When it comes to protecting intellectual property, you can't be timid, according to a pair of Luce, Forward, Hamilton & Scripps attorneys.
"In patent law, the best defense is a good offense," said Peter J. Gluck, co-chair of Luce Forward's technology law group.
Gluck and fellow co-chair Mark H. Krietzman have developed several strategies to help companies fend off patent trolls, avoid costly litigation and maximize the value of technology.
"To us, your intellectual property really is of little value if you cannot protect your core assets and create a real, creditable threat to your competitors," Krietzman said. "Peter and I see IP as weapons. They're business weapons, and we know how to exploit them."
They feel the biggest threat to a company are nonpracticing entities, also known as patent trolls, who leverage their patent portfolios simply to get licensing fees with no intention of using their technology for innovation.
Gluck said there's been an uptick in litigation by these patent trolls, who "make nothing, contribute nothing and shake down those who work hard and fund the R&D that builds the fabric of our country."
Krietzman said foreign nationals are now getting into the act.
"What's really alarming to us is that we already see the next generation of patent trolls coming from outside the U.S.," Krietzman said.
The best way to defeat the patent trolls is by using the inter partes re-examination system rather than going through federal court.
The inter partes process allows company officials to participate in the back-and-forth with the patent office.
"It gives you the ability to control the outcome and allows interaction that can have a positive effect, making those bad patents go away and keeping good ones in force," Gluck said.
The re-examination process also brings the matter in front of the patent office, which eliminates the "forum shopping" that certain plaintiffs use when going to court. And, unlike the courts, there's no presumption of validity for issued patent during a re-exam.
Gluck said the costs savings are huge as well. An inter partes re-examination costs approximately $100,000, while, according to the American Intellectual Property Law Association, the average cost of patent litigation defense where there is less than $10 million in controversy is $2.5 million. When the controversy goes up to $25 million, the litigation costs increase to between $6.5 million and $10 million.
The Luce Forward duo also employs a pair of strategies -- white-space mapping and global fast-tracking -- to help a company avoid incurring any charges of patent infringement.
In white-space mapping, Krietzman and Gluck investigate beforehand what space isn't covered by a particular technology.
"It helps identify the potential scope of the patent monopoly that you can control," Krietzman said.
"A little bit of knowledge can go a long way," Gluck added. "If you analyze the closest technologies to what's out there, it gives you a real 'heads up' on what's going to be coming from competitors."
In global fast-tracking, they file patent applications in other countries, a process that can give them an idea of protectable rights within 4-6 months, as opposed to 3-5 years.
U.S. patent examiners will recognize a search or examination in a foreign patent office.
"The cost of obtaining weak patent portfolios and things that aren't investigated is easily balanced off by the benefits that come later," Gluck said.