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Much attention is being focused on the topic of ethics and professionalism in the practice of law. Former Florida Supreme Court justice Raoul Cantero notes a “distinction between the concepts of ethics — described what was required of lawyers — and professionalism — what was expected of lawyers.” (Raoul Cantero, The Carrot-and-Stick Approach to Professionalism. ) In his article, Mr. Cantero relates various cases of lawyers being sanctioned by the Florida Bar for ethics violations. The problem, Mr. Cantero asserts, is that since professionalism, as opposed to ethics, is purely aspirational, very few lawyers aspire to them. The line between enforceable ethical codes and unenforceable professional aspirations is blurring. According to Mr. Cantero,  “More and more, the Florida Bar is prosecuting, and the Florida Supreme Court is disciplining, conduct that at one time may have been considered unprofessional but not sanctionable.” (Id.) Stories such as the ones in Mr. Cantero’s article highlight the instances of “lawyers behaving badly” that feed the stereotypes of the profession.

Mary Miller Johnston, in her article “A View From the Bench: The First  Year” (Delaware Lawyer, Winter, 2004 – 2005) also takes note of professional behaviour above mere compliance with ethics codes. Judge Miller Johnston succinctly notes her “top five” and contrasts them with “pitfalls”. The freshman judge very aptly characterizes the issues of professionalism and ethics as boiling down to one of mutual respect. I like that she plainly states that“if attorneys will simply behave as if they are being scrutinized by their mothers and kindergarten teachers” then the profession will be much more civil and well respected.

Remember your manners. That is is the thrust behind the article by Professor Catherine Therese Clarke, “Missed Manners in Courtroom Decorum”. (50 Md. L. Rev. 945 (1991).)  Professor Clarke ties the decline in ethical and professional behaviour in the courtroom to a lack of etiquette, and that “judges must bear some of the blame for not being more demanding.” (Id. at 947.) Extending beyond the niceties that proper etiquette facilitates, Professor Clarke proposes that a written standard for courtroom etiquette would promote the preservation of power and professionalism, efficiency, and fairness. This article resonates with my personal view of ethics, professionalism, and the legal profession – remember what you were taught as a child. Play nice and treat each other well.

Justice Cantero, Judge Scola, and Judge Reyes have shared the view that the judges took of lawyers who “misbehaved” in their courtroom as compared to when they or other judges “misbehaved” themselves. Ultimately the “buck” stops with the judge, so it behooves a lawyer to defer to the person in the robes, but the dichotomy between the two views stood out for me. When a lawyer behaves in a way that the judge does not approve of, the judge instantly forms negative opinions of the lawyer, puts them on a mental “black list” and will even gossip about the lawyer to other judges. We are to take that as a warning to “behave” or be ostracized. When a judge misbehaves, however, we are asked to be patient, offer the benefit of the doubt, or just “take it”. After all, the judge may just have had a toothache. Nothing personal. It is telling that the professional courtesy extends in only one direction – lawyers take note!

Another point in which I found a dichotomy was regarding solo and small firm lawyers. Early in the discussion, solo and small firm lawyers were characterized as being more prone to lapses of professionalism because of issues such as their lack of “mentoring” and the fact that they are often under high pressure to bring home the money. Towards the end of the discussion, the judges were asked if the view from the bench was that there was a perceptible difference in professionalism and competence between the solo/small firm and “traditional” large firm lawyers. The tripartite consensus was no. Neither of the three judges found any difference from solo/small firm to large firm lawyers. So why the early admonition to going solo? I think there is a stigma among the profession that solos are more prone to be “bad” lawyers. I, for one, see this as a stigma that needs to be broken.

Ultimately, I agree with Judge Scola. Everything we need to know as lawyers we already learned in kindergarten. Play nice. Share. Respect your elders. Maybe more laywers don’t need a bar ethics panel looking over their shoulder as much as they need to have their grandmothers in the courtroom.

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Beck, et al presents the results of an extensive series of studies on “lawyer distress” (Connie J.A. Beck, Bruce D. Sales and G. Andrew H. Benjamin, Lawyer Distress: Alcohol-Related Problems and Other Psychological Concerns Among A Sample of Practicing Lawyers, 10 J.L. & Health 1 (1996)) where the studies present page after page of statistics all pointing to one major conclusion – as lawyers, we’d better “watch out”! The article points out that students get more stressed in the year after entering law school than they were in the period just prior to entering law school. The study also shows that that stress level jumps up again when the law student graduates and makes the transition from student to lawyer. “The results obtained from this study indicate some fairly disturbing conclusions about the evolution of psychological distress and probable alcohol-related abuse problems in currently practicing lawyers.” (Id. at 44.) The article concludes with a bleak prospect for us as future lawyers.

From the findings detailed above, one can conclude that psychological distress, in its many forms, is likely to affect newly practicing lawyers in a similar manner regardless of the state in which they practice. In addition, throughout their career span, a large percentage of practicing lawyers are experiencing a variety of significant psychological distress symptoms well beyond that expected in a normal population. Interestingly, the basic pattern of distress may represent the traits necessary to be a successful lawyer (obsessive-compulsiveness, interpersonal sensitivity, and anxiety) and the costs associated with this success (depression and social alienation and isolation).

(Id. at 57).

So what are we to do? I think this ties back in to a comment that Mr. Josephsberg made in his talk on civility in the legal profession. He began by observing that, in his opinion, it is not so much a factor that the current generation is any less civil or professional than his generation. Rather, as a 72 year old attorney, he perceives it as that the un-professional, un-civil, high-stressed lawyers among his generation have mostly either died or quit. I would tend to agree with this assessment.

Mr. Josephsberg’s admonition to “be civil” echoes a call to professionalism that, while coming from external sources, can only truly be effectuated by a personal and internal acceptance and application by each individual law student and practicing lawyer. More to the point, in order to better understand how to become a more civil and professional lawyer, we need to look inside of ourselves and recognize the very characteristics that, if left unchecked, can get us all in trouble. In her article, Susan Daicoff addresses this issue as follows:

Suggested external cures usually involve lawyers working less, being less money-oriented, being less competitive and aggressive and more collaborative and collegial, being more caring and humanistic, providing more community service and pro bono work, mentoring other lawyers and being mentored, and being more strictly regulated or disciplined. Internal cures call for a change in lawyers’ fundamental values, appearing to wish for a return to the good old days when lawyers were principled, sage advisors instead of value-neutral hired guns. Some legal scholars have argued for a fundamental change in the lawyer-client relationship as well as the lawyer’s role, often recommending that lawyers consider their own morals when representing clients.

Susan Daicoff, Asking Leopards to Change Their Spots: Should Lawyers Change? A Critique of Solutions to Problems with Professionalism by Reference to Empirically-Derived Attorney Personality Attributes, 11 Geo. J. Legal Ethics 547, 548 (1998).

Ms. Daicoff suggests that a lawyer, by his very nature, is a creature composed of various inherent characteristics which are all vital to the effective practice of law. These characteristics are described as “materialism, need for achievement, preference for dominance, competitiveness, tendency to respond to stress by becoming more aggressive and ambitious, insensitivity to interpersonal, emotional, humanistic concerns, the Myers-Briggs dimension of “Thinking” as an approach to decision-making, and a “rights” orientation to moral decision-making (as opposed to an ethic of care).” (Id. at 594.) So the question becomes, do we change the lawyers? Do we have a lawyer “change his spots”? Ms. Daicoff concludes the article with a call for more data and more research. From my perspective, it is a matter of acknowledging that these traits exist in good, competent, and professional lawyers so long as they are kept in check. The best way to keep these in check is to become aware of them.

Awareness of the pinnacles and pitfalls of the legal profession can only be learned by two methods. The most obvious method is by experience. In my opinion, the better method is through formation – mentoring – and the relating of experiences. Law students, like young children, need to hear the stories as told to them by their “elders”. Communication – a true and open dialogue – between the legal generations is the only way that we are going to pick ourselves up from this rut of incivility and lack of professionalism. Professor Lawrence Krieger writes that, “students are not told in law school what they really need to know to have meaningful and healthful lives as lawyers.” (Lawrence S. Krieger, What We’re Not Telling Law Students-and Lawyers-That They Really Need to Know: Some Thoughts-in-Action Toward Revitalizing the Profession from Its Roots, 13 J.L. & Health 1, 3 (1999).) Professor Krieger contends that law students need to be told, early and often, about the positive and negative aspects of the legal profession. The positive so that they can strive for the good, and the negative so that they can, hopefully, avoid it. Unlike many other authors of articles on professionalism, Professor Krieger feels that it is within the ability of each law school, law student, and lawyer to improve themselves and, along with them, the profession. “In fact, law students and lawyers can make choices that will simultaneously enhance personal and professional life, because health, life satisfaction, and professionalism are closely linked.” (Id. at 34-35.)

Recently, I had the opportunity to hear from Mr. Michael Cohen, Esq., Executive Director, Florida Lawyers Assistance and Dr. Cheryl S. Nowell, Director, Counseling & Psychological Services Center on this topic.  Mr. Cohen (and to some extent Dr. Nowell) asked us to consider why we were entering the legal profession? Were we doing it for “internal” or “external” reasons? The recurring theme is that people that enter the legal profession solely for the money, power, and prestige quickly become disillusioned with it and fall into various professional and ethical problems as a result. Dr. Nowell found the statistics in the reading material to paint a very negative picture of the profession. This prompted her to ask, “Why would you pursue law?” Mr. Cohen emphasized an important point, however,  -

The statistics are true, but they don’t have to be for you.

What do you think?

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This week’s topic focuses on civility: The Profession’s Call for Civility. “Got a Problem with it?” As Robert Josefsbergpoints out in his article of the same name, civility is a component of professionalism (including civility, ethics, being well prepared, and pro bono work).

But why is civility important? Why is there a focus on civility when looking at the broader topic of professionalism?

Every member of a profession gets evaluated at some level by his peers and clients. A person’s “level of preparedness” is measured in an objective fashion. Either you can perform the work required or you can’t. You are either “good at what you do” or you are not. Work product tends to be easy to hold up to a yard stick. Ethics is on the other end of the spectrum. While ethical norms are base-lined by the profession, ethics is generally an internal metric. Many “ethical” problems are subjective in nature and hard to quantify. Surely, gross deviations from the established norms are easy to point out as being “unethical”, but what about the vast expanse of “gray” that lies between the black and white? Civility on the other hand, is the component of professionalism that is most often at the forefront when a person is characterized as being professional or not. How a member of the bar interacts with other people plays the largest role in whether they are perceived as professional. Mr. Josefsberg correctly points out that the traits are linked, but I would contend that the trait of civility carries more “perceptual weight” than ethics or competence. Civility is the touch point – it is often the first, and most lasting impression. People care about how they are treated. Treat me well and I can place less weight on your areas of less competence. Mistreat me and I will label you as “unprofessional” even if you “did everything right.”

So why do we have this perception that the legal profession is one suffering from a decline in civility? Kara Anne Nagorney, in her article A Nobel Profession? A Discussion of Civility Among Lawyers, presents the view that this decline in civiltiy among lawyers comes from many influences. Ms. Nagorney cites a nation-wide trend of incivility, to which the legal profession is not immune. She also looks at other factors such as the transformation of legal practice from profession to business, the increase of diversity among the members of the bar, the misuse of legal procedure, judicial tolerance, and a distortion of the legal profession by the media. Following the trend of the articles we have been reading, Ms. Nagorney advocates an increase in mentoring, enforcement of civility codes, and the establishment of professionalism curriculum in law schools.

My first reaction is to be cynical. To be blunt… civility means, “don’t be an ass.” From my point of view, whether a person acts with civility is largely impacted by their personality. The personality that they entered law school with is, largely, the personality with which they leave law school. Very few people change drastically in a three to four year period. Some may even say that they became the person they will be “in kindergarten.” Viewing examples of incivility one is left with an impression that the “jerk lawyer” was probably a jerk before becoming a lawyer, and will continue to be a jerk long after the tape stopped rolling. Now, I say that that was my first reaction because I don’t think that we should just toss up our hands and give up.

Much as it is a parent’s responsibility to properly guide his children in their formation into adulthood, so too I believe that it is an important function of the legal profession to continually impress upon it’s membership to strive for better: in job skills, in ethics, and in civility. So, while I believe that incivility is a problem rooted deeply in a person’s personality, I also believe that it is imperative upon the profession to make it clear that that type of behavior will not be tolerated. I am not advocating that the responsibility for these matters should be abdicated to some sort of “civility police”, but rather, I feel that it is incumbent upon each member of the profession, individually and collectively, to foster civil behavior, and to not shy away from calling someone out on their un-civil behavior.

Earlier this year I had the privilege of hearing Mr. Robert Josephsberg and Professor H. T. Smith speak on the topic of civility. These two attorneys are legends in the South Florida legal community not only for their legal acumen but also for their professionalism and their civility. Mr. Josephsberg and Professor Smith are true gentlemen.  They are attorneys to watch and emulate. I enjoyed hearing them speak and especially the recounting of their various anecdotes. What stood out from their message was that you can be a “tough” lawyer and passionately pursue your client’s interests while still being civil. I especially noted that both Mr. Josephsberg and Professor Smith made a distinction between the opposing counsel and your client’s legal adversary.

The dispute is between the parties… not between the lawyers.

It was impressed upon me that you need to act with civility and professional conduct even if your supervising attorney or partners in the firm you work for do not.  I also appreciated the distinction between mentoring in other professions and what they recommended in the legal profession. For example, in my current profession, a mentor would guide me in what to “do”. They suggested that in my transition to the legal profession I find a mentor to guide me in how to “be”. “Find someone that is the type of lawyer you want to become,” they said. It was an inspiring discussion and these two gentlemen re-affirmed my decision to enter the legal profession.

Find someone that is the type of lawyer you want to become.

What do you think?

“The good old days weren’t always good and tomorrow ain’t as bad as it seems.”
- Billy Joel “Keeping the Faith”

Professionalism, ethics, and civility in the profession of law has gotten a lot of “air time” with the current generation of lawyers. My first reaction to this sentiment is to roll my eyes and give a sigh. I see a group of professionals lamenting over the loss of the “good old days.” I have, in the past, fallen into the rote responses – of course lawyers cheat and lie, of course lawyers fight dirty, there is no such thing as an ethical lawyer. After being in law school for three years, I can now honestly say that being a lawyer is entirely about being professional, being ethical, and being civil.

Professional integrity is the best and only currency that you have as a lawyer.

To paraphrase from one of my favorite movies, “The American President”, being a lawyer isn’t easy. Being a lawyer is advanced citizenship. You’ve got to want it bad, because it is going to put up a fight. Being a lawyer – a professional, ethical, and civil lawyer – means that you need to be able to zealously advocate for your client. It also means that you may have to tell them, “no.” It means that you are going to have to make the decision between the billable hour and what is just and fair for your client. It means that you have to be able to fight tooth and nail for what you believe in – and realize that opposing counsel is just doing the same.

I listen to attorney Philip K. Lyon give his opinions on why the law profession has become less civil over the last few decades, and I can’t help but hear a man who finds himself squeezed by an ever more competitive professional landscape reminiscing about the “good old days.”  It’s easy to take to a podium and speak with longing of a better time – a time when the profession was less crowded, when everyone was more civil, and when every day in court ended with opposing counsels sharing a few laughs together over martini’s. He addresses the “young lawyers” and tell them that they are rude, uncivil, and unprofessional. He blames the law schools for “putting out too many lawyers.” Without hesitation, I agree with Mr. Lyon that to practice in the profession of law is to practice in a profession that requires ethics and civility. What I do not and cannot agree with is his contention that those currently in the profession are neither civil nor ethical – or at least not to any degree more or less than in any previous generation.

In that respect I agree more with Professor Neil Hamilton:

Arguments by generations of lawyers who graduated prior to the 1980s that ethics were higher and lawyer conduct more civil earlier in their careers, while understandable, are subject to the charge that such an “ethical golden age” did not exist, and in fact there were serious ethical problems of scoundrels, discrimination, and lack of diversity in the earlier time period. Claims of more ethical conduct or more civility in earlier periods are difficult to test empirically.

(Hamilton, Neil W., Professionalism Clearly Defined (2007). U of St. Thomas Legal Studies Research Paper No. 07-30; U of St. Thomas Legal Studies Research Paper No. 07-30. Available at SSRN: http://ssrn.com/abstract=1015396)

Don’t take my words too harshly, however. I do believe that in order to foster professionalism, ethics, and civility in each new successive generation of lawyers the dialogue must continue. It is important for us to be mindful of these important facets of our professional identity lest we be doomed to forget them. In much the same way each generation perpetuates their set of values and morals to the next generation through words and example, so too should the legal profession ensure the transfer of these values from generation to generation. In much the same way that businesses have mission statements, religions make a profession of faith, and even down to our New Year’s Resolutions, it is important to concretely synthesize what we “believe in” as a profession. The “Statement of Skills and Values” from the MacCrate Report excerpt illustrates this. Especially for the new lawyer, but even for the “old pro’s”, having, and periodically referring to, a statement of professional purpose such as the type illustrated in the MacCrate report is valuable in maintaining focus in what is often a turbulent profession.

Probably the best summation of my view on this topic was given by Rod Smolla, dean of the law school at Washington and Lee: “I think we’re probably at the beginning of some significant restructuring of the legal profession and consequently law schools. It’s a caricature and a falsehood to say modern legal education doesn’t care about ethics and the role of lawyers in society. But I think many of our structures don’t allow us to deliver to students that which we care about.”

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This post is the first in a series reflecting on professionalism, ethics, and the legal profession. Look for more discussions on this topic in the weeks ahead.

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As I reported yesterday, the Supreme Court has issued its ruling in the Bilski v. Kappos patent law case. While both sides in the case made their arguments before the Court back in November 2009, my posts on the Bilski case have provoked arguments a little closer to home. A friend, and former boss, of mine (let’s call him Jack) has taken me to task on the role of patents, patent attorneys, the Bilski decision and how, as he puts it, ”the effect on small companies will be devastating.” The exchange has gone something (the posts have been slightly edited to protect the innocent!) like this:

Jack

Nice article. I guess the reason I’d like to see patents for “business processes” is that the next time some Wall Street douchebag figures out another derivative scheme that wrecks the economy, we could sue him on the grounds that it was his idiotic idea.

Seriously though, can you imagine the can of worms in the Patent Office as they try to sort through that mess?

Rob Thanks, Jack. My point in the article is just that I don’t want to see the Federal Circuit narrow the threshold of patentable subject matter. Let the other patentability criteria separate the wheat from the chaff.

Jack So you don’t like my idea of suing the b@$T@RD$ with stupid financial ideas? And I thought you gave a very objective analysis there. As a guy that develops products for a living, I like a definitive test of patentability. No offense to you but I’m not sure I trust the average examiner to make these kinds of analyses and decisions. I think this would be a HUGE boon to lawyers and would be very damaging to business. IMHO

Rob The issue at stake here is not whether Bilski’s claims are patentable… I think they are not. The issue is “where do they fail”. If SCOTUS narrows the threshold to patentability, then I believe that THAT would be far more damaging to business and innovation. As I mentioned in the article, the patenting process needs to be viewed like a funnel…but let’s make sure that the entry of the funnel is very wide… and the exit is very narrow. That is how you protect innovation and give businesses patent protections that actually are worth the paper they are printed on.

Jack Fundamentally I agree but I think that means EVERY patent goes through the courts. That will encourage trade secrets and discourage patents. (I look at it from a management perspective.)

Rob then again, the Supremes could just botch the whole thing and go the other direction entirely! Maybe we’ll find out tomorrow…. maybe!

Jack I’d settle for them doing a rendition of “Midnight Train to Georgia”

Jack Good for lawyers but IP just got way more expensive for businesses. Now the USPTO will be flooded with crap patent applications and the courts will be full of challenges. I agree the old test was too restrictive but I think the ruling was a bad thing. I’m sure our glorious Congress will fix it…

Rob The Court noted that business methods cannot be categorically eliminated from the scope of patentable subject matter, as 35 U. S. C. §273(b)(1) specifically contemplates their existence.

But notice that the Supreme Court also noted that failure to set a high enough threshold for the patentability of business methods would create a flood of patent claims on the United States Patent and Trademark Office, “that would put a chill on creative endeavor and dynamic change.” This is what I think your argument is. Just because a particular business method constitutes a “process” under 35 U. S. C. §101, does not mean that a patent claim on the method should be granted. The business method must still meet the requirements of 35 U. S. C. §102 (novelty), 35 U. S. C. §103 (nonobviousness) and 35 U. S. C. §112 (full and particular description).

Jack Exactly. If IP is essentially processed in the courts then we’ll have nothing but problems. The effect on small companies will be devastating. [...]it’s become impossible to budget for IP Legal expenses. Every single application goes through at least three cycles at the PTO because the Examiner has no clue what you’re talking about and then you fight the challenges after the bloody things issue. When I was at [large tech company] 12 years ago the average patent cost us $50K. The last one I was involved with was granted after 5 years of work and the company has spent over $300K enforcing, defending, etc. It’s hard to sit in a management meeting and suggest pursuing more IP!

Rob If the “examiner has no clue” about what you’re talking about and you issued claims are constantly challenged, then it sounds like you need a better patent attorney. Seriously, if you are spending 5 yrs and $300K putting together a legal document that doesn’t hold water… I would be looking at the drafter, not blaming the system. (but that’s not to say that the examiner corps don’t need a lot of hand holding. they do! but that’s where a good patent attorney vs a not-so-good one makes a difference.)

Jack All excellent points. Trouble is, once you hitch up the horse and get down the trail, it can sometimes be difficult to go get yourself another horse or another trail.

The USPTO issued the following statement in reaction to today’s Supreme Court ruling in Bilski v. Kappos:

“The Supreme Court today affirmed the USPTO’s decision that Mr. Bilski’s invention was not patentable subject matter as his claims were drawn to an abstract idea.  Significantly, the Court ruled that the “machine or transformation” test is not the sole determinant of patent eligible subject matter for process claims, but is nevertheless an important “investigative tool” for evaluating their patent eligibility.  The Court also indicated that a business method is, at least in some circumstances, eligible for patenting under Section 101.”

“The USPTO will be issuing guidance further interpreting the decision as soon as possible.  The USPTO is distributing interim guidance for the examining corps today.”

The opinion can be found on the Supreme Court Web site at: http://www.supremecourt.gov/opinions/09pdf/08-964.pdf.

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Well, that’s all she wrote, folks! This morning the Supreme Court issued its decision in Bilski v. Kappos.  Bilski is the patent law case that asked whether business methods should be considered patentable subject matter. (You can get a quick background on the case here or learn more about business methods and patentable subject matter here.)

You can read the opinion here (pdf) ==> Bilski_v_Kappos_08-964

I’ll be reading the opinion carefully and dissecting what it means for inventors and attorneys alike, but in a nutshell:

• the Court was unanimous in finding that the claims in the Bilski patent application were unpatentable because “they are attempts to patent abstract ideas.”
• the Machine or Transformation test is not the sole test for patentability.
• business methods are patentable processes: “The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.”
• no additional test was given: “In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.”

The Supreme Court just wrapped up another session of releasing opinions (you can get caught up over on SCOTUSblog) and still no decision on Bilski v. Kappos.  Of the four decisions remaining, Chief Justice Roberts noted that they will all be released on Monday. Patent Attorneys will release a collective sigh of relief immediately thereafter.

Here are some bits from SCOTUSblog’s live coverage this morning:

“The Court has voted unanimously to drive patent lawyers crazy.”

“The Court actually took a break for coffee to make patent lawyers wait and hope longer for Bilski. (kidding)”

“Bilski is not a record for the longest pending case, but it is among the most amusing.”

“Monday will be guns and Bilski.”

“JPS almost certainly has Bilski, which suggests a narrow approach to permitting business method patents but probably not a extremely detailed test.”

The patent world waits for the Supreme Court‘s decision in Bilski v. Kappos with bated breath, while the rest of the world wonders, “What’s a Bilski, anyway?” If you need a primer on the Bilski case, and a little background on why it is so important to the patent world, click on over to IP Watchdog. IP Watchdog, one of the most respected law blogs in the area of intellectual property has published an excerpt from my article, “Business Methods and Patent-Eligible Subject Matter in Light of Bilski v. Kappos“.  I’m very excited that IP Watchdog published my article and I look forward to guest-blogging more there in the future.

Like the rest of us patent wonks, I’ll be keeping an eye out for the SCOTUS decision and I will be writing up an analysis as soon as the opinion is published.

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From “Schiess All That,” the 2009 musical produced by Assault & Flattery at the University of Texas School of Law.
Summer clerkin’, had me a blast
Summer clerkin’, went by so fast

Met a judge who ruled for me
Met a partner who does IP

Summer days, no work all play
Then uh-oh, those summer nights

Well-a well-a well-a oomph!
Tell me more, tell me more

Man they filled me with booze

Tell me more, tell me more

Took us all on a cruise

Uh-huh uh-huh uh-huh uh-huh

Had a Starbucks on the first floor
Venti lattes made us work more

Billing hours; watching the clock
My first paycheck was such a shock

Summer fools, we worked like mules,
but uh-oh those summer nights

Well-a well-a well-a oomph!
Tell me more, tell me more

But you dont gotta brag

Tell me more, tell me more

‘Cause it sounds like a drag

Shoo-bop bop, shoo-bop bop, shoo-bop bop, shoo-bop bop, shoo-bop bop, shoo-bop bop, shoo-bop bop, YEAH

Wrote a memo, they said its crap
Five mimosas, then got the clap

Deposed a witness; I had no clue!
Really effed up; our client’s screwed

Summer jobs, not qualified
But uh-oh, those summer nights

Woah oh oh

Tell me more, tell me more

Went on weekend retreats

Tell me more, tell me more

Bonded under the sheets!

How debauchrous law firms can be!
Can’t believe that they’re hiring me

We’ll enjoy our last year of class
Cause next year they own my ass

Summer clerks, now we’re 3Ls
A-nd oh, this year will be hell

We’re so screwed, we’re so screwed

As you consider the value of patenting your invention, take a look at some of these patent related blogs, they’re great resources:

• Patently-O
• IP Watchdog
• Patent Baristas
• Peter Zura’s 271 Patent Blog

As in all areas of Law, Patent Law evolves over time and is molded by cases decided in the Supreme Court and the Federal Circuit Courts.  According to “Patent Law and Practice, Sixth Edition” by Herbert F. Schwartz and Robert J. Goldman, here are the major cases currently impacting patent law:

• In re Bilski (2008, Fed. Cir. en banc), in which the Federal Circuit established a new standard for the patentability of business method processes and algorithms.
• eBay, Inc. v. MercExchange, LLC (2006,S.Ct.), in which the Supreme Court overturned the test applied by the Federal Circuit relating to the availability of permanent injunctions in patent litigation
• MedImmune, Inc. v. Genentech, Inc. (2007, S.Ct), in which the Supreme Court expanded the availability of declaratory judgment jurisdiction for companies seeking to challenge the patent of another
• KSR Int’l v. Teleflex, Inc., (2007, S.Ct), in which the Supreme Court revisited the law of invalidity for obviousness for the first time in a generation, revising the standard applied by the Federal Circuit since the 1980s
• In re Seagate Tech., LLC (2007, Fed. Cir. en banc), in which the Federal Circuit reversed 24 years of decisions and established a new standard for assessing willful infringement, a precursor to an award of increased damages and attorneys’ fees Critical new issues addressed.

I’m pleased to announce that I’ve launched Suarez|IP Law for your patent prosecution needs. Click the link or call me at 1.305.600.2460 for more information.

Officially known as the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office,  the Patent Bar Exam is a 100 question, six-hour long behemoth with a 50% pass rate.  Having passed it, I am now “pending registration” by the USPTO.  Basically, there is an oath and some money that I own them, but in approximately 7 weeks I should receive my registration number, then I can officially represent clients before the USPTO in patent cases.  Since I have not passed a state bar exam yet (pending graduating with my JD around 2011), I will be classified as a Patent Agent.

Protect American Intellectual Property Abroad

The Motion Picture Association of America estimates that in 2005, more than nine of every 10 DVDs sold in China were illegal copies. The U.S. Trade Representative said 80 percent of all counterfeit products seized at U.S. borders still come from China. Barack Obama and Joe Biden will work to ensure intellectual property is protected in foreign markets, and promote greater cooperation on international standards that allow our technologies to compete everywhere.

Protect American Intellectual Property at Home

Intellectual property is to the digital age what physical goods were to the industrial age. Barack Obama believes we need to update and reform our copyright and patent systems to promote civic discourse, innovation and investment while ensuring that intellectual property owners are fairly treated.

Reform the Patent System

A system that produces timely, high-quality patents is essential for global competitiveness in the 21st century. By improving predictability and clarity in our patent system, we will help foster an environment that encourages innovation. Giving the Patent and Trademark Office (PTO) the resources to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation. As president, Barack Obama will ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration.

Restore Scientific Integrity to the White House

Good policy in Washington depends on sound advice from the nation’s scientists and engineers and decision-making based on the needs of all Americans. Obama and Biden will restore the basic principle that government decisions should be based on the best-available, scientifically-valid evidence and not on the ideological predispositions of agency officials or political appointees.

Edit (10-29-08) Link to McCain’s full plan.

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John McCain has a broad and cohesive vision for the future of American innovation.

His policies will provide broad pools of capital, low taxes and incentives for research in America, a commitment to a skilled and educated workforce, and a dedication to opening markets around the globe. He’s committed to streamlining burdensome regulations and effectively protecting American intellectual property in the United States and around the globe.

John McCain Will Push For Greater Resources For The Patent Office.

The increased workload at the United States Patent and Trademark Office threatens to undermine the quality of our patent examinations. New resources to hire and train quality examiners are needed to ensure timely, predictable and effective patent review.

John McCain Will Pursue Protection Of Intellectual Property Around The Globe.

Intellectual property protection is increasingly an issue for U.S. innovators operating in the global economy. John McCain will seek international agreements and enforcement efforts that ensure fair rewards to intellectual property.

Provide Alternative Approaches To Resolving Patent Challenges.

For many important technologies, the only effective way to challenge a patent in the United States is through litigation, but litigation on patents is much too expensive. The lack of an affordable, reliable means to ensure that the Government only grants valid patents has led to overly broad, frivolous lawsuits designed to force innovative companies into big settlements.

John McCain Would Place A Priority On Science And Technology Experience.

As President, John McCain will be committed to bringing talented men and women of science into the federal government. He will strive to ensure that Administration appointees across the government have adequate experience and understanding of science, technology and innovation in order to better serve the American people.

John McCain Would Support The Federal Government As An Innovator.

John McCain as president would push for a renewed emphasis on innovation through Cooperative Research and Development Agreements (CRADAs) where industry and government enter into public/private projects, sharing in the cost, benefiting from solving real problems, accelerating the application of technology in the government. This way the government is a leader of the technology revolution and not simply a beneficiary.

John McCain Will Protect The Creative Industries From Piracy.

The entertainment industry is both a vital sector of the domestic economy and among the largest U.S. exporters. While the Internet has provided tremendous opportunity for the creators of copyrighted works, including music and movies, to distribute their works around the world at low cost, it has also given rise to a global epidemic of piracy. John McCain supports efforts to crack down on piracy, both on the Internet and off.

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Take a look at your employment agreements, covenants not to compete, or non-disclosure agreements. Especially if you work in the tech sector, you can be sure that one, if not all, of these documents (which are typically signed as a condition of employment) include some sort of assignment of ownership of the invention. These assignments are usually of the form that say that anything and everything that the employee invents while employed at the company belongs to the company. Pretty straight forward, right? Maybe…

What do you do when you invent something and your employer thinks it’s theirs? What do you do when your employee invents something and they think it’s theirs?

Let’s say that the employee comes up with an invention during work hours, using company resources, in a field that the company does business in? I think that few would argue that the company has some rights to the invention.

Well, what about something that the employee invents at home on his personal time? What if it is related to the company’s business? What if it is not? Now, the topic gets a little murky. (This is where I’d say, “Please consult an attorney.” – but let’s discuss anyway!)

There is a case that was just decided this past February in the U. S. Court of Appeals for the Federal Circuit. From the opinion:

The ultimate question here is whether the interest of Dr. David Barstow (“Barstow”) in these patents was previously assigned to his former employer, Schlumberger Technology Corporation (“Schlumberger”). Barstow, a computer scientist, worked for Schlumberger from 1980 until 1994. At the start of his employment, Barstow entered into an employment agreement[...]

The bottom line of the ruling was that the CAFC didn’t actually decide who owns the patent… but it didn’t just let the company walk away with it either. Instead they remanded the case back down to the distric court for further discovery.

Because we hold that further jurisdictional discovery was warranted, we do not reach the issue of whether the district court correctly held on the previous record that the patents in suit fell within the scope of Barstow’s employment agreement with Schlumberger.

Whichever way this turns out, one thing is certain: No matter what side you are on… cover your assets!

Well, Creative Labs doesn’t think so. Apparently one of the forum posters got so fed up with the CL products not working that he wrote his own drivers… and now the products work great! Many other users downloaded the drivers and got their Creative Labs products to work. So what does Creative Labs do? Well, they issue a cease and desist!

Ouch! Wrong move.

Yes. The drivers in question are most certainly some sort of an infringement on Creative Labs’ IP. And, yes, Creative labs has every right to enforce the protection of that IP. But was it a good business decision? Probably not. Outrage on the forums is almost unanimously against Creative Labs’ tone and angle of attack. Many denounced the decision and some store owners claimed to pull the CL products from their stores.

What would I have done, if I was in Creative’s shoes? I would have offered that guy a job!

The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

Arguably, the most recent path of “innovation” has been to take available technologies, combine them in a novel way, and produce something new and useful. Remember the commercial from the 1970′s? Chocolate? Peanut Butter? Chocolate + Peanut Butter! Many patent applications rely on the combination of two or more different subject matter to create something new as the basis for their claims. Times may be changing, however, with a recent opinion from the Supreme Court. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR v. Teleflex, 127 S. Ct. 1727, 1739 (2007). This narrowing of the definition of obviousness will certainly lead to a lot more PTO rejections and will probably open up a lot of existing patents to challenges on obviousness. In fact, the Court of Appeals for the Federal Circuit (CAFC) has just appled the obviousness definition from KSR to overturn a patent that, upon de novo review, the court found to be an obvious combination of two familiar elements. Agrizap v. Woodstream Corp (Fed. Cir. 2008). Agrizap lost the obviousness claim because it combined one of its own commercial products with a switch commonly found in the cattle prod industry. The CAFC held that this was akin to 1+1=2 and, therefore, obvious.

What, then, is an inventor/company to do? How will the KSR decision affect future patent applications? I think that we’ll have to keep a watchful eye on this one.

No longer just a “blog”… we’re now a Blawg!

Defining IP
The World Intellectual Property Organization defines Intellectual Property as “creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.”

“creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce”

The most important part of that definition is the word “creations”. Until the invention, literary or artistic work, or symbol, name, image, or design takes some form outside of the creator’s mind it is intangible and, therefore, immaterial. When it is “created” it becomes “property” and may now be promoted and protected. It is the promotion and protection of these creations of the mind that most people associate with the term “Intellectual Property”.

Constitutional Power
The U.S. Constitution specifically enumerates, as a power given to the Legislative Branch, the power to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”. U.S. Const. Art. I, s8, cl8. The Legislature, by enacting various statutes pursuant to this power, created two Federal agencies that deal with Intellectual Property: the United States Copyright Office and the United States Patent and Trademark Office .

In the creation of these two distinct agencies, the Legislature seems to have drawn the distiction from the Constitution itself: “authors” and “inventors” – “writings” and “discoveries”. While technology has surpassed the original understanding of the framers of the Constitution, the intent is certainly evident. The distiction between something that is the fruit of intellectual creativity and that which is new and useful is being blurred by today’s technology (does software fall under the protections of copyright or patent?), but nonetheless, the two agencies stand today.

Defining Ownership
A major distiction between works that fall under copyright and those that fall under patent, or trademark is when ownership is recognized. For copyright, the creator of the work is said to have the rights to the work at the moment of creation. Works subject to patent and trademark protection, however, must be reviewed and accepted by the USPTO to be granted protections.

In the legal world, then, Intellectual Property discussions typically revolve around issues of Patent, Trademark, or Copyright. In one way or another, whatever you create should be considered property that has sprung forth from your intellect. Now, whether that Intellectual Property has value or is eligible for legal protections… that’s another story. (and, yes… that story is also eligible for protections under copyright)