March 16 marked the start of "first-to-file" patents, and Law Technology News will continue to monitor how the new laws change the patent dynamics over the next months and years. Here are a few initial observations from the legal technology community.
"The Leahy-Smith Act's fundamental change in U.S. patent law from a 'first-to-invent' to a 'first-to-file' system should have a significant affect on both technology companies and individual inventors," said David Horrigan, a Boston-based analyst at 451 Research and a former in-house intellectual property counsel. "Tech firms can take a certain degree of solace if they get to the PTO to file their patents first, potentially reducing their patent litigation expenses, while ingenious individual tinkerers in their garages need to get good legal counsel early because they will no longer be able to challenge a patent by claiming they invented something first if they didn't file first."
Theodore Banks says "in-house counsel and compliance staff should already have in place new procedures to ensure an expedited system to get applications on file as soon as they can and wherever they can. Even if they have new procedures in place, a quick email reminder to impacted staff, with links to more detailed (but practical) information on a company intranet site is a really good idea."
Banks, a partner at Scharf Banks Marmor and president of Compliance & Competition Consultants, based in Chicago, says "the biggest compliance mistake made by lawyers is to spend way too much time explaining the legalities. Save it for the brief. If you are trying to explain a procedure to a programmer or a scientist, focus on the process. What do they need to do? Where can they get more information? Ubi est mia? (Hopefully there will be incentives for employees to invent)."
Observes Albert Barsocchini, "The first-to-invent system is replaced by the more widespread first-to-file system that most countries now follow. This is similar to the so-called 'Race to the courthouse' used in some jurisdictions to determine priority protection for certain instruments filed with the recorder's office, irrespective of the date of execution of the documents at issue," he said. "This will obviously put at a disadvantage the legally un-savvy inventor," continued Barsocchini, San Francisco-based director of strategic consulting for Minneapolis-based NightOwl Document Management Services Inc. (aka NightOwl Discovery).
Of course, the change has some technology vendors drooling, or should I say, overtly gloating. "IP law firms and corporations both must adjust to this major shift," said Kurt Wedel, vice president, operations, at CPA Global's First to File Inc. (Its main product is a document management system called Electronic File Room.) "Efficiency and speed, but not at the sacrifice of quality, will be at a premium as inventors race to be first to file their patents," continued Wedel, who is based in the company's San Mateo, Calif., office. "AIA will reward patent counsel who are forward-thinking and have leveraged technology to be up-to-date, organized, and agile. Organizations that are still stuck in manual, paper-based workflow and record-keeping will either need to step up their game and modernize, or risk losing the patent race." (First to File was acquired last month by U.K.-based CPA Global (née Computer Patent Annuities) See LTN report here.)
For a summary of recent ALM reports on the ramifications of AIA, see " Will the New Patent Process Bring Hard Days for Inventors," by LTN associate editor Michael Roach.
>> #LegalTechAsia: T.J. Johnson, program manager, conferences, for the International Legal Technology Association, is back from Hong Kong, where ILTA and ALM joined forces to produce the inaugural LegalTech Asia Technology Summit, March 4-5, at the JW Marriott Hotel. Rohit Talwar, futurist and research consultant, delivered "an electrifying keynote" to launch the event, said Johnson. The topic was "Practical Magic: Emerging Technologies and their Impact on Business and the Legal Profession." Then he and Michele Gossmeyer (pictured below, right), president of ILTA and global management director at SNR Denton, led a related workshop, said Johnson. Hot points, she said, included:
Over the next five to seven years law firms will be transformed by a combination of advanced artifical intelligence and intelligent software agents, collaborative technologies, gesture interfaces, mind-reading technologies and electronic brain stimulation techniques that will enhance our cognitive functions.
The preference of next generations for virtual and artificial intelligence over face-to-face interactions will give rise to "law firms on a pad" or "lawyers on a pad" or "court, accessed via a pad." Non-traditional players with innovative business models based on technology are entering the legal field and challenging established law firms.
Security, data protection, data privacy will be the biggest challenges to overcome in the legal sector.
A "ubiquitous society" of "smart everything" is emerging, with the artificial and virtual overwhelming the natural and "real" in everything, including legal technologies.
In the future, all rules and laws might be incorporated into expert systems and chips embedded in the physical environment cars, appliances, doors, and buildings.
Predictive analytics, predictive coding, mobility, data lifecycle management, and workflow optimization technologies as well as collaborative technologies and virtualization are the technology developments that have been described as "most significant," in interviews Talwar has conducted with ILTA members, said Johnson.
The Hong Kong conference drew 130 attendees, she said. Most were "IT professionals in law firms in AsiaPac, heads of IT, knowledge managers, project managers, etc.; a few lawyers too." Seventeen educational sessions covered a wide range of topics, including knowledge management, data privacy, Microsoft Corp.'s SharePoint case studies about collaboration, emerging technologies, mobile access/BYOD (bring your own device to work), project management, risk management, e-discovery, global service models, social and consumer data analytics, information governance, and more. Speakers included lawyers and technologists from Big Law (Mayer Brown JSM; Baker Donelson Bearman Caldwell & Berkowitz; Clifford Chance; Norton Rose; DLA Piper; Skadden Arps Slate, Meagher & Flom; Simmons & Simmons; Baker & McKenzie, Dechert; among other firms); consultancies (Deloitte, Ernst & Young); vendors (sponsors Hewlett-Packard Corp. Autonomy, Cellebrite, Control Risks, and Nuix); and independent legal services consultant Chris Dale, of Oxford, U.K., who runs the e-Discovery Information Project. (Deloitte was lead sponsor of the event, others included MacroView, Symantec (Clearwell), Catalyst Repositories, and Transperfect.)
Johnson cited two favorite moments "that had the same flavor for me. First, the KM panel, with people from Hong Kong and the People's Republic of China, engaged the audience in a discussion around the differences in KM around the globe. They included a U.S. KM person in the audience in the discussion as well," Johnson recalled. "The audience just seemed to love hearing what was said. They just looked hungry for the education and soaked it in." The second was the data privacy session. "The audience was totally engaged in talking about the differences in various countries and where the challenges are. They seemed startled by what they heard," Johnson remembered. "They went away with a clear picture of data privacy issues they need to address in their firms."
Photo (click to enlarge): Stuart Kay (Baker McKenzie), Meredith Williams (Baker Donelson), and Berys Amor (Corrs Chambers Westgarth), speaking on "Sharepoint: Cutting-Edge Case Studies of Collaboration." Photo by T.J. Johnson.
>> #LTWC: Judy Kelly and the LegalTech gang have just announced the LegalTech West Coast 2013 keynote speakers: May 21, D. Casey Flaherty, corporate counsel at Kia Motors. If that name sounds familiar it's because he has been writing extensively for LTN about his technology audits during beauty contests. He'll speak on May 21 about "Raising the Bar on Technological Competence the Outside Counsel Tech Audit." Definitely mark your calendar! Day 2 (May 22) will be Andrew Serwin, who will talk on "Information Superiority Helping Your Company Make Superior Use of Information. He is chair of Foley & Hardner's privacy security and information management practice, and CEO/executive director of The Lares Institute. Both programs will offer CLE credits. Information: www.legaltechshow.com.
>> Musical Chairs: Markham Erickson has joined Steptoe & Johnson LLP as a partner in the firm's telecom, internet, and media practice, based in Washington, D.C. He serves as general counsel to The Internet Association and serves as lead counsel to a coalition of internet and technology firms that promote open internet rules, the firm notes.
The Cowen Group has promoted Maribel Rivera to vice president. She will continue to provide project leadership and oversight of the company's events, and "a key role in company operations and oversee all marketing initiatives," said managing partner and CEO David Cowen.
TRU Staffing Partners has named Laney Altamar as senior vice president of business development and executive placement. She will oversee several new business units, and work directly with law firms to develop, staff, retain, and market e-discovery practice groups, said Jared Coseglia.
>> Advice for the Pontiff: Attorney/communications consultant James Haggerty, a columnist for our sibling publication, Corporate Counsel, offers some sound advice for the Pope Francis I, in "Crisis Management Tips for the Pope (and Other CEOs)." Notes Haggerty: "The pope does have a few tools other CEOs dont possess, of course, not the least of which is a perception among the Catholic faithful of infallibility." Haggerty suggests that the Pope "use a simple system called 'Control, Information, Response." Check it out here.
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Monica Bay is editor-in-chief of Law Technology News and a member of the California Bar. Email: email@example.com. Twitter: @lawtechnews @LTNMonicaBay.