Lawyers everywhere, but what about patent lawyers? Will having more of them in Hawai'i increase our patent filings?

To practice patent law before the U.S. Patent and Trademark Office, a lawyer must be admitted to the agency's patent bar. For that, you have to have a law degree and a degree in science, and you must take a test. It isn't that easy, so there aren't that many of them.

The Martindale-Hubbell law directory shows eight patent lawyers in Hawai'i — Leighton Chong, Sayoko Blodgett-Ford, Robert Godbey, Martin Hsia, Shannon Imlay, Patricia Ray, Joshua Strickler and Sharon Webb. There may be others not in the directory.

To learn about the patent bar, I asked these eight about their practices, and five replied — Bob, Leighton, Martin, Shannon and Sharon. Joshua is understandably occupied - the governor just appointed him as the state's first "Renewable Energy Facilitator."

SENDING IT TO THE MAINLAND

Of the 22 patent applications by Hawai'i inventors published this year, one was prosecuted by a Hawai'i law firm. The other Hawai'i inventors used patent lawyers in Los Angeles, New York, Palo Alto, Washington, D.C., Chicago, Anaheim, Scottsdale, Irvine, Syracuse and San Francisco.

Bob says patent matters rarely exceed 20 percent of his practice, Martin spends 80 percent of his time on them, Leighton spends 90 percent of his time on them, Shannon in Maui spends only 5 percent of her time them, and Sharon spends all of her time on them. Some are more specialized than others.

All of our patent lawyers agree that fees are higher on the Mainland, and all of them refer at least some specialized patent work to correspondents there. Wouldn't it be great if we could do all this work here?

HUGGED YOUR PATENT LAWYER TODAY?

Many Hawai'i executives don't even look for local patent counsel. They go straight to the Mainland on a knee-jerk basis. Actually, this is the case in many business areas, not just intellectual property.

Leighton says the biggest problem is that many tech executives view intellectual property protection as an "add-on episodic expense" to be avoided or minimized, rather than as a necessary business practice. As a result, the metrics show that Hawai'i patents are one-fourth the national average.

Martin adds that "investors in tech companies here who have Mainland venture capital or law firm connections tend to encourage their portfolio companies to use Mainland IP firms, and even Hawai'i investors and principals labor under the misapprehension that Mainland firms do better work and give more value for the high prices they charge."

On the other hand, Mainland patent firms serve the invaluable function of introducing Hawai'i clients to venture capital sources there.

DON'T WASTE YOUR TIME

Filing for patents should be market-driven, Bob says, and "no one should apply for a patent without having a business plan that provides a business justification for spending the money required."

Bob encourages small inventors to contact the Wisconsin Innovation Service Center at the University of Wisconsin for help in investigating the market for their products. He wishes that UH would develop a similar program. "If you invent a grand widget substitute that sells for $50 each, but plain old widgets sell for $25 each, it may not make good business sense for you to pay to get a patent for your widget substitute," he says.

Leighton feels the quality of inventions needs to increase to meet higher legal thresholds for patents — the key to better quality is better research and development. "Unfortunately, most Hawai'i inventors go only as far as dreaming up an idea without doing the R&D to prove the concept and generate the test data to support it," he says. Compared to Silicon Valley, most Hawai'i tech companies are underfunded for R&D.

Martin doesn't feel it's the number of patents that's important, but rather the quality of the technology. Like the others, he discourages inventors from applying for patents which don't make economic sense, especially after the KSR v. Teleflex case in 2007, where the Supreme Court raised the legal standard of "nonobviousness" for new patents.

BUSINESS EDUCATION

Leighton would remind us that the value of tech companies is largely in intellectual property (trademarks, copyrights, patents). He points out that "IP protection would cost no more than what companies pay for insurance of their management and operations, yet few Hawai'i tech companies protect the IP that constitutes the majority of their value."

He finds that the failure to protect IP is because the current generation of CEOs is trained in the old style of corporate management, which is growth and sales oriented. He feels the only way to produce a change in corporate mentality is to educate the new entrepreneurs to understand the real value of intangible assets in modern day companies.

Sharon says as inventors become more familiar with the patent system, they'll see the value in disclosing inventions and filing patent applications to protect them. She thinks education about patents is the key to empowering inventors and inspiring more patent applications.

THE BOTTOM LINE

Education may help over time, but for the moment, I suggest our patent bar is at an acceptable level for our industry. Although they are not as specialized as their Mainland counterparts, they are competent, and their fees are competitive with the Mainland. At this point, beefing up the bar is not likely to increase the number of Hawai'i patents.

But we can't stop. Leighton says "we need to increase patent filings by at least four times to keep pace with our Mainland competitors, and even more so now that Hawai'i is entering a race in renewable-energy technologies where we have distinct energy and material resource advantages."

The question remains of how to increase patent applications from Hawai'i. The answer is that we need to encourage and incentivize our inventors, and to build and perpetuate mechanisms to provide them with all the capital funding they need.

Jay Fidell is a business lawyer practicing in Honolulu. He has followed tech and tech policy closely and is a founder of ThinkTech Hawai'i.