Paul Harrity Selected by Managing Intellectual Property as a 2019 Patent Star

Firm News ,

Harrity & Harrity is pleased to announce that Partner Paul Harrity was recently selected by Managing Intellectual Property, the leading specialist guide to IP law firms and practitioners worldwide, as a 2019 “Patent Star.”  Paul was recognized as a Virginia practitioner in the areas of patent prosecution, patent strategy and counseling. The annual “IP Stars” list recognizes leading lawyers and law firms for intellectual property work in more than 75 jurisdictions.

Paul is a patent attorney in the firm’s Fairfax, Virginia, office where he focuses on preparing and prosecuting patent applications.  He began his career in 1991 as a patent agent at the United States Patent and Trade Office.  Since leaving the USPTO, Paul has prepared hundreds of patent applications and thousands of Patent Office responses.

Facebook
Facebook
Twitter
LinkedIn
Share

Plan Before You File: 3 Key Considerations in Patent Preparation

Articles ,
By Daniel Jebsen, Associate

It’s Monday, and your client comes to you with an urgent request for help: there will be a disclosure of an invention on Friday, and they’d like to file a patent application before that disclosure.  No problem, you can prepare a patent application for filing in a few days.  Other than the details of the invention itself, what do you need to consider when filing a patent application?  One easily overlooked issue, particularly in such a rush scenario, is the impact of inventor location, residency, and citizenship on your patent application filing.

Many jurisdictions, including the United States (see 35 U.S. Code § 184), impose some type of restriction on first filings outside of the jurisdiction (i.e., foreign first filings).  Such restrictions can be imposed on, for example, applications for inventions made in a given country, applications by inventors who reside in a given country, and applications by inventors who are nationals of a given country.  Note: the World Intellectual Property Organization (WIPO) has posted a list describing known filing restrictions for some Patent Cooperation Treaty (PCT) contracting states.

Some jurisdictions with foreign filing restrictions allow foreign first filing only with permission from the patent office (i.e., after obtaining a foreign filing license).  However, the amount of time needed to obtain a foreign filing license can vary from days to weeks, or even months, depending on the jurisdiction.  Some jurisdictions, such as Russia, do not allow foreign first filings at all and, as a result, do not grant foreign filing licenses.  Therefore, a very early consideration in the patent application preparation process should be whether inventor location, residency, and/or citizenship will dictate timing and/or jurisdiction of your first filing.  These scenarios can become quite complex when inventors are located in, reside in, or are citizens of different countries, and even more complex when an urgent filing is needed.

For example, maybe Inventor A is located in, resides in, and is a citizen of Country X, Inventor B is located in, resides in, and is a citizen of Country Y, and Inventor C is located in and resides in Country X, but is a citizen of Country Z.

Here are three steps to take before filing a patent application that should help preserve your invention’s first-to-file status:

  1. Before filing a patent application, the first step is to identify whether Country X, Country Y, and Country Z impose foreign filing restrictions based on the inventor relationships to the relevant jurisdictions. In this example, assume that Country X imposes a foreign filing restriction on applications made in Country X, Country Y imposes a foreign filing restriction on residents of Country Y, and Country Z does not impose a foreign filing restriction on citizens of Country Z.
  2. The second step is to determine whether permission for a foreign filing can be requested from any of these jurisdictions that impose such a restriction. Here, perhaps permission for a foreign filing can be requested from offices of both Country X and Country Y.
  3. The third step is to determine an approximate amount of time typically needed for a request for a foreign filing to be reviewed and (hopefully) granted. In our relatively simple example, perhaps a foreign filing license can be obtained from the Country X office in 3-4 days, but a foreign filing license from the Country Y office may take 4-6 weeks.  An attorney licensed in a given jurisdiction may have strategies for trying to expedite the review/grant process.

As you can probably imagine, results of these inquiries can dictate where and how quickly the patent application can be filed.  In the above example, if timing is urgent, a first filing in Country Y after obtaining a foreign filing license for Country X may be a workable strategy.  Conversely, if timing is not an issue, a first filing in Country X after obtaining a foreign filing license for Country Y may be the way to go.

Of course, it is advisable to contact the relevant patent office or an attorney licensed in a given jurisdiction in order to ascertain detailed information for a given jurisdiction.

In summary, inventor location, residency, and/or citizenship can have a significant impact on timing and/or jurisdiction for a given filing.  Therefore, foreign filing considerations should be handled as early as possible during the patent application preparation process.

Facebook
Facebook
Twitter
LinkedIn
Share
Patent 300 Harrity Analytics

Law360 Covers the Release of Harrity’s Patent 300™ Report

Firm News , , ,

Following the release of Harrity’s Patent 300™ Report, Law360 published an article, “IBM, Samsung, Canon Led 2018 Patent Gains, Report Says,” highlighting the key features and benefits of the patent rankings. The Patent 300™ Report lists companies, organizations and universities by the number of utility patents they received in 2018.

As the Law360 article describes, “The report, totaling more than 1,200 pages, takes a deep dive into each ranked company. For example, it breaks down that IBM has a revenue of nearly $80 billion and more than 360,000 employees. It then shows that the company received 9,111 utility patents in 2018.”

According to Rocky Berndsen, head of Harrity Patent Analytics, “The goal was really to provide something that’s going to be valuable across the spectrum of the IP community.” In-house attorneys can use the report to compare themselves against other companies, and law firms can leverage information in the report to develop business for their clients.

A spokesperson for Intel praised the report for recognizing innovation in the tech industry. “Every day, our engineers and other employees push the boundaries of computing and communication technologies, and we’re proud that the value of their inventions is recognized.”

Find the Law360 article HERE (subscription required) and more information on the Patent 300™ Report here.

Law360 Interviews Eli Mazour regarding latest Clause 8 Podcast

Firm News , , , ,

Following the release of Eli Mazour’s Clause 8 podcast interview with Makan Delrahim, Law360 published an article, “DOJ Antitrust Chief Wants To Take Thumb Off Patent Scales,” highlighting the impact of antitrust law on the patent field.

As the Law360 article describes, “Key to Delrahim’s ire is a 2013 guidance put out both by the DOJ and the U.S. Patent and Trademark Office that generally discouraged the use of injunctions and import bans sought by patent holders enforcing their technology.”

Find the Law360 article HERE (subscription required) and more information on the Clause 8 podcast here.

Kris Rhu Harrity Team

Using Data to Improve Patent Prosecution Performance

Articles, Patent Analytics , ,
By Kris Rhu

How many office actions should I expect? Should I file an RCE or a Notice of Appeal? Is it worth filing a Pre-Appeal? These, among others, are common questions that practitioners may ask themselves during patent prosecution. In the past, they were mostly unanswerable questions. Now, using data analytics, we can get a better sense of how the patent prosecution process will go and be able to make an informed decision when a crossroad is reached.  Below, we will explore how to use statistics about a patent Examiner, which are based on public data provided by the USPTO, during patent prosecution.  I have provided example screenshots from Patentprufer, which was developed by Harrity & Harrity.

Examiner’s Allowance Rate

By looking at an Examiner’s allowance rate (i.e. allowance vs. abandonments), we can get a sense of the journey early on.  A high allowance rate is an indicator that the Examiner likely has no qualms about allowing applications, and that the Examiner likely will not stubbornly stick to poor rejections.  For these types of Examiners, if appropriate, it may be worth taking a more assertive initial position, including arguing that the rejections should be withdrawn or offering modest amendments.  If the Examiner’s allowance rate is low, you may want to consider substantial amendments, get the Examiner’s Supervisor involved early in the process, or anticipate the need to possibly file an appeal.

Office Actions per Patent, RCEs per Patent

A high office action (OA) per patent and/or RCE per patent rate may be an indication that reaching allowability will be challenging.  These types of Examiners likely are unafraid to combine three, four, or even five references to make prior art rejections.    To get a patent application allowed in a more efficient manner than an examiner’s statistics suggest, a more proactive posture may be needed from the beginning.

Examiner Interview Statistics

Generally speaking, it is beneficial to interview an Examiner as it gives a practitioner an opportunity to get a better sense of the Examiner’s interpretations of the application and the applied references, and an opportunity to explain the invention.  A high interview success rate (i.e. interviews that lead to an allowance in the next office action) may be an indicator that the Examiner uses interviews as opportunities for compact prosecution.  Some of these Examiners may even provide suggestions for amendments that would lead to allowance.  If the interview success rate is low for the Examiner, consider sending a substantive interview agenda with proposed amendments to maximize the chance of reaching an agreement with the Examiner.

A comparison of a patent Examiner’s final rejection allowance rate with and without AFCP may be an indicator of whether the Examiner takes the AFCP process seriously.  If there is a significant difference with those rates, the Examiner likely uses the allocated 2-3 hours to find a way to allow the application.  However, if the rates are similar, the Examiner likely uses pre-pilot procedures regardless of whether an AFCP is filed.

Pre-Appeal Statistics

Pre-Appeal statistics can be useful when deciding whether to file an Appeal Brief or a Pre-Appeal Brief.  A high rate of allowance and/or re-opening of prosecution when pre-appeals are filed may indicate that it is worth presenting arguments in a Pre-Appeal Brief.  However, a low rate of allowance and a low rate of re-opening of prosecution may indicate that it would be better to forego the pre-appeal process and go straight to appeal.

Appeal Statistics

Analyzing a patent Examiner’s appeal statistics may be useful in determining whether to file an appeal or an RCE.  If the Examiner’s rate of allowance and/or re-opening of prosecution after appeal is high, it may be worth appealing rather than filing an RCE and avoid narrowing claims unnecessarily.

If the Examiner’s board decision success rate is high, it may be an indication that the Examiner goes to the Board only when he/she believes that an examiner’s answer would be particularly strong.  If you receive a compelling examiner’s answer from these types of Examiners, consider filing an RCE rather than going to the Board.

Conclusion

Just like how data analytics has improved efficiency in other industries, using examiner analytics can improve the efficiency of patent practitioners and the patent prosecution process.

Facebook
Facebook
Twitter
LinkedIn
Share
Patent 300 Harrity Analytics

Harrity Patent Analytics Releases Patent 300™ Report

Firm News, Patent Analytics ,

HARRITY PATENT ANALYTICS RELEASES PATENT 300™ REPORT

Report ranks and analyzes top 300 companies, organizations, and universities in the patent field

WASHINGTON (May 6, 2019) – Harrity Patent Analytics today released the publication of its inaugural Patent 300™ Report, the intellectual property industry’s premier resource for patent insights and competitive intelligence on the world’s leaders in technology. The report ranks and analyzes the top 300 companies, organizations and universities in the patent field, and contains more than 1,200 pages of patent portfolio analyses, detailed patent prosecution insights, technology area breakdowns, and portfolio cost and budget analytics.

The Patent 300™ Report provides in-house counsel, law firm partners, and c-suite executives with a detailed analysis of the world’s technology leaders, ranging from technology giants such as IBM (ranked #1) and Samsung (ranked #2), to leading universities such as MIT (ranked #114) and Johns Hopkins University (ranked #254), to newcomers including Uber (ranked #300) and GoPro (ranked #300).  The list represents 54 percent of the more than 300,000 U.S. patents issued in 2018.

“The Patent 300™ Report provides a wealth of information about the technology leaders obtaining patents in the United States,” said John Harrity, managing partner for Harrity & Harrity, the parent law firm of Harrity Patent Analytics. “The data contained in this report is invaluable information to companies, in-house counsel and law firms because it identifies the key players and summarizes what is happening today in the patent world.”

Key findings and trends from the Patent 300™ Report include:

  • 68.5 percent of Patent 300™ patents were in the electrical, software, and computer-related technologies, with 19 percent in mechanical, 9.1 percent in chemical, and 3.4 percent in biological technologies.
  • 122 of the Patent 300™ obtained patents in the semiconductor/memory technology area, making it the largest technology area at 8.8 percent of the Patent 300™.
  • Four of the top five companies had a decrease in the number of patents obtained in 2018 as compared to 2017.

A ranking of the top 300 companies, organizations and universities can be found here.

The full report is available to media upon request.

About Harrity Patent Analytics

Harrity Patent Analytics, an analytical team within the boutique IP law firm of Harrity & Harrity, LLP, uses cutting-edge capabilities to analyze patent data and extract insights for clients to use when making strategic decisions regarding patent portfolios. Patent 300™ companies rely on Harrity Patent Analytics services to understand their patent portfolios, the patent portfolios of their competitors, and patent office trends around the world. For more information, visit harrityllp.com/services/patent-analytics/.