From Software To IP Consultants

Most arguments against software patentability I've heard display a lack of understanding about how the patent system actually works. And some in the IT world hold the view that anyone who speaks in favour of software patents is a tool of Microsoft.

Here is an analysis written by a colleague of mine about the patentability of software in New Zealand. It summarises and then critiques the main arguments against software patentability.

******

IP Watchdog's Gene Quinn writes that his company is being sued by a company called Invent Help. They are apparently an organisation that, for a fee, encourages people to list their ideas. It seems this crowd handle everything from the patenting of inventions to the eventual licensing of them - and it would appear from Quinn's articles that they do it badly.

The invention submission business looks to be quite big in the US. I'm not aware of anyone doing anything similar in any significant way in New Zealand. I'm aware of a number of IP consultants in this country who purport to assist inventors with their ideas, and who claim they can help commercialise them. Some of these consultants may have skills to offer inventors, but to my knowledge none of them has expertise in patent law. Those consultants who get results are the ones who work with the experts – the patent attorneys who can help devise patenting strategies, and the licensing lawyers who can ensure any commercial deal protects the inventor.

I can think of a couple of reasons why a “one-stop-shop” invention submission business would be hard to set up and maintain in New Zealand (other than the ever-present problem of small market size).

Privilege rules

Privilege and disclosure rules in New Zealand make it dangerous for IP consultants to get involved in giving advice around patentability and freedom to operate. Dealing with these issues is critical to the successful commercialisation of an invention.

For example, a patent attorney’s patent search report subsequently disclosed by the inventor client to its IP consultant may be discoverable in subsequent infringement proceedings. That is because, although the law treats as privileged communications between the lawyer/patent attorney and the client, privilege can be lost if the client discloses to others. If privilege is lost a client may be compelled to produce a copy of any such report during proceedings. This could be a problem for the client if the patent attorney’s report is unfavourable, for example if it concludes that the client’s prospects of obtaining a strong patent are low.

Not able to give legal advice

The Lawyers and Conveyancers Act 2006 makes it difficult for IP consultants to provide advice to clients on legal or patenting matters. In most cases you need to be a lawyer holding a practising certificate if you intend to give legal advice, or to hold yourself out as a lawyer. So IP consultants who claim to have legal expertise can get themselves into trouble.

And the rules governing who may hold practising certificates make it difficult for multi-disciplinary IP practices (e.g. containing both practising lawyers/patent attorneys and commercial consultants) to operate. Many in the patent attorney profession have direct experience of the efforts to which the Law Society will go to protect its monopoly on the giving of legal advice. During submissions over the (then) Lawyers and Conveyancers Bill, the Law Society displayed an aggressive hostility to the prospect of lawyers and patent attorneys being in partnership together, or sharing income. That hostility suggests that anyone else who moves onto the turf of lawyers will be in for a rough ride.