Speaking at UC Berkeley Boalt School of Law on the Globalization of Legal Profession

I will be speaking on a panel at the U.C. Berkeley Boalt School of Law on April 25, 2008 at a conference on the Globalization of the Legal Profession. On the panel with me will be the Chief Patent Counsel of Microsoft and the Chief Patent Counsel of Cisco. Here is a link to the conference. Please email me questions that you would like me to answer at the conference.

Indian patent bar exam

I've decided to take the Indian Patent Bar exam. I am planning on registering for the exam in November 2008.

My new Youtube channel, talk about patents, my thoughts, IP

I have created a new Youtube channel to share with you my thoughts through video about U.S. patent law, the profession, and strategies to help your startup get off the ground.

You can watch a sample video by clicking directly on the link below :



You can subscribe to my Youtube channel and watch many more videos I have uploaded by clicking on this link :

http://www.youtube.com/rajpatent

Here are topics that I have shared my thoughts on through my YouTube channel :

When do I file a patent application for my startup?
What is the difference between a provisional patent application and a utility patent application?
What are different types of intellectual property?
Building an IP portfolio for venture backed company
MNC patent legal budget strategies through outsourcing
How to draft strong patent claims?
Techniques for raising early stage financing for your Silicon Valley startup?
Where to incorporate your startup?
Working at a large company, thinking of starting your own company? IP issues to consider.
How do you select a good patent attorney?
Doing it yourself, filing a provisional patent application – tips.
About my patent law practice
Foreign patent application preparation and deadlines
How to develop marketable skills as a patent engineer or agent?
Deciding what to trademark?
What are the different types of intellectual property?
Why patent law is the best profession in the world, my thoughts
What should I try to do in law school to get experience in IP/patents?

Please let me know your thoughts so that I can continue adding more videos and enhancing the ones I have recorded previously!

Raj Abhyanker, U.S. patent attorney

Attracting advisory board members & top talent

I want to share with you my thoughts about building top-tier Strategic Advisory boards and how to use them effectively to help your startup succeed. Great Strategic Advisory board members can help (1) add credibility to your venture, (2) give you great suggestions and feedback on your product, (3) be champions of your technology, and (4) most importantly help you find and attract top talent.

In my experience, attracting top quality Strategic Advisors begins with not being afraid to reach out to people you do not know, and with whom you do not have a common acquaintance. In virtually all of the ventures I have created; from AOLclassifieds.com and MacInsider more than 10 years ago, to Clay Pixel Studios and CenterD in the past few years, I have built great Strategic Advisory Boards by reaching out to people via phone and/or email with no common acquaintances in between. The first step for me has been to identify a list of people to reach, and make a cold call and email. An important step in my view, though sometimes intimidating at first.

In Clay Pixel Studios, I first began by reaching out to a few Academy Award winners in animation who I read about in an industry publication. By reaching out through email and phone, I was able to talk with and attract a Dr. Venkat Krishnamurthy (a 2000 academy award winner) to be a strategic advisor in my venture. Being generous with stock options to early Strategic Advisors and being mindful with use of their time is a key element to attracting such top caliber talent. In addition, not being afraid to reach out to people that you perceive are much more accomplished than you is a necessary skill.

You must build a rapport and trust with the first Strategic Advisor once they are identified and secured. This will help to make the process easier for subsequent advisors. The first advisor can help facilitate introductions to similarly accomplished individuals, and help to vouch for the strength of the venture with other advisors, investors and employees. Basically, the process becomes easier after this first Strategic Advisor is established.

For example, for CenterD (formerly Fatdoor, Inc.), I reached out to a Stanford professor in the Human Computer Interaction department named Dr. Andreas Paepcke through a web published email. My email was short, basically requesting a meeting to show a demo of a product that me and my co-founder had worked on. Though I did not study at the Stanford HCI department or at that university, I felt that our idea of getting to know neighbors strong enough to warrant attention from professors there. The only connection I was able to draw was that our Fatdoor office at the time was a mile or so away from the Stanford University campus on University Ave. Professors can make great early advisors, as they can help you recruit other professors, provide feedback, and can recommend top students who might be interested in career opportunities.

In the case of CenterD, Andreas proved to be a great early Strategic Advisor, and helped provide an introduction to Hector Garcia Molina (another Stanford Professor, VC, and on the Oracle board of directors). In turn, Hector introduced a key strategic hire for CenterD (a former founder of a popular social network and former PhD student). Through this referral, my co-founder and myself were introduced to Rajeev Motwani (another Stanford professor and early investor in Google), who in turn helped introduce us to a plethora of investor and venture capital contacts, one of which later invested in the company and joined CenterD's Board of Directors.

In summary, the first step begins with reaching out of your comfort zone, and reaching out to people you may not have any other ways of meeting. Taking that first step is key.

Raj Abhyanker

Building a great team to take an idea forward

Ideas and inventions are not worth much, unless you have the talent to either create the product/service yourself, or have the ability to recruit the best talent in the world to help make your ideas and inventions into actual products and services that are well designed and useful. I want to share with you my limited advice on recruiting world class teams.

In my experience, recruiting world class teams begins with being involved, being bold, and working with all options available. In addition, the best teams you can recruit are those comprised of people who are smarter, more ambitious, and more talented than you. That way, things get done even faster and better than you can do them yourself.

Being involved means that it is important to be involved in your community and volunteer. The greatest thing you can give to the world in my view is to help others than yourself. One can achieve this a variety of ways, whether it is to volunteer for cause you believe in, participate in local politics and activism, or make an introduction to people who might benefit from association and meeting. I have found that referring people to each other who you feel may benefit from mutual meeting is a fantastic way to build trust and create a circle of contacts in very diverse areas. Often, those you help, in turn, help you. While this help is not guaranteed, it sometimes aids tremendously in helping to recruit world class teams.

Being bold means that you should take affirmative steps to make your ideas and inventions into real products and services. You cannot sit and wait for someone to execute for you. As the first employee of your venture, you have to take affirmative steps, so that your idea and invention will be realized before competition catches on and builds something similar. This can include less traditional approaches such as cold calling and emailing those people who you think have the ability to help you, as well as looking through your network for contacts who may have the leads and skills to take ideas further.

You need to use all approaches to expand your network and to make sure you can reach the most talented people quickly through a variety of approaches. For example, in recruiting world class talent for many of the ventures I have started such as EVPs from large hi-tech companies for ReCapture, Academy Award Winners for Clay Pixel Studios, a top geo-spatial mind for CenterD and large publishers for MacInsider, I found that a diverse approach to recruiting is one that includes online job posts, personal networking, and online business networking.

Another important skill is to be able to sift through the hundreds of resumes you may receive to find the one or two who have the skills and talent to really execute. Identifying real leaders and talent can be difficult, what has worked best for me is to look for drive, ambition, contacts and raw skills in an area you need. It is important to give co-founder status to top talent you recruit as well as well as generous ownership in your business, so that they will be empowered and feel the vested interest necessary to take a business forward and make it successful.


In addition, in my view, it is important to blindly trust people at times - put bets on the people your gut tells you have skills and drive to take an idea forward. While this is a risk, keeping your thoughts bottled up and not shared does not build confidence in those you speak with. Often, those you want to recruit will also keep things to themselves if they sense that you are hiding things from them.

In business contexts, I have found that is often better to share more than share less in many scenarios- especially when underlying intellectual property is properly protected and enforcement mechanisms properly understood. What you can do as an entrepreneur is lay the foundation, and create the spark plug, excitement and momentum that will hopefully evolve into something large and great. Sometimes you will win, but more often you will fail. Let every failure be a learning experience, so that you can work toward avoiding mistakes of the past in new ventures. That is where your talent can lie. Whatever you do, don't give up. Besides, your ideas and inventions are nothing unless you develop the talent to attract the best people in the world to take them forward into real products and services.

Raj Abhyanker

Coming up with a Great New Business Concept

I want to share with you my advice for coming up with the next great business concept. Over the years, I have met hundreds of entrepreneurs who have launched their companies from merely a concept to formation. Furthermore, as an entrepreneur myself, I have come up with ideas of my own, some of which that have taken off, while others which have not fared as well.

In my view, great ideas come from life experiences. The wider the circles of life experiences that you have, the more that you can see hidden opportunities. The more successful entrepreneurs you meet, and the more you surround yourself with creative people, the better ideas that form of your own. For example, I came up with the concept of Fatdoor (a geo-spatial social network) in 2005 while running for Cupertino City Council.


Raj Abhyanker

Creating a consumer domain name

When creating a consumer focused domain name, it is important to choose a name that is easy to remember, and one which draws emotion from consumers. If the name is to be used for a consumer Internet company, the name should be easy to spell, and ideally should comprise of characters from the ASDF and QUERTY keys. When I came up with the name for a start-up that I created last year (Fatdoor, Inc.), at first I wanted to use the name NEXTDOOR. Nextdoor is a nice name because it is descriptive of the geo-spatial social network I wanted to create.

However, NEXTDOOR was a name that was unavailable at the time. I began to experiment with alternate names, and came up with the name FATDOOR. The name Fatdoor is not as generic as Nextdoor, but it draws emotion and I was able to purchase it and other variants of it for very little investment (e.g., $8.88 on namecheap). Because I wanted Fatdoor to be a consumer company, I purchased all variants of the name on Namecheap as well, as well as most international domains for the name (e.g., phatdoor, factdoor, fatdor, etc.). That way, no matter what URL people type in, they would land at the same site.

In summary, here are my tips for things you should keep in mind when choosing a consumer centric domain :

1. Make sure the name draws emotion
2. Make sure that the name is easy to spell and say.
3. Be sure to purchase all phonetic and oral mispronunciations of the name/URL
4. Make sure you file a federal trademark on the name you wish to protect
5. Think of a slogan that will help describe the venture in the simplest terms (e.g., "Get to know your neighbors", "Patent Protection for Global Innovation", and "The Online Marketplace for Intellectual Property"

Raj Abhyanker

Oceantomo Patent & IP auction in New York

I attended the OceanTomo patent and intellectual property auction last week in New York (October 24-25, 2006). I want to share my insights and thoughts regarding the patent and IP auction.

First, I thought that the patent auction was very well managed and administered. The OceanTomo staff was professional, organized, and chose a fantastic location for the auction in the heart of New York City. The auction was held in a beautiful old bank building called The Capitale, now converted into a meeting place.

That being said, I have a few thoughts about the viability of the live auction format for intellectual property, and ways to strengthen the concept further.

First, there needs to be a better valuation methodology. One of the seminars was led by Jonathan Barney, a former patent attorney at Knobbe Martin Olsen & Bear, and creator of the Patent Ratings methodology used by OceanTomo. OceanTomo's methodology is based on objectively assessing and weighing various factors in the trove of issued U.S. patents which provide an indication of whether the patents will be maintained by the patent owner through payment of maintenance fees.

The theory is simple : By understanding what factors increase the likelihood that a patent will be maintained, means that it is more valuable to a company. If it is more valuable to a company, it must be more valuable. This metric is tracked through a Patent Quality ranking assessed by OceanTomo.

However, this ranking does not adequately capture the value or quality of a particular patent. The entire concepts of “value” of a patent and “quality” of a patent need better definitions. Value is a fair market value of an intellectual property asset. Quality should be defined as the skill of the attorney/drafter/author of the intellectual property asset in conformance with litigation-precedent verified best practices.

The Oceantomo approach seems to merge the concepts of “value” and “quality” in the Patent Ratings methodology. This methodology merely indicates whether on not a patent attorney or licensing executive in a corporation is likely to keep a patent alive or not. Factors such as (1) length of a specification (2) the number of independent and dependent claims (3) the number of figures (4) number of continuations increase the Patent Quality score by OceanTomo. However, these metrics have nothing to do with actual quality or value of a patent in my view.

The quality of a patent should be determined by factors such as how elements in the claims are defined in the specification, whether the application is supported in the specification, what has been the impact of prosecution history estoppel (e.g., admissions by the application), and whether best practices for patent application drafting were followed. None of these factors seem to be directly considered in the OceanTomo patent ranking. Rather, the OceanTomo patent ranking only predicts the likelihood a company will keep a patent alive or not. As such, it does not adequately measure quality of a patent.

Furthermore, value should be determined through a modified version of the market approach, income approach, or cost approach. None of these three standard valuation methodologies work well for patents because a poorly drafted patent might be still worth nothing if it will later be invalidated because of poor drafting quality.

What methodology is best? I’m writing a paper on this, I’ll publish it here by early January 2007.

Recruiting and Training of Patent Engineers in India

Here are a few of my random thoughts on recruiting and training of Patent Engineers in India. First, in recruiting, it is of high importance to identify the right candidates. To me, the best patent engineer candidates are those who can (1) write descriptively in English exceptionally well, and (2) those who have a strong attention to detail. I believe these skills are far more important than someone who has solid technical skills but is unable to express thoughts verbally in a clear but descriptive fashion. To recruit the right talent, it is important to conduct a comprehensive test to gauge abilities in descriptive writing, reading comprehension, and attention to detail. A simple test may involve a section in which an applicant is asked to describe what they see in critical detail, draw what they read, and identify differences between images. Such a test can help to narrow down candidates to the ones who are likely to best succeed in a patent engineer role. Second, in training, it is important to first provide a context in which a patent engineer will appreciate his/her role in creating value for a client before teaching tasks. An initial talk by a patent attorney and/or other patent professional explaining the legal, legislative, and business role of intellectual property in developed and developing nations can help to build confidence, excitement, and commitment in talented recruits. Next, it is important to focus on training of tasks which can provide a context for more complicated training. For example, training patent engineers on proofreading patent applications is an important initial task. By learning how to proofread a patent application well (e.g., checking antecedent basis, evaluating admission risk in a background, checking figure/specification matching, ensuring a title does not singularly imply a method at the expense of an apparatus - or vice versa, etc.), a foundation can be established for future training. Only once the skill of proofreading patent applications is mastered should additional skills be taught.

Im not sure if anyone is reading this on the internet or not, but if you are, send me a note or post a comment, and maybe I'll be motivated to write more in the future..

Upcoming January/February 2006 conferences on International IPR in India

There are a number of interesting conferences coming up in Bangalore India on intellectual property rights. In addition, there are many topics that might be of interest in future conferences.


International Conference on Intellectual Property Rights - Bangalore – January 30-31, 2006
http://www.usibc.com/documents/events/9%2001%202005%20Draft%20Jan%20%2005%20Program%20Outline%20_2_.pdf
and :

COMPUTER LAW ASSOCIATION CONFERENCE – BANGALORE (Taj West End) – February 1-2, 2006
http://www.cla-india.com/

Please post your ideas for future conferences here. In addition, please post your thoughts/experiences after attending the conferences above in Bangalore.

Raj

India Courts Western Law Firms

India Courts Western Law Firms

By Rashmi Agarwal, Business Writer, India
India's lumbering justice system may be a dread to its citizens but is on its way to becoming the darling of US and UK-based law firms.
...............Approximate total spending by the top 200 US law firms:
1. Office operations $6.2 billion 2. Word processing and secretarial $2.9 billion
3. Information systems $2.5 billion 4. Marketing $850 million 5. Finance and accounting
$500 million 6. Library $500 million 7. Legal recruiting $350 million 8. Human resources
$200 million 9. Legal research $620 million 10. Litigation support $4.9 billion
11. Patent & trademark prosecution $400 million
Total: $19.92 billion
Source: Hildebrandt International, OfficeTiger, 2004
Publish Date: May 2005

New Articles about R&D in India

There have been a number of new, interesting articles written by Wharton Business School on R&D in India, and its growth prospects. Post, Discuss, and Share your thoughts here.

India has long enjoyed a reputation as a destination for IT and business process outsourcing. Now, the country is fast emerging as a major center for cutting-edge research and development (R&D) projects for global multinationals such as Microsoft and Motorola as well as Indian firms. More and more companies in industries ranging from IT and telecommunications through pharmaceuticals and biotech are setting up ambitious R&D projects, in part to serve the Indian market, but also with an eye to delivering new generations of products faster to the global market.

What forces are shaping these trends? What does the future hold?

New patent prosecution law firm starts with an eye toward high-quality U.S. patents, global leverage, and servicing R&D in India and Silicon Valley

AUGUST 15, 2005, PALO ALTO, CA - Today, a new U.S. patent prosecution firm optimized for a global economy opens its doors. The firm, Raj Abhyanker, LLP, focuses on drafting extremely high-quality U.S. patent applications that cover technical aspects of inventions and which can withstand U.S. patent litigation, handle licensing scrutiny, and can help position a startup for a successful round of venture capital fund raising.
Raj Abhyanker, LLP has a U.S. office in a prominent Palo Alto location, close to many innovative start-ups and established hi-tech companies. In addition to the Palo Alto office, the firm maintains an office in Bangalore, India to locally service U.S. patent prosecution requirements of multi-national companies having R&D operations in India. The firm is centrally located in the heart of Bangalore, a short drive from the International Technology Park, Electronics City, and other technology parks housing multi-national U.S. companies. The firm also has a patent support team in Nagpur, India.....for more see : www.rajpatent.com

Are venture capital trends toward globalization affecting patent law?

Do Silicon Valley venture capitalists now look for an "India" backoffice prior to funding? Please discuss and/or post articles here.

What will the future hold for the patent prosecution profession in the U.S.?

Please post articles/thoughts discussing the future of the patent prosecution profession in the United States. Will the quality/number of U.S. patent prosecutors grow or decline in light of globalization? What can a U.S. patent attorney do to best manage his/her career?

Biotechnology/Pharma patent outsourcing, an emerging opportunity or risk?

Recent articles have been posted about contract research organizations in India teaming up with patent search/drafting companies to offer biotech/pharma patent drafting and searching services from India. Will this practice work? Please post articles/comments here.

Original Inventions generated in India - Is reverse-outsourcing to the US the answer?

The current movement of core-engineering R&D work to India opens up an interesting opportunity for US patent attorneys. Indian patent attorneys today are not trained to write/prosecute US patent applications today. The gap will take at least 3-5 years to close. However, multinationals in India need to find a way to protect their inventions generated by Indian inventors now.

Does this open up an opportunity for the US law firm/patent attorney in next 3-5 year term ?

Please post your thoughts here.

Names of Patent Prosecution Firms In India ?

Please add to this list, and comment about how good each one is (if you have experience working with them, or have heard rumors) :

1. Raj Abhyanker LLP (www.rajpatent.com)

2. Patent Matrix (http://patentmetrix.com/default.asp)

3. Evergreen Law Group (www.evlg.com)

4. Pangea3 (http://www.pangea3.com)

5. MaxValGroup (www.maxvalgroup.com)

6. Schwegman, Lundberg, Woessner & Kluth (http://www.slwk.com/) (only some backoffice patent operations outsourced)

7. Intellevate (www.intellevate.com)

8. Lexecute (www.lexecute.com)

9. eValueserve (www.evalueserve.com)

10. IP Horizons (www.iphorizons.com)

11. Global IP services (no website)

12. Manthan Services (www.manthanservices.com)

13. Carpenter & Kulas, LLP (Palo Alto) ( www.carpenterkulas.com)

Others including :
§Coudert Brothers (East Coast)
§Lexadigm Solutions
§IP Pro (Nishith Desai affiliated)
§Numerous others :Global Business Solutions, Dolcera, Atlas Legal Research, Quislex, OfficeTiger, Lawwave.com, Mindcrest, Lexecute
§Indian PCT patent law firms : Kumaran & Sagar, Anand & Anand, LexOrbis, others.

Companies w/R&D in Bangalore

Please add to this list :


Top American employers in India:
Intel Corporation : 3,000 + employees (1000+R&D)
SAP : 1000 + employees
Sun Microsystems : 300 + employees
General Electric: : 17,800 employees (1600+ R&D)
Hewlett-Packard : 11,000 employees (3000+R&D)
IBM : 6,000 employees(1000+R&D)
American Express : 4,000 employeesDell : 3,800 employees

§ General Electric (GE) with $80 Million invested in India employs 16,000 staff, 1,600 R&D staff who are qualified with PhD’s and Master’s degrees.

§ The number of patents filed in USA by the Indian entities of some of the MNCs (up to September, 2002) are as follows: Texas Instruments - 225, Intel - 125, Cisco Systems - 120, IBM - 120, Phillips - 102, GE - 95. (Expected to grow exponentially)

§ GE's R&D centre in Bangalore is the company's largest research outfit
outside the United States. The centre also devotes 20% of its resources on 5 to 10 year fundamental research in areas such as nanotechnology, hydrogen energy, photonics, and advanced propulsion.

Why is everyone focused on India for legal outsourcing? (e.g., why not China?)

Here are some reasons, please post others :


§2nd largest pool of scientists and engineers in the World.
§ Worlds largest democracy.
§ Worlds 4th largest economy.
§ World-class recognition in IT, bio-technology and engineering fields.
§Largest English speaking nation in the world.
§McKinsey believes India's revenues from the IT industry will reach $87 Billion by 2008. GDP $576 Billion. (GDP rate 8%).
§World-renowned TQM expert Yasutoshi Washio predicts that Indian manufacturing quality will overtake that of Japan in 2013.
§Legal system modeled from British legal system - British colony for 200+ yrs.

New articles regarding US legal outsoucing

Please post any new articles that you find regarding legal services outsourcing here.. Raj

What are concerns that law firms and in-house counsel have regarding patent prosecution outsourcing?

Please feel free to add to this list :

§ Client confidentiality concerns.
§ Attorney/Client privilege concerns.
§ Conflict of Interest concerns.
§ Malpractice concerns.
§ Time differences.
§ Export control concerns.
§ Process concerns.
§ Attrition concerns.
§ Perception concerns.
§ Docket Management concerns.
§ Currency appreciation.