Harrity & Harrity is pleased to announce that Paul Harrity & Elaine Spector were recently selected by Managing IP, the leading specialist guide to IP law firms and practitioners worldwide, as 2023 Patent Stars.
The annual “IP Stars” list recognizes leading lawyers and law firms for intellectual property work in more than 125 jurisdictions.
Paul is Harrity’s Managing Partner. 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.
Elaine is a Partner at Harrity and has over 20 years of experience in intellectual property law. Her current practice consists primarily of prosecuting patent applications with a focus on electromechanical technologies. Prior to joining Harrity & Harrity, Elaine worked in private practice for over 15 years handling various intellectual property matters, including patent application drafting and prosecution, trademark prosecution and enforcement, as well as litigating complex patent cases in federal courts. Elaine’s extensive litigation experience provides her with a unique perspective in prosecuting patent applications.
Hello there, fellow patent enthusiasts! We’re back this week with Neil Kardos’ Practical Patent tips, as he explains how drafting claims capable of being infringed by a single party (as opposed to multi-party infringement) enhances the enforceability of your patent rights. Neil shares a pattern that he has found immensely useful in drafting such claims, particularly for process-based inventions. The pattern revolves around three key steps: Reception, Determination, and Transmission.
1. Identify the Inventive Device: “Where is this Invention Happening?”
When working with a process-based invention, it is essential to pinpoint the inventive device. This could be a server on the back end, a client device on the front end, or a router. Understanding the core hardware is the foundation for creating robust and clear claims.
2. Determine the Trigger: “What Triggers the Inventive Device to Perform the Invention?”
The inventive process often begins with a reception or “receive” step. Knowing what triggers the inventive device allows you to craft the initial steps of your claim more accurately.
3. The Novelty Lies in Determination: “What Does the Inventive Device Do With the Information?”
This stage often includes one or more “determine” steps and usually houses the novel aspects of the invention. The language here might vary, but focusing on what the inventive device does with the received information is pivotal.
4. Conclude with Transmission: “What’s the Result?”
Often, the inventive process concludes with a “transmit” step. Identifying what the inventive device does with the determination helps in framing the claim in a manner that aligns with single-party infringement.
Neil Kardos’ pattern of (1) Reception, (2) Determination, and (3) Transmission serves as an efficient framework for drafting patent applications for process-based inventions. While not universally applicable, it offers a cohesive approach to ensure claims are infringeable by a single device, and hence, a single party that controls that device.
Understanding the nature of the inventive device, the sequence of steps involved in the invention, and the novelty can streamline the claim-drafting process. This methodology not only simplifies the legal proceedings for clients but fosters innovation by providing a clear pathway to protect new inventions.
Thank you for reading, and we invite you to explore more insights and strategies in the patent field on our Practical Patents blog. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!
Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.
Want more tips? Check out other Practical Patents videos with Neil Kardos here!
Elaine Spector shares her candid thoughts on law firms requiring an in-person return to office as we transition into a post-COVID environment below.
“I get so frustrated when I hear about another Biglaw firm requiring their lawyers to return to the office full-time with minimal remote work options. While various factors may drive these changes, they have the potential to affect lawyers, particularly those with families, disproportionately.
Remote work has proven to be a game-changer for many professionals, allowing them to effectively manage their careers and personal responsibilities. The legal field is no exception, as countless lawyers have thrived while juggling complex cases and family commitments from the comfort of their homes. However, a shift away from remote work in certain Biglaw firms could inadvertently create an uneven playing field, disadvantaging those who rely on remote work options to maintain a healthy work-life balance.
Lawyers with families, in particular, could face challenges due to this shift. Many parents find remote work a lifeline, enabling them to be present for their families while delivering exceptional legal services. Eliminating or limiting remote work opportunities may unfairly bias these dedicated professionals. It doesn’t need to be this way.
When I went remote six years ago, my life completely changed. I didn’t have to waste time in my car commuting, and I could attend to my family and work more readily. I was so much less frazzled and present and happy. I became a top biller and a top rainmaker. Don’t you all want your lawyers to feel balanced and happy? I guarantee they will overperform if they are.
Are you feeling frustrated by the return to the office edicts? I’d love to hear your comments.”
Want more? Watch Elaine Spector’s Driving Diversity series HERE. Elaine shares tips and sparks conversations to drive diversity in the legal field in this weekly short-video series.
In a remarkable acknowledgement of excellence, Elaine Spector, a partner at Harrity & Harrity, has been awarded the 2023 Stars of the Bar Award by the Women’s Bar Association of the District of Columbia (WBA). This award celebrates women who have made significant contributions to the legal community and is emblematic of Elaine’s steadfast commitment to the principles that define her legal career and our firm’s mission.
About the Stars of the Bar Award
The Stars of the Bar Award is an annual recognition by the WBA Foundation, designed to honor exceptional women attorneys who have demonstrated leadership, community service, professional growth, and commitment to the WBA’s mission of maintaining the honor and integrity of the profession. This award adds to Elaine’s rich legacy of excellence in the legal community.
Dedication to Diversity
Elaine’s work in promoting diversity within the patent field echoes Harrity’s focus on increasing diversity and championing underrepresented groups in intellectual property law. Her alignment with the values recognized by the Stars of the Bar Award further emphasizes her dedication to this vital cause.
Innovation and Quality
Elaine has actively contributed to our firm’s endeavors in automation, quality, analytics, and innovation. Her role in building a progressive environment aligns with the innovative spirit rewarded by the Stars of the Bar Award and highlights Harrity’s leadership within the patent law industry.
Community Involvement
A firm believer in giving back, Elaine’s community involvement resonates with Harrity & Harrity’s values and the WBA’s focus on community service. Her generous efforts have fostered a culture of responsibility and compassion, reflecting the ideals celebrated by the Stars of the Bar Award.
Elaine Spector’s receipt of the 2023 Stars of the Bar Award by the Women’s Bar Association of the District of Columbia is a notable acknowledgment of her professional excellence, innovation, commitment to diversity, and community service. This award aligns perfectly with Harrity & Harrity’s values, making it a proud moment for our firm. We extend our heartfelt congratulations to Elaine and eagerly anticipate her continued achievements in patent law.
Want more? Watch Elaine Spector’s Driving Diversity series HERE. Elaine shares tips and sparks conversations to drive diversity in the legal field in this weekly short-video series.
Greetings, fellow patent enthusiasts! We’re back this week with Neil Kardos as he shares invaluable insights into handling different types of IDFs in preparation for inventor interviews.
Understanding the “Good IDF”
According to Neil, IDFs commonly fall into three categories: the “good IDF,” the “sparse IDF,” and the “huge IDF.” In this particular discussion, he zeroes in on the “good IDF,” which many practitioners would consider the dream scenario.
With a “good IDF”, you find that the materials clearly elucidate the workings of the invention. You read through them, and you have a lucid grasp of the concept. There might be minor details that elude you, but for the most part, you understand it.
But here lies the pitfall.
The Trap of the “Good IDF”
If you’re operating in a fixed-fee world, it may be tempting to expedite the inventor interview. Neil narrates a familiar sentiment: “Thank you so much inventor. The materials you shared are fantastic, and I understand your invention. I just have two quick questions, and then we can both be on our way.”
This approach, Neil warns, is a grave mistake for two reasons:
The Human Connection: You might perceive yourself to be in the patent business, but, as Neil underscores, you’re really in the people business. This interview might be the inventor’s only chance to thoroughly articulate their invention to someone. Rushing through the process might lead the inventor to think that you’re not giving their project the attention it deserves.
Missing Out on Insights: Without delving into the invention, you may overlook misunderstandings or additional features the inventor wants to emphasize. Moreover, rushing the interview may rob you of the opportunity to brainstorm on the call, possibly missing key aspects that could enhance the patent’s value.
Conclusion: Embrace the Process
Neil’s parting wisdom is this: don’t succumb to the allure of the “good IDF” by thinking that you can bypass the inventor interview. You might save some time, but the loss in understanding and human connection will cost you in the long run.
His advice is not merely about patent law but transcends into the realm of human relations and communication. Thanks for watching, and we hope this guidance from Neil helps those venturing into the complex and nuanced world of IDFs. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!
Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.
Want more tips? Check out other Practical Patents videos with Neil Kardos here!
Greetings, fellow patent enthusiasts! We’re back this week with valuable insight from Neil Kardos as he unveils a strategic approach for acquiring comprehensive information about an invention when faced with limited initial documentation. In scenarios where only the title of the invention or a few descriptive sentences are available, this guide can be instrumental.
Understanding the Challenge
Sometimes, patent professionals receive scant details about an invention before an inventor interview. Reaching out to inventors for more information might be an option, but not always feasible. In such a scenario, Neil has perfected an approach that’s applicable to virtually any technology.
A Generic Outline of Questions
Years ago, Neil created a generic outline of questions, adaptable to different technological contexts. When dealing with a sparse disclosure document, this outline can be supplemented with specific inquiries about the invention.
High-Level Orientation
The outline begins with broad questions to set the context:
What is the background and context for this invention?
What is the problem being addressed?
What are the advantages of this invention over alternatives?
What are the novel elements of the invention?
How does the invention align with business strategy?
Detail-Oriented Approach
After establishing the context, Neil delves into the intricacies. His inquiry typically focuses on two general questions:
How does the invention function step by step? This question seeks to uncover the mechanisms, alternatives, and possibly the independent claims and flowcharts of the patent application.
In what environment does the invention operate? This inquiry aims to identify crucial devices or components that elucidate how the invention functions.
Practical Recommendations
Drawing from his extensive experience, Neil recommends patent professionals to compile their list of questions or adapt his outline to individual needs. Being prepared with these questions ensures that even with minimal information, one can glean everything necessary about the invention during the inventor interview.
In conclusion, navigating an inventor interview with limited information need not be a daunting task. By following Neil’s structured approach, patent professionals can master the art of extracting vital information about an invention. His advice stands as a testament to effective preparation, innovation, and adaptability within the patent field, helping to ensure clarity and thoroughness in each patent application.
Thank you for reading! We hope these tips help you improve your patent drafting skills. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!
Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.
Want more tips? Check out other Practical Patents videos with Neil Kardos here!
Greetings, fellow patent enthusiasts! We’re back this week with valuable insight from Neil Kardos on dealing with a common challenge faced by patent practitioners: receiving an overwhelming amount of invention disclosure materials prior to a call with inventors. While most patent professionals might be familiar with handling situations where there is too little material, Neil sheds light on what to do when faced with an abundance of information that can potentially consume an entire day of review.
Navigating the Flood of Invention Disclosure Materials: When confronted with a plethora of materials, Neil advises that the first step is to skim through the documents to get an overall sense of the content. The main objective at this stage is to identify technical information and elements that appear new and innovative. Making a note of the slides or pages that contain interesting technical content is crucial to preparing efficiently for the inventor call.
Framing the Conversation: Once Neil has an idea about the potential new features, he supplements his regular outline of questions for inventor interviews with inquiries specifically related to those features. This tailored approach allows him to focus the conversation on the most relevant and critical aspects of the invention. During the inventor call, he also sets the tone by addressing the abundance of materials and enlists the inventors’ help in identifying content that is pertinent to the patent application, particularly focusing on the novel technical aspects.
Efficiently Capturing the Invention: By framing the conversation around the key features and focusing on what’s new and innovative, Neil ensures that the conversation is purposeful and streamlined. This approach enables him to efficiently capture and flesh out the details of the invention without being bogged down by unrelated or extraneous material.
Confirmation and Adaptation: During the call, if the inventor verifies Neil’s assumptions regarding the new features, he proceeds with his supplemented outline of questions to delve deeper into the invention’s specifics. Additionally, he makes sure to address the slides or pages that he earlier identified as important. However, if his initial assumptions were incorrect, Neil seamlessly transitions back to his original outline of questions to gain a comprehensive understanding of the invention.
In conclusion, handling an overwhelming amount of invention disclosure materials can be daunting, but using Neil’s practical approach provides valuable guidance for patent practitioners facing this challenge. By quickly skimming through the materials, focusing on the new and interesting technical aspects, and seeking the inventor’s input, one can efficiently navigate through the flood of information and conduct a productive and insightful inventor call. This not only saves valuable time and effort but also ensures that the patent application process is effective and aligned with the invention’s core features.
Thank you for reading! We hope these tips help you improve your patent drafting skills. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!
Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.
Want more tips? Check out other Practical Patents videos with Neil Kardos here!
