9 Jan

Jim White

VLP Law Group LLP

Jim White


You worked in-house before becoming a private practice lawyer, what insights did you gain in your previous career that have helped you with your current one?

I worked as a software engineer for several years in Silicon Valley before becoming a patent attorney in private practice, procuring software and internet-related patents. I have found that my technical work experience, as well as the knowledge that I obtained from my earlier computer science coursework, have been essential in enabling me to obtain the best patent protection for my clients, as they allow me to be more effective in assessing the ideal scope of patent protection to pursue in light of existing prior art and future trends in the relevant industries. In addition, my experience as a software engineer enables me to interact more effectively with inventors who are software engineers, including by addressing questions and concerns about the business value of pursuing software-related patents.

What qualities do top-class patent prosecution professionals need to possess?

Top-class patent prosecution professionals need to have a relatively rare combination of qualities, including outstanding technical knowledge, verbal communication skills and writing skills. Technical skills in a particular area are essential to understanding clients’ inventions, assessing how they differ from prior art by others and determining how to present the advantages of the invention in a manner that is understandable by a non-technical audience (eg, a lay jury in a patent enforcement lawsuit). Verbal communication skills are vital to be able to interact effectively with clients, including both the technical inventors and the high-level business personnel. In addition, verbal negotiations with patent office personnel are frequently the best way to obtain strong patent protection. Writing skills are also indispensable, as a patent application is widely considered to be the most difficult legal document to prepare, and the scope of protection is limited by the patent prosecution professional’s ability to effectively describe and claim the inventions being pursued.

What does a high-quality patent look like?

Effective patents require a minimum amount of description (eg, multiple figures, claims and a technical description), but a high-quality patent is less about quantifiable metrics (eg, a number of pages or claims) and more about the correct scope of the invention’s description. This includes presenting the invention in a way that emphasises how the patent solves problems in the prior art and highlights the technical aspects of the invention. An effective patent will also include a careful selection of claim terms to use and corresponding descriptions in the technical description to define the scope of those terms, which is often done by using multiple examples to illustrate the breadth of the terms. Perhaps most importantly, a high-quality patent is not only about what is included in the patent application, but also what is not included – applicants must present the invention in a manner that provides the strongest protection for the claims that are allowed.

Is it still possible to get high-quality software-related patents in the United States post-Alice?

Absolutely, although it can be more difficult if an invention focuses on subject matter areas that are currently disfavoured (eg, financial services, advertising and sales). The issues surrounding Alice and its progeny make it even more important to employ a patent prosecution professional who understands the issues and produces high-quality materials to address them, including drafting patent applications that minimise the chances of corresponding rejections arising and maximise the chances of overcoming such rejections if they do arise.

In which technologies are you seeing the most growth in patent interest currently?

In recent years, interest in patent protection relating to AI techniques has boomed. Since AI was my area of emphasis in both school and my career as a software engineer, it is exciting to see patenting activities catch up to some of the technical areas in which I have the most expertise. In addition to AI, blockchain and autonomous driving are areas that have seen  a lot of growth in software-related technologies, and quantum computing and virtual and augmented reality are areas that could see significant growth in the not-so-distant future.

Jim White

Partner [email protected]

Jim White is a partner in VLP Law Group’s patent procurement group, specialising in procuring computer software and internet-related patents in a wide variety of technical areas. He received his JD from the University of California, Berkeley (Boalt Hall), after working as a software engineer in Silicon Valley for more than six years, using Stanford University degrees that include an MS in computer science and a BS in symbolic systems (with an emphasis on AI). 

VLP Law Group LLP

7683 SE 27th Street, #145

Mercer Island WA 98040

United States

Tel +1 206 905 8188

Fax +1 206 800 3299

Web https://www.vlplawgroup.com/