacture something, sometimes a third party to develop something for them. So the ability to have the property tied up in a way in which you can license it, it’s very useful tool in your arsenal.

[Mark] And another thing is, it adds value to the company, not only because it can stake, a commercial position, because you will own the technology that’s important, which is a value. But also, development of patents is indicative of the innovation of the company, and how valuable it is. And many smaller and innovative companies ultimately end up being acquired by larger companies. And this can be a very important thing to determine what the value of your company, and just to have the technology unprotected is interesting. But that just makes a put you in a marketing position as opposed to really controlling the market. And so that is a reason to really make sure, not only that you protect your key inventions, but also as long as the economics are there, having patents, even on lesser inventions is valuable.

[Rhian] Yeah, that’s a really good point. I do quite a lot of work with startups. And quite often the investors want to see granted patents. And sometimes startups are given a number. Yeah, but they have to achieve by certain time.

[Mark] And it’s, it’s also valuable, even for larger companies that don’t have that issue. Because if you have a large portfolio, it will. Basically, you can use that to fend off others coming to you because, you know, you may be infringing somebody’s patent, but they may be infringing five of yours. And so that way, they won’t bother you. Or you may just come to some agreement, where you license each other’s patents and go on just you know, rather than fighting each other, just compete in the market. And so, it is also valuable for larger companies to develop technologies for this patents for the same reasons. They, fortunately, are a little bit less constrained sometimes with the budgetary issues. And so they can afford to spend money procuring patents that maybe they aren’t going to use and are a little bit more speculative. They, they need to think less about that because they have less financial pressure than smaller companies, although they are not without financial pressure and budgetary issues.

[Rhian] From what I’ve seen, quite often the large companies in Thomas use patents as currencies, you know, we have 400, or 500. Let’s do a deal.

[Mark] Yes

[Rhian] What other options are available, other than just filing patent, something, you know, we can rely on sort of things such as trade secrets.

[Mark] Yes, two things you might want to do, if you had something, you have to disclose it to the patent office, and you’ll get a patent in about three years’ time, hopefully, where you can use that to protect things and you can stop others from doing things. A trade secret may be a better option. Because if it’s something particularly that is hard to do, hard to reverse engineer and you would rather not disclose that confidential information, you get the immediate protection over it because others can’t do it. And maybe, you know, if you think that you have like a, maybe a three to five year window for the value of something maybe you’re better off just not telling people what’s happened keep it all or private, because there’s no expense. You get to accept the production game immediately and you don’t have to reveal anything to others. Now, you know, there can be trade secrets that that lasts forever. They’re really that good. But so they’re endless is the time but it may be a good way to go. And one place where it’s often a good way to go is if you’ve got some great software that is very valuable because you figured out how to do things within that software. Trade secret could well be the way to go because it is extraordinarily difficult to get a patent on a pure software, invention. There are ways to do it, but it’s up here curb they’re probably not. But i it’s difficult. So if you’re really your invention is really driven by the software, you may think about going to trade sooner rather than the patent group.

[Rhian] Yeah, in terms of software protection, because you know, the prosecutor in my background at all my work is in print of the UK IPO or the imprint of EPO. And the EPO has always got a terrible reputation of being very anti software. And that’s not really the case with them. But they’re very, quite tightly defined way of assessing software. And actually the Lord of the minutes are on the move a little bit. And that in some ways, the EPO is actually more accommodating of software than the USPTO. And some things I find. And in other areas, it’s a bit harder. The what the EPO look for, is they say that software paraphrase must have some must solve a technical problem. And what they mean by technical problem is getting more and more prescriptive and more tightly defined. If you’re dealing with something in relation to computer vision, absolutely fine. Like never, it’s difficult in computer vision software. Medical diagnosis, if you’re taking an input from an image scanner, or something else, or even if you’re taking responses from a patient, medical diagnosis software is usually fine in Europe in a way that I find medical diagnosis software in the States. Very, very different and very, very difficult, I think that’s because the idea of diagnosis is viewed as being technical in Europe. So that gets you off the line. However, you also then have contracts like NLP in Europe is very, very difficult, because linguistic problems are not viewed as being technical. Whereas in the US, generally, NLP will go through. So I what I find about the EPO approach to software is it’s quite, you’ve got to meet this technical criteria to what we call technical application, it’s possible we can also you can protect financial systems in the EPO. But then you need to go to the next layer down, you need to talk about how that financial system is interacting with the underlying hardware, and how it takes into account the operations of the hardware in order to perform better. So if you are sending information in a black packaging information in a particular way between the CPU and the GPU, and which is an example given by the IRS an allowable method that is protected on that draft in a patent application that covers that is very, very difficult. When I say difficult, I mean expensive, because the amount of the amount of detail you’ve got to go into and, quite often, the invention will be made by the software engineer. But you’re then actually really getting a lot of other people involved who deal on the hardware side. And at the moment, you know, getting back to sort of DCLC content blog There’s a lot of quantum software out there. But as that software gets applied to more, or TPO classes, the non-technical issues will need to see ways of really draft in his application. So it’s talking about how it implements something clever about that particular quantum computer as opposed to just oh, it used to see position states because BPO examiner or quantum computers do that.

[Mark] review us is evolving, and I think it’s going to get to exactly where you are is before 1998, you couldn’t get patent on software at all. And then in 1998, you could get it on any kind of software, and then things got out of control. So the Supreme Court came down with a decision in about 2006, I think, which cut back on this. And what they basically say is that if something is an abstract concept, you can’t get a patent on it. And the notion is that just because something’s done, the computer is just going through certain steps, which is kind of what software does. That’s an abstract concept. And so what you want to do is, as you want to kind of link it, so you sort of say okay, yes, this is software, but how it’s working with the hardware is it’s making ventures making the hardware better, faster, more efficiently, able to do something you couldn’t otherwise do, which is it’s still a moving target and the states, but I think it’s going to be about where Europe is, eventually, because it’s really heading in that direction. And it’s really, that’s really kind of a more sensible position, quite frankly, the position that has been the United States like forever.

[Rhian] Yeah, in Europe, it’s evolved a lot. Because we were sort of know software in anything up until the X ray decision where control a software control of an x ray machine was allowed. And then it was sort of that started us off ramp down the technical route. But then until about 2006, you can always get software claims, if you dress them as hardware. So if you said a system, an information processing system comprising the following features that was allowed, and then the PSM not happy about this, and then they moved it all into inventor SEF. They say, Well, no, it was technical. And because the pure look to see how you can award inventive step, they say, the invention has to solve a technical problem, but they really focus on the technical ism. So you will never get a patent where you very rarely could have happened in the field thrown out because it was software, because they’ll say, well, it runs on a computer, therefore it’s not being a software is running on the computer. So we’re over the line there. But then they’ll say it doesn’t solve technical.

[Mark] So the bottom line is that if you had an invention, which was sort of a software driven invention, if you could figure out how to get a patent by thinking about it, and doing whatever the current compliant was, which going back to what we said before, and it’s another reason to give people time.

[Rhian] Yes, that’s true. Something with EPO is pretty much a deadline, in very positive ways, we allowed the protection with the download signal. So in the US, you always have to claim the carrier medium. So you always have to claim the physical thing that the program’s carried on. Whereas I think use the terms non transitory medium, whereas in Europe, we’re allowed to claim a download signal, you’re allowed to claim something going through the ether, which is I know whenever I get your specifications, and I sort of go through and make sure that we’re not limited to a physical carrier. So but with some of these sort of quantum software applications, that is something to bear in mind. Because everything’s downloaded these days, very, very few people buy software on CD ROM.

[Mark] And the other thing that happens is, is, as technology evolves, the law sort of changes. And, you know, it will for quantum things, and sort of, we’ve been around long enough to remember that, that time was that people were starting to do inventions with recombinant DNA. And people were sort of saying, How in the world, can you patent a mouse or a sheep? That couldn’t possibly be true? And as it evolved, and people better understood, what was the technology, what was innovative about it, then patents began to issue in the biotech space for things that were being invented piece, as opposed to just like a mouse. And I think the same thing will happen with the quantum space with time because people begin to understand what is invented about that? And what should be protected about that? And all of a sudden, where do you draw the lines about software? And how much you need to deal with other aspects of it? And what pieces are patentable will change. And so you know, the, this conversation in 10 years will be different.

[Rhian] Definitely. We’re already seeing that with sort of the evolution of the GPUs. Because coming back to the sort of, you know, how you get software through in Europe, we look at the sort of you haven’t got what we call a technical application, you look at the implementation. And at the start, where if you put GPU and you talk, parallel process and get through what is now that the examiners I know, a lot of people say, but using a GPU and parallel processing, how are you using that? What is the clever bit? Why, how was your algorithm designed to do this? And I think we’ll see that starting with the quantum side as well. At the moment, we’re still very much in the early days, in terms of well, you’re, you’re describing the bits in the different you’re using the fact that the bits can be modeled in a different manner to get the pattern through, but I think we can move back more to in few years’ time going to move to how well how, okay, that you’ve just described a quantum computer. What I want to know is why your software is particular they optimize for this quantum computer. And it’s not going to be an issue, as I said, where there’s the quantum computer is dealing with some problem in relation to maybe computer vision or something like that. But it’s going to be where it’s been maybe useful financial methods or something which the EPO, traditionally class has been non-technical. And then we say, Okay, well, I haven’t got a technical application, what’s the implementation? And the implementation case law is something that develops quite a lot of time.

[Mark] So sort of bringing us to a higher level,

[Rhian] Yea we’ve gone down a bit of rabbit hole.

[Mark] Yeah, if you have something that is innovative, and something that’s commercially value, the question is to talk to somebody like that, and say, Is this something we can patent and what can we patent? And you may get a different answer at different times, but and you will. So the answer today is not what might happen five years from now. But I think it’s, it’s a question worth asking and considering because maybe the answer will be no, you can’t patent it? And maybe the answer will be yes, you can patent it. And maybe the answer will be You could patent this. Is that what you want? Or is that worth your while? So it becomes interesting. I guess, like I said, Before, everything gets driven back to the business, and to the commercial aspects of it. And so that always needs to be addressed in terms of what you want to do in terms of developing your patent portfolio.

[Rhian] Now, it’s very well said, because you see the patterns of the sort of once they’ve been granted, mainly because you’re, you’re, you’re a litigator.

[Mark] My background is primarily litigation, and not prosecution. Although, you know, I dealt with a lot of prosecution people, I’ve supervised a lot of prosecutors, I have a general understanding what’s going on to get that done. And I think the thing that, that there’s two things that I think I can add to that party and dealing with prosecution. One is, they both come from the luggage perspective. One is I see problems in litigation, that would be great to have addressed and they could have been addressed during prosecution. But you know, the water is already under the bridge on that. And so it’s kind of useful to sort of say, think about this, think about that. And the other thing is naturally, what happens in litigation is you’re going to, you’re going to fight over, you know, damages, how much. And in prosecution, you’re basically more concerned about the technology. And so what that does is that means that sometimes you don’t look at the commercial pieces of it as much as you should like, what should we patent? What’s it going to mean? Can we enforce this? Against whom? What do we want to do with this? These are lots of questions that need to be considered. They’re really business questions. But in because you want to have your Prosecuting Attorneys really know the technology and how to deal with the bad notes to get the best price possible. But the decision needs to be made in conjunction with the business and then conjunction like what are we going to patent? That, that is, that’s an important piece, which can be missed.

[Rhian] But our first question of first question I’d like to ask is, how are you going to make money out of this? Which quite often gets your average inventors who are CEOs I mean, it’s more of a company who have visibility on the business side can answer that very easily. But quite often, if you’ve got an inventor who’s just looking at paper at a scientific conference, when you say how you going to make money out of it, they sort of oh, I’m not sure I want to talk to you. You’re one of those evil lawyers who just wants to make money. But actually, if I’m going to charge you all this money for this, I want to know how are you going to use it? What are you why are we doing this? Why do you want to really want to start? Who do you think is going to compensate this.

[Mark] it largely depends upon the client, because if you’re dealing with a relatively large company, they’re going to have in house patent people. And those are people that are going to sit between the inventor and the business people and they’re going to know what, what the plan is, what the what the company’s technology, they’re developing what they want to do with it. And also, they’re gonna understand how patents work. But a lot of times you don’t have that person. And when you don’t have that person, oftentimes what you have is you may be dealing directly with the inventor, who may be a brilliant scientist and come up with a fantastic idea but does not, as you said, does not really have the visibility from the commercial standpoint. And so what they think is important, is technically important, not necessarily commercially important. And you’re exactly right. If it, you’re patenting things that aren’t commercially reporting, you’re sort of wasting time and money. It’s a nice academic experience, but you’re paying for something that is really unnecessary, but are better that are wasted for a company spent this money.

[Rhian] Yeah. But that comes back to the sort of, you know, drive in the patent portfolio base. So the publication cycle of scientific papers, because when you’re faced with that, you haven’t even got a choice sometimes to make that decision whether this is useful to protect or not, you just know, it’s going out the door, in, you know, one week, 48 hours, 12 hours, or whatever, depending on when you’ve been told, and as bad to do then you just got to protect it. Because there isn’t time to have that discussion over what is really important. It’s just, you are going to release this information to the rest of the world. And then there’s no chance of protecting it at all.

[Mark] That’s right. So it’s definitely no chance and the United States, you know, yeah. But yeah.

[Rhian] Because in the US, you have the grace period?

[Mark] You do a grace period. But there’s lots of problems with that, you know, it’s not it’s, it’s something that’s not reliable. And the other, the other piece of it is that we’re talking about in the United States and outside of that, bear in mind that you may be patenting in both places. And even if you file your application first in the United States, because maybe American company or for whatever reason, and you’ve filed it three months after your conference, then you sort of say, Okay, this is great. Let me get a patent in the UK. And it’s like, sorry, you don’t get the benefit of that one year. So you really have to so you really have to watch out for disclosure.

[Rhian] Yeah, the first thing that patent offices do so in the BPM, the UK IPO is they searched the inventors names. So even if it was a fairly small publication at a local conference, or maybe a PhD fair or a tea or anything like that, they always find it.

[Mark] going back to sort of litigation perspective, when this issue comes up. And I, you know, I’ve been doing litigation United States or the one year period, but the same thing applies. What I like is, you say, Well, you have a Oh, no problem, and then all sudden, an issue comes up and something and say, Oh, I didn’t know you meant that. That happens all the time. I mean, you know, you would think that you would not have a problem with the one year thing. But very often, there’s a case about that, because someone has done something, published something, disclose something and they didn’t think it mattered. I told him, I told him not to tell anybody else. Or who knows what and, or I forgot about it. Or something, you know, sometimes people forget about things on purpose. And it comes out. So very carefully, he is really critical. And like you said, what that means is, if the conference is going to be in three days, you do the best you can, and hope for the best.

[Rhian] But the one thing I’ve seen, cause problems in the past is the archive. Because many conferences ask for papers to be uploaded to archive, prior to the conference. So you know, the Cornell University site, an archive has, has a total use. I haven’t checked the date, but you see everything I’d say and that this does not count as a publication for conference purposes. Because or of journal purposes, because sometimes when you submit a scientific paper to a journal or a conference, you’ve got to confirm that your submission is the first publication of the work. Whereas archive was set up to be for people to put things out there once they develop them, but also for other people to feed in. So it was almost viewed as being a first draft sort of space. So many of the big conferences and all of them said that they had a publication and archive didn’t count as being a first publication that could stop your filing the paper at the conference. Send it picked a conference, stop patent speak. But the patent office is done to view the archive as being a full publication. And suddenly, when I don’t see it so much now, but when archive launched or something, like six years ago, I was probably dealing with somebody pre publish or an archive about once a month it was.

[Mark] That’s the example I said before, like, you said it didn’t count. Well, you know, you wrote it, you discuss it to people, you know, sorry.

[Rhian] It’s always the same thing that if there’s, if something’s caused a problem before you decide to file a patent application, if the patent application turns into something, which we all hope it will be really, really commercially successful, that little problem at the start will always come out later on. Because when it when a patent is worth, millions, billions, people are going to fight over it, people are going to try and break it. And then if you’ve got something really early on, even if a patents are likely to find, but even if they aren’t.

[Mark] That’s a good point because, as good as much of an you know, they when you file your patent, the examiners, either EPO, us or wherever we’ll do a job trying to find what the priority is. But they have limited time and limited resources to do this, because they have all kinds of applications. But if you have a patent, and you’ve decided you’re going to sue somebody for 100 million dollars, they have a lot of incentive to look everywhere in anywhere for and they’ll find things, and particularly now, with the electronics age, you can find, you know, things end up in all sorts of places and, and, you know, people send all sorts of things by email that maybe they shouldn’t have that get disclosed, others and archived, then that will be searched, that will be found. So if, if it happened, it will come out. And many times, you’ll end up finding after the fact something came out. And it’s troublesome because you start the litigation, start spending a lot of money on that. And all sudden, you realize, quickly on that, that that’s the other side comes up with the defendant comes up with something to sort of oops, and then you realize, well, what are we going to do now, because, you know, you’d like to try to make arguments, but sometimes they’re right sometimes in your heart, or, you know, you have to be honest, and you have to look at it objectively, to sort of say, You know what, we’ve got a problem, it’s really tough to pull the plug on this. It’s not a happy conversation. But it happens.

[Rhian] Certainly, in the old days when I’ve been I mainly prosecution, but I have been attacking sometimes. And I’ve had to go through people who’ve attended local events and things and got them to sign statements saying these were this was discussed, and this was discussed, or on this paper, this paper copy of the paper was given out a little it was not, they would try to collect them in many people took them home, and it was not, not classes confidential and freedom of information requests, we put in sort of grant proposals and other things, you know, well, if it could have been disclosed, under Freedom of Information request, in that timeframe, then it wasn’t really it was accessible to the public, then it’s accessible to the public, even if you have to do something like that to get it. So there’s always a, a need to always make sure that the situation is as tight as possible when you file the application. And if it’s not, it’s actually better to flag things will turn around.

[Mark] yea and two things can happen. One thing is if something somebody comes out, you could lose your pack. And the other thing is, even if you don’t, if something’s sort of comes out, and there are arguments to be made, and you’ve got to make those arguments, and so it becomes very costly, to try to defend over some issue. So that’s when those things that gets fixed, if you really keep a type shit, and you file your patent before anything happens, then you don’t have these problems, don’t lose the patent, then you don’t have the potential cost down the way. Or if you’re trying to license the patent to somebody, they will come up with it. So say we don’t think we should have to pay you because they’ll raise these issues and maybe they won’t pay you or maybe it will force you to accept the license at a lower rate because you have to assess that that risk or delay thing so it’s complicated thing but really be very, very careful that anything that gets disclosed before patent files need to file properly and give people time.

[Rhian] And to move instead of one step back from that. So but you know, once you decided to file a patent application, but what I sometimes see a difficulty is actually deciding what to protect in the first place. So I mentioned earlier on but the scientific papers You know, that’s certainly they need to be considered before they go out the door, whether there’s something that should be protected. But that shouldn’t be the only thing that defines your sort of patenting strategy. So one thing that’s very useful to do is put in place a sort of proper intervention harvesting program. And sort of from that sort of consider what bring some of the issues we’ve spoken about here, you know, what, what is commercial use for what do we need to do to protect, and in terms of think that also comes into the sort of budget questions as well. Ideally, every company would like to protect everything that they come up with a patterns cost quite a bit of money. So I think you’ve got to be quite selective of what you protect. And also, you’ve got to be the thing that I see, as a problem with patent budgeting, is when you, it’s very easy to say, right, we’re going to file a patent application, and it’s going to cost us dependent on the complexity inventions, somewhere between 14k – 15k US dollars to get that application and file, just a very broad range, because some things will be just a minor change to possibly something was previously filed. And some things I said will be will be an antenna nightmare to get into what what’s really going on. But you do that, and then it’s very easy to think that’s the end of the money that needs to be spent. But you then have to fight, well, you then have to get the patent granted in the territories of interest here. Now, many, many clients go with us. Any claims, obviously, the European patent attorney, but actually a lot of European companies will still file first in the US and sometimes only in the US. Sometimes, companies want to file in Asia as well. So from a litigation point of view, do you see there’s a sort of decision because one of the big costs to decide and how broadly to file is once you’ve decided how broadly to file, you then have to think about the cost of dealing with the patent office in each of those countries. Those costs, you’re completely in control of the costs for the drafting of the application. Once the patent office has got ahold of it, you’re not in control of the cost timeline. I’ve seen situations happen where you know, a client sided file maybe 10 applications within short succession. That means in a year’s time, you need to decide where you want to protect, if you want to protect that application outside the place you first filed it. So at that stage, you’ve then got the costs are not just one application, you’ve got 10 applications do then. Now, that’s quite a lot in terms of cash flow, maybe you’re better spreading that out. Once the application has been filed in other countries, and sometimes it is beneficial to file, what’s called an international patent application. Now an international application is just an application, it gives you the right to reserve to file a full application if you like in lots and lots of different countries, most countries in the world are Taiwan’s outside it and as well as Venezuela’s outside it, but very much pretty much most of the countries that are in it. So once we’ve, if you go down the international route, you then 18 months after that, have to choose which of the countries that you choose, that international route is brilliant. If you’re not sure where you want to protect, because it allows you to defer the costs of hiring multiple countries for another 18 months, which from your own cash flow could be really, really crucial. However, if you know where you want to protect, you’re probably better off at the end of that first year, just filing in those other countries. When you file in other countries, you will then start the examination process. Typically the patent office will raise objections. It’s very rare to get a patent application that just flies straight through. And as somebody who specializes in prosecution if something does that, my first question is, oh, we could have possibly drafted the claims a bit broader? Yeah. And sometimes that’s not the case. But I, sometimes a little wary if we does come back with no objections. But you usually get some objections. And sometimes those objections are very easy to deal with, I’d say probably 50% of the time, that’s true and 50% of the time, it’s going to be more difficult, the patent office will have found something that you were not aware of. Or quite often the patent office will be reading the claims in a way that it reads on to a lot of different things. And then there’s a challenge, then well, do we want to limit it? But if we limited in this way, are we then suggesting that the terms we’re using the patent application should be considered very, very narrowly, which causes probably not problems for you, Mark, if you’ve had a European attorney get very excited about saying, limited down how things should be expressed in our claims?

[Mark] Well, oddly enough, it actually, I think is advantageous when the patent office actually rejects the claim. And you have to explain what’s going on. Because what it does is, it adds more certainty to what the claims mean. Which is helpful. Because before you go up, and even cert a patent, you can know well, no, this, this is not covered. Or once you do, you can sort of say, You know what, that’s what it is. Because, you know, the, the other side will sort of say what this, what that means is like, Nope, that’s not what it means at all, we had this conversation with the patent office. And that’s what it means. So oddly enough, I prefer, from a location standpoint to see the more discussion with the patent office, the better. And the stronger. The patent is, because it’s easier to interpret the claims. The other thing getting to what you talked about earlier, where does one file from a litigation standpoint, what a patent will do is it does different things you can cover, you can cover making using or selling basically. And so you need to think about where the patents can be made, used or sold, and how robust enforcement is there. For example, the United States has a very robust litigation system, and strong, China less so. So if you imagine there’s a product that was manufactured in China than imported to the United States where it was sold, you’d be better off with a US patent. And if that’s where the your market is going to be, then trying to enforce patent for its manufacture in China. You could do either, but the so you know, you’re better off worrying about things happening in the United States in a case like that. And so you need to think about that for different countries. Because maybe, you know, there’s a lot of sales and manufacturing in Europe in different places, but you have to, but different countries are different. And so some places you would prefer to be some places, perhaps not. And so what you need to do is in deciding where you’re going to file, you need to think about that, what are we going to do the, the real question is, what are we gonna do with this patent and what do we care about? What do we want to say? And, you know, there may be reasons why you’d want to have a lot of patents and it’ll just for, for whatever reason, it may be a commercial reasons to do that. Not that it was bad place, but just to throw that out as an example. And so that would drive you if that was your business to have more patents there. Maybe you would sort of say every country, maybe was sort of say I care only about the United States. It depends, but it’s a question that needs to be thought about where is your business? Where’s it going? Where are competitors going to be? What are they going to be doing? And then your source Okay, those are the places I would like to protect because it is, quite frankly, crazy to file a patent every single country and I don’t like again, maybe a pharmaceutical product will be up in many countries but not in electronics product.

[Rhian] Yeah, with electronics, I agree with you some FMCG stuff. So what you’ll be using distributors in many countries, quite often those distributors will want to see a patent even in terms of what you’re into the license, but certainly in our game. I very rarely, most electronics are mainly US, Europe and quite often. United Kingdom, Germany and France in Europe, North America more widely in Europe. And then..

[Mark] maybe japan

[Rhian] japan

[Mark] maybe Korea

[Rhian] Yeah. And in Korea, and sometimes China as well. But yes, it’s quite, quite often not the case, the net isn’t thrown much wider than that often unless there’s a specific competitor in a particular country where it’s going to really frustrate their investment.

[Mark] Because, you know, like I said, before, it’s prohibitively expensive. To file everywhere. Yeah, reason to file on us in, in a country that needs to be carefully thought through.

[Rhian] will also sort of saying, when you get to the examination stage, you’ll get the objections from Patent Office, and you’re given a certain time to respond. Now, the time when you need to respond is a fixed legal deadline. It can’t be. But well, you can get extensions, sometimes you can do things to delay it, but quite often things you can do to delay it costs more money. So then, if you’ve got a large number of applications all filed in the same year, the chances are, they’re all going to be hitting their prosecution deadlines and the same time. And then that can those can be awful decisions for a client, because deciding whether to protect something, or deciding whether to actually not go to a conference and file something in six months’ time. That’s a difficult decision, because well, actually, if other people, if you’re aware, competitors are working on this, and you maybe you don’t want to sort of push things out too much that the decision on this is a really, this is a strong patent for us. And I kind of got to drop it in Europe, maybe or the United States, because just simply because the prosecution costs is a much, much harder decision, because it’s all the money flowed into it up to that point it for that country’s lost.

[Mark] That’s right. That’s right. It is not so much a legal problem, because unless something crazy happened to lawyers ought to be able to handle even multiple applications come in at the same time.

[Rhian] Oh, yeah, that’s no problem.

[Mark] But there’ll be a bill for that time. Yeah, it will really, really could wreak havoc with budgeting, and with cash flow. Particularly, if you imagine if, if you’re seeking another round of financing, then all of a sudden, you either have to say well, I’ve got this bill, or I just dropped a bunch of Patents. And you don’t want to be there. Because even if you drop patents, which you sort of add, you need to file those, it will look terrible to investors that you’ve dropped that and any of them don’t want to do that.

[Rhian] But it also would be what you want to be doing is protecting your new ideas coming through if you’re in a high tech company, or fast moving space. And it’s very easy to sort of say, I’ve got these bills, and I’m going to lose the these patterns and I don’t protect if I don’t file a response. And to take the budget from the new patents you’re going to protect. So the things you haven’t filed yet. Because it’s possible to sort of have a new company has a lot of patents right at the start. So maybe in the first couple of years, and then piled nothing for about two or three years. Just because the prosecution costs meaning they patent budget is getting completely sucked up on that, and they not protecting the new step. And that also is, you know, what a company is trying to gain funding. During that time, if there’s nothing new coming out, that also sends a warning to investors as well. So being able to budget that and sort of decide, and you know, Attorney’s will give you a sort of it won’t be the world’s most accurate estimate in terms of oh, this patent will cost you this much this year, this much this year and this much this year. But it’d be a very accurate estimate in terms of if you file five applications now our expected costs for the next year, this year and this year will be will be this with sensible error bars on it. And sort of pulling that into your strategy as to how as to and once you’ve decided how many you’re going to File, then it comes into right okay, how do we prioritize this

[Mark] And getting back to One thing we mentioned before, and if you decide that you need to, we’d like to put on hold filing, not only will delay getting a patent but doing it, but you may find that while you were delaying somebody disclose something, and you’ve lost, perhaps a critical invention. So it becomes a complicated budgeting issue that you need to think about both upon filing and in the few years to come.

[Rhian] That’s the case watching your competitors as well. And being aware of what they are, if they are active in the fields where you are very active. I did quite a lot. The opposition were consumed conductors in the 90s and early nineties. And they were amazing, because you’d get these applications from all these different companies. And they were literally five days apart, there was such an amazing race going on to get the next application on file. And you’d literally be you know, you’d have multiple applications would not date somebody just doing this. And each one would have an extra sort of slight development in the next one. But it’s important to get that and try to ensure that the competitor didn’t get that first.

[Mark] Right, so

[Rhian] and that was said,

[Mark] You may have to do that. And you want to have something in the budget, we’re addressing that exact issue that comes along is always a challenge.

[Rhian] Yeah, and that’s why with the scientific papers, it’s important to sort of go right to have it leave yourself enough time to review to decide, is this something we want to protect or is it something viable enough to go on to something and the decision should be based on? Well, how much do we have to spend on patents this year? So things but I, I am not convinced there is a right answer to invention harvesting. Are there’s a perfect formula you can follow. But I think it’s a case of frequently reviewing what can we protect what needs to be protected as opposed to an invention, harvesting should be proactively driven. As opposed to reactively we’ve got this we need to do something it should be all the time, but what’s in development what’s we need to keep budget.

[Mark] Unfortunately, it’s one of those things that you do the best that you can you want to pay attention to what you’re doing. But at the end of the day, you will you know, five years down the road, you’ll say well, we should have done this or we should have done that because you’re not get perfect, and it’s not gonna be perfect. But you really want to do as well as you can and like you said, you don’t want to sort of ignore it and let you know? You got to be proactive about it. Right mistakes at least if you did your best.

[Rhian] Well the thing is to do to do our job perfectly. You need a time machine to do any job perfectly you need time machines. On behalf of Mark and all of us are the deadcatlivecat.com team I would like to thank you for watching our conversation today. Our goal here at Dead Cat Live Cat is to produce interesting and useful information concerning business, technology and legal issues relating to quantum computing and quantum technology in general. We hope you enjoyed our presentation and find other information on our website to be useful. Thank you.

Mark Bloomberg - Guest

Of Counsel at Zuber Lawler

A former rocket scientist, Mark has over 35 years of patent litigation experience. He is focused on both traditional and emerging technologies, including quantum computing and AI. He boasts a sensational record at trial, having won an eight-month bench trial verdict on behalf of an international consumer products company for $925 million in damages. That said, he has most often represented clients on the defense side, including a defense of a computer company resulting in a settlement with a reported worth of $1.6 billion to the client. Mark is a cum laude graduate of Harvard Law School, with two engineering degrees from MIT. He is a member of the U.S. Patent Bar.

Rhian Granleese - Host

Partner at Marks & Clerk

Rhian qualified as a patent attorney last century and her practice has grown to encompass most topics that fall under the general headings of electronics and physics. She has particular experience in the fields of: semiconductors, quantum effect devices, memory architecture, medical devices, magnetic devices, optics, telecommunication networks, fabrication techniques; and mathematical modelling. Rhian graduated with an honours degree in natural sciences from Cambridge University, specialising in her final year in physics and theoretical physics. She stayed at Cambridge for a further three years in the Semiconductor Physics Group at the Cavendish Laboratory, gaining her doctorate in research into optical and transport semiconductor devices fabricated by molecular beam epitaxy regrowth. She became a Partner in 2001.

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