“A three-page contract that established Apple Computer Co. (AAPL) sold for $1.59 million at Sotheby’s (BID) in New York today, soaring past the presale estimate of $100,000 to $150,000.

The bidding started at $70,000 in a half-empty room attended by about 20 people and almost as many Sotheby’s staffers manning the phones. Six telephone and online bidders competed for the lot, which finally went to Eduardo Cisneros, chief executive officer of Cisneros Corp., according to Sotheby’s.

The contract, signed on April 1, 1976, by Steve Jobs, Steve Wozniak and Ronald Wayne, was initially owned by Wayne, who met Jobs while working at Atari Inc. Wozniak, a friend of Jobs, worked at Hewlett-Packard Co. (HPQ) Jobs enlisted Wayne to persuade Wozniak to join Apple. His success in doing so earned Wayne a 10 percent share in the new company.

Eleven days after signing the contract, Wayne withdrew as a partner. The move is documented by a County of Santa Clara, California, statement and an amendment to the contract, both of which were included in the Sotheby’s lot. Wayne received $800 for relinquishing his 10 percent ownership of Apple, according to the document. He subsequently received an additional payment of $1,500, according to Sotheby’s.

Based on Apple’s market capitalization today, Wayne’s 10 percent stake would be valued at more than $36 billion.”

Ouch.

Read full article here

“Today marks an exciting step forward for IP rights and the accurate valuation of patents.  Article One congratulates IPXI and President & CEO Gerard Pannekoek on their announcement that the Exchange will begin in 2012.

This news comes as IPXI secures both founding members and funding partners.  The initial members will include Philips, the University of Utah, Northwestern University, Rutgers University, and Com-Pac International.  The $10 million of funding is supported by Phillips and the Chicago Board Options Exchange.   The founding members will drive the Unit License Rights (ULRs), with the goal of bringing a new level of efficiency to patent licensing and valuation.

According to the IPXI website, “ULR contracts transform private licensing of technology into consumable and tradable products, allowing for improved market transparency, smooth technology transfers, and increased efficiencies.”  In essence, ULR contracts provide an opportunity for patent owners to quickly, efficiently, and accurately license their technologies in a secure marketplace.”

Read full article here

More than 300 patents lodged by Mr Jobs throughout his life are being showcased in an exhibition sponsored by the U.S. Patent and Trademark Office in Virginia. Some of them – such as the infamous iMac ‘hockey puck’ mouse – were duds, but some of them went on to be worldwide hits. Steve Jobs famously helped create the first Apple computer, the Macintosh, the iMac, the iPod, the iPhone and the iPad. David Kappos, director of the Patent and Trademark Office, said: ‘This exhibit commemorates the far-reaching impact of Steve Jobs’ entrepreneurship and innovation on our daily lives. ‘His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace.’

Full article.

…when an inventor publicly discloses an invention, and assuming no prior disclosure from a third party, that inventor effectively reserves a right to apply for a patent for that invention within one year even if a third party independently makes a similar disclosure and application during that intervening year. The new law appears to encourage inventors to disclose as soon as possible in order to secure a prior right to apply for a patent, and perhaps even to the point of racing their competitors to public disclosure in order to foreclose their competitors’ ability to obtain a patent.

In the fast paced world of software development the AIA can put a twist on strategies that, to-date, have relied on developing in secrecy before applying for a patent. Public disclosures of inventions before filing may become desirable.

Read the full article in the newsletter posted on the website of Bereskin & Parr.

In this litigious era of patent trolls and fierce competition over technology, effective prior art searching has become a necessity. This is particularly true when conducting Freedom-To-Operate (FTO) searches. FTO searches focus on determining whether an inventive concept might infringe on a patent. The focal point of FTO searches is typically on the language of the patent claims, because it is the claims language that matters most when assessing infringement risk.

Inexperienced patent analysts often make the critical mistake of directing their search queries only towards the claims language. For strategic reasons, claims language is often very broad and lacking in key technical terms. Because the terminology associated with any given technology provides the searcher with necessary “hooks” into the relevant prior art, queries directed only at the claims will most certainly miss a lot of relevant prior art.

As such, a more successful outcome is achieved by broadening the scope of the search strategy beyond the patent claims. It is a good practice to first generate an exhaustive set of synonyms for the technology at hand, and then to build search queries based on those terms. When conducting FTO searches, it is advisable to avoid overuse of restrictive proximity operators when constructing your queries. These operators can be very restrictive and are typically reserved for patentability and invalidity searches. Once your queries have been prepared they should be directed at the full-text of the patent databases being searched!

This approach will often produce a daunting number of results; however that first set of results can be quickly reduced by employing patent classifications in the strategy as filters. The goal of the first pass is to reduce the results to a manageable number for analysis. The results for the first pass FTO search can be further paired down very rapidly by review of abstracts and titles alone. Once you get to a reasonable number (typically under 100) you can start reading and evaluating the claims language against the product/technology features at issue.

By way of example, the following claim language is very broad, and although it is directed to a video streaming system, it does not contain the terms “video” or “streaming.” However, if you were performing a freedom to operate search for any video streaming product going to market you would certainly want to know about this patent! Further, it would be very unlikely that you would uncover the patent containing this claim unless your queries were pointed at the specification sections. Note the term “means”… this is where all the hooks are missing.

The means are the how it’s being done part and you can only find that description in the specification.

Claim 1:

A transmission system for providing information to be transmitted to remote locations, the transmission system comprising:
library means for storing items containing information; identification encoding means for retrieving the information in the items from the library means and for assigning a unique identification code to the retrieved information; conversion means, coupled to the identification encoding means, for placing the retrieved information into a predetermined format as formatted data; ordering means, coupled to the conversion means, for placing the formatted data into a sequence of addressable data blocks; compression means, coupled to the ordering means, for compressing the formatted and sequenced data blocks; compressed data storing means, coupled to the data compression means, for storing as files the compressed, sequenced data blocks received from the data compression means with the unique identification code assigned by the identification encoding means; and transmitter means, coupled to the compressed data storing means, for sending at least a portion of one of the files to one of the remote locations.

The key point here is when conducting a Freedom-To-Operate search, never direct your search only to the patent claims. Build a strategy using appropriate technological synonyms, search the full-text, utilize the tools at hand to pare down the results, then read!..read!..read!.. the claims!

If you need to stay up to date with the latest developments in patent information from the EPO then the Patent Information Conference is for you.

This year, at the invitation of the Irish Patents Office, the Patent Information Conference takes place in Kilkenny, Ireland, 18-20 October 2011.

The highlights in 2011 include:

• the role of patent offices in open government
• what it takes to keep the world’s biggest patent database on track
• machine-translation for patents
• the EPO’s EPOQUE search engine
• co-operative patent classification – a common classification system for Europe and the USA
• insights from professional patent searchers on specific issues

There will be a special workshop on Monday, 17 October 2011 at 16.00 hrs for expert users of European patent information. The EPO will send several of its database specialists to take part in the discussion.

The workshop is an opportunity for high level discussions on EPO patent databases and patent information products. Discussions will be at a high level and it will be assumed that participants have considerable experience in using EPO databases and are able to contribute usefully to the discussion.  The discussions in the superworkshop should provide inspiration for the EPO, and any commercial database producers attending, to improve their products and services in line with users’ needs.

For users, this is an occasion to discuss ideas and concerns on very technical issues with other highly experienced experts, to get answers to difficult questions, and perhaps to influence a little the future of patent information in Europe

IP.com includes in its intellectual property database free patent information from the EPO.

This page provides links to browse the European Patents publications by week starting with those made available recently.

• 2011 European Patents
• 2010 European Patents
• 2009 European Patents
• 2008 to 1991 European Patents

This page provides links to browse the European Patent Application publications by week starting with those made available recently.

• 2011 European Patent Applications
• 2010 European Patent Applications
• 2009 European Patent Applications
• 2008 to 1986 European Patent Applications

Since that announcement last month, there has been a lot of speculation (perhaps because most analysts were caught off guard) as to Google’s motives behind this significant move. After all, Google is not a manufacturer of cell phones; and they have traditionally, until very recently, shied away from building a patent arsenal.

Most analysts agree that Google felt it could no longer play a Switzerland-esque role in the patent war over mobile technology. In fact, by Google’s own admission this deal is about equipping itself for battle on behalf of its Android mobile operating system and to defend itself from what its legal chief, David Drummond, called “a hostile, organized campaign against Android by Microsoft, Oracle, Apple, and other companies, waged through bogus patents.”

As further evidence of Google’s strategic shift, earlier this year they purchased 1,023 patents from IBM, which more than doubled the number of U.S. patents assigned to Google. A review of those patents suggests that they were carefully chosen from among IBM’s tens of thousands of patents in order to be most effective in a patent fight against the other technology giants, particularly Apple.

So what about the patents it acquired from Motorola? A few analysts, like David Martin, the founder and chairman of patent consulting firm M-Cam, state that Google got only Motorola’s “crap patents.” “It’s an immense mistake,” Martin says in an interview on Bloomberg. “So you have this very interesting strategy where Google thought through the present,” Martin continues, “but didn’t actually do its homework on the patents.”

However, I think most people will agree, given Google’s success, that there are a few smart folks working in Mountain View and that they likely did do their homework. “In this increasingly patent-focused environment, it is vital that a technology-based company effectively manage its patent portfolio and track those of its competitors. Patent searching and analysis is a powerful and cost effective method for identifying technological strengths and weaknesses and market opportunities,” says Mark O’Donnell, Vice President of Operations and Director of IP Research and Analytics at IP.com.

Obviously, the point of getting Motorola Mobility’s vast portfolio of 17,000 patents and 7,500 pending patent applications was very much a deterrent strategy about quantity over quality, with the recognition that somewhere in those 17,000 patents was probably something that another company infringed upon. Not altogether different from the cold war build up of the nuclear arsenals of the U.S. AND U.S.S.R. It’s mutually assured destruction (MAD), with patents!

In actuality, Google’s purchase was a relative bargain. Breaking it down, they paid approximately $350,000 for each of Motorola Mobility’s 24,500 patents and pending patent applications. That is much less per patent than the consortium of Apple, Microsoft, et. al. did for Nortel’s patents, which worked out to be approximately $750,000 per patent.

Moreover, there are additional strategic aspects of this deal. It would be naïve of us to think that this deal was all about the patents. First, Motorola also manufactures set-top boxes and DVRs. and Google has its sights on everything that connects to the Internet (e.g. Google TV). Second, it prevents a possible licensing deal between Motorola and Microsoft. Recent SEC filings by Motorola indicated that Motorola Mobility’s CEO Sanjay Jha expressed some openness of exploring Windows Phone 7 during the Google negotiations. Third, Motorola was potentially looking at suing other Android manufacturers for patent infringement. On the same day Jha expressed openness to Windows Phone 7, he also talked of the possibility of collecting royalties from other Android makers. By acquiring Motorola Mobility, Google can prevent these issues from arising while also obtaining a fair amount of patents along the way.

What really turns this deal from good to great are the tax benefits to Google relating to the money Motorola Mobility has lost over the years, according to Robert Willens, a New York accounting and tax expert. He estimated that through the acquisition, Google can expect to reap $700 million a year in tax deductions from future profits each year through 2019. Google also will be able to immediately reduce its taxes by $1 billion due to Motorola Mobility’s U.S. net operating loss, and by a further $700 million due to its foreign operating loss, he said.

Finally, one of the most intriguing speculations regarding this deal was made by Tim Worstall for Forbes, who theorized that Google intentionally underbid for the Nortel patents because they were always really interested in Motorola Mobility. Worstall theorizes that by bidding for the Nortel pieces, Google was able to push up the price of Nortel’s patents to its competitors. Then while everyone else had made their moves and committed their cash, Google went off and bought what it wanted all along, including the accumulated losses on future tax bills. Worstall bolsters his assertion by indicating that quite a few people weren’t all that sure that Google was being serious in its Nortel bids, bidding Pi ($3.142 billion) at one point in the negotiations. He further points out that because Nortel was a Canadian company, there were no attractive tax losses that a US-based company could use.

What is clear through these acquisitions is that Google has ended its previous unilateral patent disarmament policy and decided to build a patent portfolio of its own. The number of new patents that Google is receiving each year is increasing at an exponential rate. This rapidly increasing number of native Google patents, combined with the large number of relevant technology patents that Google is acquiring from other companies, together provide a formidable arsenal for Google in this modern era of litigiousness among the technology giants.

IPIC is the only intellectual property association in Canada to which nearly all patent agents, trade-mark agents and lawyers specializing in intellectual property belong. IPIC members work all sectors of the Canadian economy including major Canadian law firms, private practice and corporations. IPIC members can be found in all areas of the Canadian knowledge economy, such as biotechnology, e-commerce and information technology. They include professionals with expertise in scientific and engineering disciplines together with thorough knowledge of the legal aspects of intellectual property.

Today, the 85th Annual Meeting of IPIC kicks off in Chicago, Illinois.

One of the highlights of this year’s meeting of IPIC will be the session with  David J. Kappos Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, who will speak about building a 21st century patent system in the digital age, a topic made especially timely by the America Invents Act passing Congress and awaiting signing into law by President Barack Obama. Among the many patent reforms included in the pending comprehensive reform of US patent laws, the adoption of the “first to file” regime that is the rule for patent priority in most other jurisdictions, including Canada, will most certainly be a topic of much discussion at this year’s meeting of the IPIC in Chicago.

IP.com includes Canadian Patents and Patent Applications in its multinational databases of prior art, including patent and non-patent literature. For more information about the scope of our coverage of Canadian patent data see this page, which contains information regarding the data sources and coverage for the Canadian patent and patent application publications.

The shift to a first to file system is central to the America Invents Act.  Along with that change comes a revamped set of novelty rules – a complete rewrite of Section 102.  Gone is 102(a), and the concept that prior art must precede the date of invention.  Gone too is 102(b) and the one-year statutory bar.  Instead, we will soon (i.e.: in eighteen months) have a new 102(a) under which a variety of things (i.e.: patents, printed publications, public uses, invention being on sale, etc.) that predate the patent’s effective filing date constitute prior art, a much more potent statutory bar than presently exists.

This new rule comes with a major exception, however: prior art does not include disclosures (which I interpret as referring to any of the categories of prior art discussed in the new 102(a)) made within one year of filing if “the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” (proposed language of 102(b)(1)(B))  (The section also contains an exception for disclosures by the inventor or another who obtained the subject matter from the inventor). In other words, inventors will have the ability to negate any prior art from the one-year period prior to filing by engaging in public disclosure.

This provision has the potential to encourage early disclosures of information by the inventor.  Although on the surface it seems to provide no more ability for inventors to engage in disclosures than the existing one-year statutory bar, under which an inventor was free to disclose whatever it wanted for the one-year period prior to filing, it perhaps may result in more disclosures than under the present structure.

Read the post in its entirety on PatentlyO, for additional insights and context, and join in the discussion in the comments on the original post.

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