AccelPro | Intellectual Property Law
AccelPro | Intellectual Property Law
On Building A Valuable Patent Portfolio
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On Building A Valuable Patent Portfolio

With Eli Mazour, Partner at Harrity & Harrity | Interviewed by Neal Ungerleider

Listen on Apple Podcasts, Spotify and YouTube.

Welcome to AccelPro IP Law, where we provide expert interviews and coaching to accelerate your professional development. Today we’re featuring a conversation with Eli Mazour, partner at Harrity & Harrity and host of the Clause 8 podcast. He leads Harrity’s patent prosecution team with a focus on helping large technology companies build valuable, high-quality patent portfolios in an efficient manner.

Patent prosecution for large corporations involves many steps. Public perception of patent prosecution is complicated by the “patent troll” and “efficient infringement” narratives, while the stance of Congress and the Executive branch towards patents continues to shift.

In this interview, Mazour discusses misconceptions about patent law and how he sees the field evolving in coming years. The supplemental materials and episode transcript are available below.

Listen on Apple Podcasts, Spotify and YouTube.


Interview References:

Supplemental Materials:


TRANSCRIPT

I. INTERVIEWING PATENT EXAMINERS

Neal Ungerleider, Host: Can you give our listeners some background on Harrity and Harrity and your role there?

Eli Mazour: At our firm, we focus on helping large tech companies who file a lot of patent applications get the best patents possible, and to do so in an efficient and cost effective manner.

We’re very specialized in this way. Most of my work involves working with a patent office after we file the patent applications that we draft and then convincing them to grant the best possible patents for our clients. That’s my day-to-day. Until recently, I've been leading our patent prosecution team. To do what we do in a cost effective way you have to have the best possible processes and use the best possible technology to really add value for clients, so that's our focus.

NU: What are some of the strategies you use for building a valuable patent portfolio for your clients from a high level?

EM: There are three prongs to what we do, and I think all attorneys who do what I do, to get patents for companies and build portfolios. The main thing is interviewing–conducting interviews with patent examiners at the US Patent Office.

When you do patent prosecution, you do have the option of just getting the rejection from the patent office and responding in writing and going back and forth and hoping that one day they'll side with you and get a patent, but that usually does not lead to a good result for lots of different reasons.

One: You could be talking past each other, past the examiner. Two: You end up making arguments on the written record that can haunt your client when trying to enforce that patent. And three: You end up with a patent that likely has claims which define the legal rights that are probably worse than what you would end up with if you had that conversation with the examiner.

The main thing that I do to get the best results is conducting interviews with examiners. As a quick aside, I was listening to some appellate attorneys, and they talked about how when they argue in front of an appellate judge it is different from arguing in front of a trial judge. If they argue in front of one appellate panel it is different from arguing in front of a different appellate panel. But some patent practitioners have an instinct of: Let me just make an argument to an examiner like I would make one to the Supreme Court, and they will appreciate it. But that really ignores the reality of how examiners operate, how you get them to come to this agreement, and how you work with them effectively.

The great thing about interviews is you get a chance to discuss with them the arguments that you're thinking about making before making them, and they get a chance to tell you, “Well, I’ll agree with that or do not agree with that.” As you can imagine, you get a much better result, and you get it much more efficiently. You won't waste the client's money making all these arguments that get you nowhere.

NU: I want to come back to something you mentioned earlier about working with a patent office for the process of issuing patents. For attorneys who are earlier in their careers, what recommendations do you have for working with the patent office and what tips do you have for making the process easier?

EM: My main tip for working with the patent office is to conduct interviews. Talk to the examiner who's actually examining the patent application. Related to that, there are statistics available about examiners. Imagine you are working with an examiner—let’s say John Smith. You can look up statistics about that examiner. You can see how easy, how difficult they are, what's effective with them, and what's not effective with them, and tailor your presentation during the interview based on that.

All the data is available; it's just a matter of taking a look at that and using that and figuring out what the best strategy is. Obviously, each client, each application will have all its own unique intricacies that will define your strategy. But, I think, for all applications, statistics and interviews, that’s always something that junior and senior attorneys should rely on.

II. THE CHANGING PATENT LAW LANDSCAPE

NU: I want to ask about Congress. We now have a new Congress and it seems like they’ve taken a little bit of a different approach in regards to patent issues. Can you tell us a little bit more about that? 

EM: There’s Senator Coons from Delaware and Senator Tillis from North Carolina. They restarted the Senate IP subcommittee about four years ago. They were in those roles and they were pushing Section 101 legislation, among other priorities, to strengthen our patent system. Senator Leahy from Vermont did not like the direction they were going, and he said, I'll take over the top position from Senator Coons on the Democratic side.

It was interesting to see that this is what happened last Congress. Senator Tillis is really a guy who tries to own these kinds of bipartisan issues to try to figure out what he can get done with whoever they work with.

A lot of the focus in the last Congress was, I would say, undoing, or maybe undoing some, of the changes of the USPTO. Senator Leahy retired and Senator Coons is back in that position with Senator Tillis and they're again publicly pushing the Section 101 legislation, which will provide, hopefully, the clarity and consistency with what's patent eligible or not and make the patent system more reliable. 

The Director of the USPTO is very responsive. It’s great that they're working together—that will be on the Senate side. On the House side, you see, I guess, there’s a little bit of "back to the future” with Darrell Issa coming back in the chair role of the House committee. But he was a ranking member, so I guess it's not that surprising that he's on the top side.

We'll discuss the patent troll narrative first. He thinks there are too many patent trolls, that those patents are being misused. It’s his vantage point, so that's what he'll be focusing on. It’ll be interesting to see if he and the senators will find a way to work together on anything. I'm a bit skeptical, but I'm open to possibilities.

NU: We'll be coming back to the patent troll narrative in a little while, but I was curious about the Executive Branch and the Biden administration. Have there been any major shifts in patent policy there?

EM: The Biden administration took a while to nominate the USPTO director. I think some of the reporting pointed to disagreement between Senator Coons and Leahy. It also goes to show that it wasn't really a priority for the administration. IP and innovation issues generally weren't a priority, maybe for some good reasons, with COVID-19 and all that going on. 

The main thing that they did before there was a new USPTO Director from an IP standpoint was supporting the COVID-19 waiver. That was a big historical move that basically said to all the companies that invested billions of dollars into coming up with the innovation necessary for COVID-19 vaccines to happen that they're not going to have the same rights to their IP as they thought when they were making those investments. 

I guess if you want to take a sympathetic view as to why the administration did that is, they thought they would support the waiver, but by the time that it would be in place, it wouldn't make any impact because we wouldn’t need the COVID-19 innovation anymore and it wouldn't really change anything.

I think this is a sympathetic view of what they did. And then they said at the same time, we can satisfy our base who think that the patent system is an impediment to getting and distributing the COVID-19 vaccines. I think the risk to that is obviously people making similar investment decisions in the future.

There are companies investing billions of dollars in climate change technology. The administration says it's their number one priority—that it's one of the most important issues in the world. But what if one of these companies actually comes up with a solution and then wants to set a price for all of their investments that they came with: should they be worried? Is the administration going to say, “Well, this is the most important issue, so we have to waive those IP rights related to climate change?” I think that would be an overreaction, but I think even on the margins, it's a negative signal to the innovation ecosystem. I think this actually happened before the USPTO Director was placed.

The other thing that's taking a back seat—the administration hasn't been involved in certain things. If you compare, for example, the Biden administration to the Obama administration, the Biden administration didn't come up with a new central patent policy, which is favorable to implementers versus innovators, like the Obama administration did, among other things. They’re not as active. I don’t think the big tech companies, which had a lot of sway during the Obama administration, have the same sway in the Biden administration when it comes to patent issues. 

On the USPTO side—and you never want to estimate the role that the USPTO plays in setting the administration's policies—but you do have a director that I think people can take seriously. In fact, USPTO Director, Kathi Vidal, is interested in finding the right balance to promote innovation. She's a believer in the patent system. She's a believer in innovation, and that's something she has in common with the previous administrations.

She's finding that balance while working within an administration. A lot of people won’t be happy with the pace or direction she goes on every issue. But I think at the end of the day—I think people who do believe in the patent system should take heart about that.

III: PATENT TROLL & EFFICIENT INFRINGEMENT NARRATIVES

NU: You mentioned earlier the debate between patent troll narrative versus efficient infringement. Can you tell us a bit more about that?

EM: The patent troll narrative—I have had a weird experience in which people meet me and they find out I'm a patent attorney and the first thing they tell me is, “Patent troll.” That's the only thing they've heard about patents. It's really a powerful term, not only for those who closely follow a patent system, but on a cultural level.

You hear late night show hosts talk about it, and you hear podcast hosts talk about it. It's a powerful term. A little bit of the history—BlackBerry was facing a suit and all these companies were afraid of all these patent lawsuits, and they came up with this term of ‘patent troll.’ The idea there is that you have these people—malicious people—sitting there hiding their patents, or just waiting and looking around to see who they can sue using their bad patents that they shouldn't have gotten in the first place. 

It’s a very powerful image of this pattern of a patent troll hiding under a bridge that fueled a lot of the changes we've seen to weaken the patent system, including a series of Supreme Court decisions and the America Invents Act, which created the Patent Trials and Appeal Board. It made it much easier to invalidate patents that have been issued. It’s a very powerful term and you still hear about it from policy makers. You still hear it from patent attorneys who work for particular clients. But, really, I'm not sure how sincere it is from those who actually know how things work. But it is very effective to push policy in a certain direction.

Efficient infringement is a term that was adopted by the other side as a response to that. Efficient infringement means that companies no longer care about what patents somebody else might have…they'll just do whatever they want because they know that it's actually much easier and efficient to infringe upon somebody's patents than it is to pay for them. So that was a response to that. As you can see, the problem, if that attitude is there, is this: who will want to pay for that innovation if there's efficient infringement—if it's so easy to infringe someone else's patents and they have no way of enforcing them.

Those are the two sides that you see. The efficient infringement does not have the same cultural cache you hear with patent trolls, but I think you are starting to hear about inventors who have been the victims of this efficient infringement. Recently, on my podcast, I interviewed Molly Metz. She was a world jump rope champion who invented a new jump rope and started a very successful business based on that, and then all these companies stole it and were able to easily invalidate her invention under questionable circumstances. 

Stories like hers are getting out because you do hear complaints from the USPTO saying, oh no! There are too many of these stories…because this is discouraging people from filing patent applications and using the patent system. I think that's getting out and they think stories like that are bad for inventors to hear. I guess they'll have to come up with policies to make sure there are less stories like that.

NU: We're having this conversation in 2023. Over the past 10 years, what changes do you think there have been in the patent law landscape and in the practice of patent law?

EM: Good question. There's obviously a lot from the patent law side, some that I discussed. But I think on the practice side, I think there may be some interesting changes—I hinted at them in the beginning. What you see attorneys trying to figure out is, How do I use technology to deliver even better results for clients than I did without it?

It's not just to make yourself more efficient for your clients so that you can deliver the work in less time for less money; it’s also about how you can do it better. There's still innovation. Obviously, you hear a lot about ChatGPT and so forth with AI, but I think most of the things that you hear these days are more about automating tasks. Something as simple as proofreading, right? 

You have to make sure that the claims of your patent are as perfect as possible, and you would have to go word for word and make sure everything is perfect. Now you have tools, you still want to go word for word, but you want a step to check that.

There are tools that our firm uses for patent drafting. There is some reconfiguring of the words here and there. You don't want an attorney spending time doing those things. I think that's a big impact that you're seeing and part of it is due to the pushing of some vision that clients aren't willing to pay as much to do patents as they did in the past for a lot of the reasons we discussed—in terms of the patent system growing weaker, and they value the patents that they obtain differently.

NU: It sounds like your recommendation is for any paperwork being made with any generative AI tool, like ChatGPT, should be proofread first. Is that in line with what you're thinking? 

EM: No, sorry. So those are two separate things. I would not recommend anybody using ChatGPT to do any client work, obviously for confidentiality and other reasons. Those are two separate things. I'm saying you're hearing a lot about ChatGPT and AI—AI technology that might be used in the future, but what I'm talking about does not require AI. It's really just automating tasks that an attorney was doing intermediately. If an attorney was sitting there and copying and pasting in a Word doc., or if he was proofreading his own documents, there is software available to make it that easier for them. 

NU: Understood. I’m curious what made you interested in patent law as a specialty?

EM: Good question. I went for undergrad for computer science, but I knew I wasn’t the right person to sit there and do the coding and fix the bugs. I wanted to do something else. I've always had an interest in law. I heard about patent law, and it seemed like a good combination of being able to use my technical knowledge that I acquired and being able to work with really smart people who are way smarter than me—who are working really hard to innovate and change the world. 

And I'm like, wow, I would have the chance to be around the best of the best, helping them protect their innovations. It seemed like a great career. Everybody who I talked to about it was very happy they did it, so I decided to follow that path. 

NU: Would you say there are any specific ways that your computer science background helps as a patent lawyer?

EM: The clients that I work with, a lot of them have interventions related to computer science—from networking to software development, to databases, to the internet, to internet applications to security, and so forth. So, for all of those things, obviously, I'm able to rely on that knowledge that I gained to be able to help them and guide their innovation journey. 

That's a big part of what a good patent attorney does. He doesn't just say, “All right, I'll draft a patent application.”

A good patent attorney is really able to talk to inventors and help them invent in the right way, help them to communicate, and then help them obtain the rights that they deserve based on that.

NU: What would you say were the biggest surprises that you've had in your career? 

EM: Good question. When I started, probably some of these automation tools that I'm using, as I mentioned, were a big surprise. But the other thing is, I guess I'm not surprised, but I guess it's disappointing how some of the changes that need to take place with the patent system—for example, patent eligibility, which I mentioned before—they haven’t taken place just because the people who need to make those changes understandably have other priorities, or because they’re hearing different things. 

I think it's disappointing—that inability to communicate this to those in Congress and to the Supreme Court in an effective manner. Just watching that sometimes is painful. You're like, when will they finally understand this? And in reality, they're working on way more important things, or they're thinking about way more important things and the things that they do hear about the patent system might not be completely accurate, so it's frustrating. 

NU: Do you have any advice for patent lawyers who are just getting started on their professional journey?

EM: I guess two pieces of advice: one is don't just focus on your day-to-day work. I think it's something that a lot of patent attorneys do because when you start on it, there's so much work that it’s overwhelming. And they're thinking, let me just get through this work and then maybe I'll see what else I want to be interested in. Understanding what's happening in the patent world and what's happening in the patent system will make your work much more interesting and satisfying. 

To know what role you played, regardless whether you're a patent litigation attorney, a patent transactions attorney, or a patent prosecution attorney like me—if you figure out how the whole patent system works together, it will make your piece of it, your part of it, much more interesting, satisfying. And much more importantly, you'll be able to deliver the best possible work to your clients knowing where your work fits into the process and the value that you bring to it.

So my advice is to really understand the patent system, to follow and use it. That'd be my top piece of advice. And my second word of advice is: don't be afraid of change or innovation yourself. It's funny that patent attorneys all work with innovators, that’s their job, but across my career I've met a lot who are very resistant to changing things and thinking things about differently. Things change, and it is better to figure out how you can embrace a change and become the best attorney possible based on that. 

Listen on Apple Podcasts, Spotify and YouTube.

This AccelPro audio transcript has been edited and organized for clarity. This interview was recorded on April 13, 2023.

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AccelPro | Intellectual Property Law
AccelPro | Intellectual Property Law
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