Streamlining Patent Prosecution: A Proven Strategy for Navigating Office Actions

The journey toward patent approval is often complex, marked by the critical juncture of responding to an office action. George Howarah offers a strategic blueprint for addressing these challenges, providing a systematic approach to enhance the efficiency and effectiveness of patent prosecution efforts.

Step One: Claim Analysis

The journey begins with a comprehensive analysis of the claims, particularly focusing on the independent claims. George underscores the importance of grasping the full scope of these claims as they encapsulate the essence of the inventive concept. This step is foundational, setting the stage for a targeted and informed response.

Step Two: Office Action Review

The next phase involves a meticulous review of the office action, paying close attention to the nature of the rejections and the specifics of the cited prior art. George points out the potential to challenge the relevance of prior art based on its date or ownership. This critical evaluation is pivotal for developing a strategic plan of attack.

Step Three: Specification Examination

Central to George’s approach is a thorough examination of the patent’s specification. This in-depth review ensures a profound understanding of how the invention is described and claimed, facilitating a more accurate alignment between the invention and the claims. This deep comprehension is vital for identifying the strongest possible position in response to the office action.

Step Four: Developing the Response Strategy

Finally, George focuses on crafting a tailored response strategy. This involves identifying the core inventive concept within the independent claims and evaluating the examiner’s cited references for their applicability and interpretation. Depending on the examiner’s rationale, George suggests either proposing strategic amendments to the claims or preparing cogent arguments to underscore the invention’s novelty and non-obviousness.

George’s structured approach demystifies the process of responding to office actions, offering patent practitioners a clear, step-by-step guide to navigating these waters. By adopting this methodical strategy, inventors and attorneys alike can improve their chances of advancing through the patent prosecution process successfully, ensuring their innovations receive the protection they deserve.

Want more Precise Prosecutor? Check out other videos with George Howarah here!

Beyond the Marker: Equal Pay Day and the Legal Sector’s Call for Action

In the landscape of modern justice, the battle for equal pay remains a glaring contradiction. Equal Pay Day, observed on March 12th, underscores a reality we can no longer ignore – the persistent wage gap between genders. It’s a day that forces us to reckon with the fact that women have to work significantly longer into the next year to earn what men did in the previous one. This revelation comes not from the fringes of our society but straight from the legal sector, a realm dedicated to upholding fairness and justice.

The irony is not lost on us. The legal profession, built on the principles of equity and justice, finds itself at the heart of this ongoing struggle for wage parity. The call for action is clear and unequivocal: it’s time to disrupt the status quo. The message is a rallying cry for everyone, urging them to amplify their voices using #equalpay, share personal stories, and engage in conversations that matter. The goal is to create a groundswell of support that cannot be ignored, pushing for systemic changes that ensure equal pay is not just an ideal but a reality.

Moreover, the emphasis on male allies participating in this movement is crucial. Equal pay is not solely a women’s issue; it’s a societal one that affects us all. When women are paid fairly, the benefits ripple through families, communities, and economies. Thus, the call to action extends beyond gender lines, inviting everyone to play a part in rectifying this injustice.

As we reflect on Equal Pay Day, let’s recognize it not just as a marker of how far we’ve come, but more importantly, how far we still have to go. The fight for equal pay in the legal profession and beyond is a testament to the broader struggle for gender equality and justice. It’s a call to action for all of us to engage, advocate, and push for change. The path to equality requires relentless effort, solidarity, and a commitment to justice for all. Let’s make equal pay a reality, not just for the sake of fairness, but for the future we all share.

Want more Driving Diversity? Check out other videos with Elaine Spector here!

AI Titans: Who’s Dominating the Patent Universe

By Ayana Marshall, Patent Data Analyst

In the rapidly advancing field of technology, Artificial Intelligence (AI) is a notable area of focus.  This field, where machines are designed to simulate human intelligence, is a center of both innovation and patent competition.  Key players in this arena are major companies that are not only involved in developing AI but also in securing their developments through patents.  These leading companies are actively engaging in AI research and development, and through their patent filings, they are protecting their innovations.  This activity plays a significant role in the ongoing evolution of AI technology and its integration into various industries. 

Global Players: Patent Powerhouses Shaping the Future 

The Top Companies bar chart above illustrates the total patents and total pending applications in AI held by various global corporations.  The following are some highlights: 

  • Leading Patent Holder: Alphabet Inc. holds the highest number of total patents, indicating significant investment in AI. 
  • IBM & Baidu Presence: International Business Machines Corp. (IBM) and Baidu, Inc. follow closely in patent counts, highlighting their roles as major players in AI development. 
  • Samsung’s Pending Applications: Samsung Electronics Co., Ltd. has a notably higher number of pending applications than granted patents. 
  • Varied Company Involvement: Microsoft Corporation, Tencent Holdings Ltd, Toyota Motor Corporation, and Amazon.com, Inc. are also key contenders with substantial patent portfolios. 
  • Ping An Insurance’s AI Focus: Ping An Insurance (Group) Company of China, Ltd. is recognized for its considerable AI patent portfolio. 
  • Manufacturing Companies + AI: Robert Bosch GmbH and Siemens AG, known for manufacturing, have significant AI patent activities, underlining AI’s cross-sector impact. 
  • Technology & Automotive Dominance: The chart emphasizes the strong involvement of technology and automotive companies in AI patent holdings. 

Tracing the Trajectory of AI Patent Publications 

Expanding on the context of patent holdings, the line graph above spans from 2014 to 2023.  The following are the highlights: 

  • Upward Trend:  The Publication Trend shows a fluctuating but overall increasing trend in AI patent publications from 2014 to 2023. 
  • Growth in Publications:  There’s a 7.6% annual increase in AI patent publications in the three years up to 2023. 
  • 2019 as a Milestone Year:  The year 2019 is highlighted as a significant year, marking the start of a noticeable rise in the number of AI patent publications. 

This overview introduces the major industry players and the publication trajectory in AI innovation, offering insights for understanding AI development and patenting.  This data is sourced from the Harrity Analytics Patent Pulse™ Report on Artificial Intelligence. 

For more information about the Patent Pulse™ Report visit our website HERE, download a complimentary Patent Pulse Report HERE, or contact Harrity Analytics HERE.

102 Blocking Patents as an Indication of High-Quality AI Patent Portfolios

By Ayana Marshall, Patent Data Analyst

The hottest area for patenting globally is in Artificial Intelligence (AI) innovation, and one indicator of the quality of patent portfolios in the AI space is the number of 102 blocking patents.  102 blocking patents are patents cited by an examiner as a 102 reference in an office action at the USPTO (United States Patent and Trademark Office).  These Gate Keepers are building high quality patent portfolios that protect their innovation and keep other competitors from patenting similar inventions in AI. 

The table above shows a list of major technology companies, referred to here as “Gate Keepers,” that have obtained the most blocking patents related to Artificial Intelligence (AI).  The following are the highlights from this table: 

  • Alphabet Inc. holds the highest number of blocking patents, totaling 1,145. 
  • Microsoft Corporation follows with 1,068 blocking patents. 
  • Amazon.com, Inc. has 671 blocking patents. 
  • The list includes a mix of technology, automotive, and industrial companies. 
  • Notable entries include Samsung Electronics with 663 patents and IBM with 670 patents. 
  • Companies such as Meta Platforms, Inc. and Ford Motor Company also feature on the list with 200 and 190 patents, respectively. 

Now that we know which companies have the most blocking patents, we can now look at who is being hindered the most by 102 blocking patents.  The table below shows the list of major technology companies, referred to here as the “Hindered,” that have had the most AI patents cited against them in a 102 rejection. 

The following are the highlights from this list of companies: 

  • IBM at the Forefront: International Business Machines Corp. (IBM) leads with 994 patents impacted by 102 blockages. 
  • Samsung & Microsoft Affected: Samsung Electronics Co., Ltd. and Microsoft Corporation also faced significant numbers of blocked patents, with 677 and 618, respectively. 
  • Notable Tech Giants: Alphabet Inc. and Toyota Motor Corporation are among other technology giants, with 508 and 462 blocked AI patents, hinting at the competitive landscape they navigate. 
  • Intellectual Property Challenges: Companies like Intel Corporation and Baidu, Inc. also experienced several patent blockages. 
  • Broad Industry Impact: The list includes a diverse range of companies from different industries, showing that patent blockages in AI are a common challenge across the technology sector. 

This data highlights that the AI technology landscape includes companies that, while pushing the boundaries of AI, encounter significant hurdles in the form of 102 blocked patents.  The challenges faced by these companies underscore the importance of strategic patent management and the potential for collaboration or negotiation in advancing the field of AI.  Despite these obstacles, the continued efforts and resilience of these companies fuel the progress and expansion of AI technologies globally. 

This data is sourced from the Harrity Analytics Patent Pulse™ Report on Artificial Intelligence. For more information about the Patent Pulse™ Report visit our website HERE, download a complimentary Patent Pulse Report HERE, or contact Harrity Analytics HERE.

Transforming Examiner Interviews into Opportunities: A Practical Guide

Navigating the patent prosecution landscape requires more than just legal expertise; it demands a nuanced understanding of the human elements that influence the process. Examiner interviews are a pivotal aspect of this journey, offering unique opportunities to directly influence the outcome of a patent application. George Howarah shares his refined approach to these interviews, combining technical acumen with strategic interpersonal engagement.

The Importance of Personal Connection

George begins by emphasizing the importance of establishing a personal connection with the examiner. Before diving into the technicalities, he spends a few minutes asking about the examiner’s wellbeing and any updates from the patent office. This approach is not just about pleasantries; it’s a strategic move to make the interview less contentious and foster a collaborative atmosphere. Such a rapport encourages the examiner to be more open to discussion, laying the groundwork for a productive conversation.

Presenting the Invention and Claims

Another crucial part of George’s strategy is how he presents the invention and the claims. He carefully selects drawings that directly support his arguments and articulates the essence of the invention in his own words, steering clear of the complex language often found in claims. This approach not only aids in mutual understanding but also allows the examiner to view the invention from the attorney’s perspective, facilitating a more meaningful discussion about the application’s merits.

The Path to Agreement

The goal of any examiner interview is to reach some form of agreement that advances the patent application towards allowance. George shares his structured method for negotiating claim amendments, starting with the ideal outcome and gradually addressing more specific concerns. This step-by-step negotiation is designed to find common ground, however small, which can be crucial for prosecution estoppel and avoiding future legal hurdles.

George’s approach to examiner interviews is a testament to the power of preparation, personal connection, and precise argumentation. By adopting these strategies, patent attorneys can enhance their chances of success, transforming a daunting process into a manageable and even rewarding experience.

So, How Do You Conduct Examiner Interviews?

George’s methods are a blend of art and science, offering a proven framework for engaging with patent examiners effectively. But the field is wide open for discussion: How do you approach examiner interviews?

Want more Precise Prosecutor? Check out other videos with George Howarah here!

Apple Vision Pro: A Patent Look at the New Entrant in Virtual Reality

By Ayana Marshall, Patent Data Analyst

Introduction 

Virtual Reality (VR) has evolved from a futuristic concept to an everyday reality, and with Apple’s launch of the Vision Pro headset, the technology giant is now staking its claim in this innovative field.  This article takes a closer look at the Vision Pro, examining how it fits into an already dynamic market and patenting landscape, and what its arrival signifies for the future of VR. 

Overview of Apple’s Vision Pro 

The Apple Vision Pro is designed for seamless integration across the Apple ecosystem, enhancing the user experience on all Apple devices. 

Computational Power, Latency, and Memory Bandwidth 

Powered by the M2 chip, the Vision Pro balances high-speed processing with energy efficiency, further enhanced by a 10-core GPU and a 16-core Neural Engine.  With 16GB of unified memory, it supports efficient data processing and multitasking.  The introduction of the R1 chip reduces photon-to-photon latency to 12 milliseconds, enhancing immersion and minimizing motion sickness, while a 256GB/s memory bandwidth ensures responsive VR interactions. 

Display Technology, Audio Technology, and Media Playback 

Its display employs micro-OLED technology with 23 million pixels, delivering visuals supported by a wide color spectrum and variable refresh rates for smooth motion.  An array of advanced sensors and cameras enables environmental mapping and motion tracking, complemented by passthrough technology that blends virtual and physical spaces for enhanced user awareness.  The Vision Pro’s immersive audio experience, enriched by Spatial Audio with dynamic head tracking, personalized audio ray tracing, a six-mic array with directional beamforming, and ultra-low-latency connections with AirPods Pro (2nd generation).  Additionally, extensive support for audio and video formats ensures high-fidelity content consumption. 

Operating System, Battery Life and Charging 

visionOS, Apple’s platform for spatial computing, is the operating system for the Vision Pro.  This operating system enhances the VR experience by leveraging the device’s advanced hardware for seamless navigation and immersive applications, integrating tightly with the Apple ecosystem.  It supports eye and hand controls and is compatible with physical keyboards, trackpads, and game controllers.  The Vision Pro’s optimized battery life supports extended use, and advanced connectivity options with Wi-Fi 6 (802.11ax) and Bluetooth 5.3 provide reliable streaming and device pairing. 

Input Methods, Ergonomics and Physical Design 

Input versatility includes interactions through hands, eyes, voice, and supported accessories like keyboards, trackpads, and game controllers, broadening usability.  Items can be chosen simply by gazing at them and tapping fingers together, while pinching, dragging, zooming, and rotating objects can be accomplished using specific hand gestures.  The adjustable Interpupillary Distance (IPD) and the device’s lightweight design provide visual comfort and ease of use. 

Security and Accessibility Features 

Security is a priority, with Optic ID offering iris-based biometric authentication, encrypting data securely to protect user privacy.  A key aspect of the Vision Pro is its comprehensive accessibility features, designed to empower individuals with disabilities to fully engage with their device. 

Exploring the VR Market Dynamics 

The Vision Pro enters a market with well-known products like the Sony PlayStation VR, HTC Vive, and Meta’s Quest 3.  These systems have already established their places in the VR market, creating a competitive environment for the introduction of the Apple Vision Pro. 

Patents as Innovation Indicators 

Based on data provided by the Harrity Analytics Patent Pulse™ Report on VR Hardware, the trend in VR hardware patent publications has experienced a consistent increase up to 2022, after which it levels off.  Over the past three years, there has been an annual growth of 5.8% in patent publications.  An increase in patent filings typically reflects a period of innovation, as companies seek to secure legal protection for their new inventions.  The data suggests progress in VR hardware development, pointing to the technology’s ongoing expansion and adoption.  

Analyzing the Growth of VR Hardware Patents: A Snapshot of Industry Leaders and Apple’s Position 

The chart presents data on the patent activities of leading corporations in the VR domain, specifically comparing the number of patents to the number pending applications.  This data provides a snapshot of VR technology patenting from technology giants. The following are highlights from this chart: 

  • Sony Group Corporation leads with the highest patent count. 
  • Microsoft, Meta Platforms, Magic Leap, Samsung, and Nintendo follow as top patent holders. 
  • These companies have many pending applications, showing active VR development. 
  • Apple Inc. ranks in the top 15, with fewer patents than the leaders. 

How Does Apple’s Growth in VR Patent Publications Compare to Industry Leaders? 

The following are the highlights from this chart about Apple’s publication trends: 

  • Apple’s publication growth in 3 years: 19.1%, more than triple the entire VR sector’s growth. 
  • Significant growth observed from 2019 to 2021, followed by a stable period. 
  • Growth resumed in the years 2022 to 2023. 

The Competitive Ecosystem 

As Apple’s Vision Pro joins the competitive landscape of virtual reality headsets, it stands amidst established players like Meta’s Quest series and Sony’s PlayStation VR.  Apple’s entry introduces its distinct blend of technologies and design philosophies, aiming to carve out its niche in a market that values innovation and user-centric experiences.  This environment, where companies not only compete on product capabilities but also on the intellectual property front, highlights a dynamic interplay of market strategies and technological advancements. 

The chart provides a visual comparison of the influence and scope within the VR hardware patent landscape.  Influence is gauged by the average number of citations a company’s patents receive, indicating their significance to subsequent technological developments.  Scope is measured by the length of a patent’s first claim, which can reflect the breadth of the invention’s protection.  Larger bubbles represent a higher quantity of patents held by each entity.  The following are highlights from this chart: 

  • Microsoft and Alphabet have influential patents with shorter claim lengths. 
  • Goertek and Nintendo’s patents feature longer first claims. 
  • Apple’s patents have lower influence based on forward citations and have fewer words in the first claim. 

Analyzing the Impact and Breadth of VR Patent Portfolios 

Building on the understanding of patent activity as an indicator of technological development, further analysis can be conducted by examining the nuances of patent influence against the diversity of technology within the VR sector.  Review of such metrics provides insight into how companies balance the breadth of their technological advancements with the impact of their intellectual contributions.  This approach to patent analysis offers a unique perspective on how a company like Apple, with its moderate citation influence and longer first claims, positions itself among peers in terms of technological diversity and patent influence. 

This chart offers a visual representation of the interplay between the number of forward citations—a marker of influence—and the technological diversity, as indicated by unique Cooperative Patent Classification (CPC) codes, for patents in the VR hardware domain.  The bubble sizes reflect the volume of patents each company holds.  The following are highlights from this chart: 

  • Microsoft and Alphabet have a high average of forward citations and multiple unique CPC codes. 
  • Sony and Meta Platforms demonstrate significant technological diversity. 
  • Apple holds moderate influence and technological diversity in this context. 

The Future is Now 

Apple’s Vision Pro is not the only VR headset to be introduced to the market in 2024.  The VR hardware landscape is set for potential other new releases from companies that include Valve Corporation and ByteDance.  Here is a summary of the most anticipated VR headsets: 

  1. Project Moohan: Samsung and Google are partnering to develop an advanced XR headset that leverages Samsung’s hardware capabilities and Google’s Android XR software.  This joint endeavor is positioned as a competitor to Apple’s Vision Pro, with an anticipated release in the summer of 2024. 
  2. PICO 4: Parent company Bytedance has apparently not yet launched PICO 4 in the US. 
  3. Valve VR Headset: Valve is currently working on the next iteration of its Valve Index VR headset, drawing upon its established VR expertise and extensive gaming catalogue. 
  4. Valve “Deckard”: This appears to be a new venture by Valve, which may be the successor to the Index VR system. 

While not dominating the VR landscape, the companies shown in the above image, including Valve Corporation and ByteDance Ltd., own multiple VR patents and have several applications pending.  Their portfolios, though not as extensive as some competitors, reflect active participation in the VR sector. 

Applications of VR Technology Beyond Entertainment 

It should be noted that VR technology extends well beyond gaming into various sectors including the following:  

  • VR aids healthcare by enabling simulation of medical procedures and virtual patient rehabilitation. 
  • Education uses VR for immersive learning, allowing students to virtually visit historical locations or learn complex science. 
  • Real estate employs VR for remote property tours. 
  • Design and engineering benefit from VR’s ability to create 3D models, aiding visualization, and project iteration. 
  • The entertainment industry utilizes VR for immersive films and interactive storytelling experiences. 

Conclusion 

The launch of the Vision Pro signals Apple’s commitment to the VR segment.  With Apple holding a growing position in terms of patent activity and having moderate influence and technological variety within the VR domain, Vision Pro’s future contributions to this sector are anticipated with interest.

This data is sourced from the Harrity Analytics Patent Pulse™ Report on VR Hardware.  For more information about the Patent Pulse™ Report visit our website HERE, download a complimentary Patent Pulse Report HERE, or contact Harrity Analytics HERE. 

Sources: 

https://harrityllp.com/patent-pulse-report/ 

https://www.dexerto.com/tech/upcoming-vr-headsets-2156692/ 

https://deovr.com/blog/87-upcoming-vr-headsets 

https://www.tomsguide.com/news/oculus-quest-3-release-date-rumors-specs-news#:~:text=The%20Meta%20Quest%203%20is,to%20say%20about%20that%20soon) 

https://www.youtube.com/watch?v=dtp6b76pMak 

https://www.apple.com/apple-vision-pro/ 

https://www.apple.com/apple-vision-pro/guided-tour/  

https://www.apple.com/apple-vision-pro/specs/  

https://www.apple.com/newsroom/2023/01/apple-unveils-m2-pro-and-m2-max-next-generation-chips-for-next-level-workflows/  

https://forums.appleinsider.com/discussion/233273/hands-on-with-apple-vision-pro-in-the-wild  

https://www.makeuseof.com/what-is-apples-r1-chip-how-does-it-compare-m1-and-m2/  

https://www.hardwarezone.com.sg/tech-news-samsung-and-googles-xr-headset-expected-launch-2024  

https://www.theverge.com/2023/12/13/23999883/the-pico-5-headset-might-be-canceled-but-bytedance-isnt-done-with-vr  

Inspiring Inclusion in Patent Law: Celebrating International Women’s Day with Heart

As we approach International Women’s Day on March 8th, the theme of #inspireinclusion resonates profoundly within the patent law community, particularly among those with a background in mechanical engineering. The journey towards inclusion is a personal and collective endeavor, often marked by moments of feeling out of place. Yet, it’s through these experiences that the importance of fostering an inclusive environment becomes undeniably clear. This year, we are invited to embody the spirit of inclusion in a unique and heartwarming way, symbolizing our commitment to building a more welcoming and diverse field.

Holding a degree in mechanical engineering and navigating the intricate world of patent law, experiences of feeling excluded are not uncommon. These moments, though challenging, shine a light on the vital need for inclusivity within our professional spheres. As we gear up to celebrate International Women’s Day this Friday, March 8th, the patent law community is rallying around a powerful theme: #inspireinclusion. This initiative isn’t just a call to action; it’s a movement towards embracing diversity and fostering an environment where everyone feels valued and included.

This year’s International Women’s Day is more than a celebration; it’s a declaration of unity and understanding. The #inspireinclusion theme encourages us to adopt a stance that is as meaningful as it is symbolic—a heart. This gesture is far from arbitrary. It represents the core of where inclusion begins: our hearts. It’s a poignant reminder that at the heart of inclusion lies empathy, understanding, and the willingness to embrace diversity in all its forms.

The invitation to strike the #inspireinclusion pose this Friday is open to everyone, men included, highlighting that inclusion is not the responsibility of a single gender but a collective effort that requires the participation and support of all. The gesture of forming a heart is a powerful symbol of solidarity, unity, and the shared commitment to fostering an inclusive environment within the patent law community and beyond.

As we stand together, adopting the #inspireinclusion stance, we’re not just participating in a symbolic act. We’re pledging to make inclusivity a cornerstone of our professional and personal lives. This International Women’s Day, let’s inspire inclusion by showing the world that the patent law community stands united in its commitment to diversity, equity, and inclusion.

The call to inspire inclusion this International Women’s Day is more than a theme; it’s a reflection of our collective aspiration to create a more inclusive and equitable world. By participating in the #inspireinclusion pose, we are making a statement about the values we hold dear in the patent law community. This gesture, rooted in the simplicity and universality of a heart, serves as a powerful reminder of the impact of our actions and the importance of leading with empathy and understanding. Let’s embrace this opportunity to celebrate diversity and inclusion, not just on International Women’s Day but every day. Join us in striking the #inspireinclusion pose this Friday and be a part of a movement that champions equality, unity, and the power of inclusion.

 

Want more Driving Diversity? Check out other videos with Elaine Spector here!

Trends and Implications of Decreasing Average Office Actions Per Patent at the USPTO

By Rocky Berndsen, Head of Analytics

The United States Patent and Trademark Office (USPTO) has been observing a notable trend over the past six years that could have significant implications for patent applicants and the patenting process at large. Data from 2018 through 2023 shows that the average number of office actions per patent—a metric that indicates the average number of communications between the patent examiner and the applicant before a patent is either granted or the application is abandoned—has been consistently decreasing across various technology centers (TCs).

Analyzing the Numbers

In 2018, the USPTO’s overall average stood at 1.631 office actions per patent. As of 2023, this number has dipped to 1.371, marking a significant reduction. This decrease is not isolated to a specific sector but is across the board, including high-volume TCs such as 2100 (covering Computer Architecture, Software, and Information Security), which saw a drop from 2.088 to 1.580, and 3700 (covering Mechanical Engineering, Manufacturing, and Products), which went from 1.901 to 1.551.

Shorter Time to Obtain Patents

A primary implication of this trend is a likely acceleration in the patent granting process. With fewer office actions required, the back-and-forth between the USPTO and patent applicants is reduced, potentially leading to a more streamlined examination process. For inventors and companies, this means a faster path to securing patent rights, which can be crucial for maintaining competitive edges in fast-moving industries.

Lower Costs for Applicants

Each office action typically incurs additional costs for applicants, including attorney fees and potential amendment requirements. A reduction in the average number of office actions can thus translate into lower overall costs for obtaining a patent. This could be particularly beneficial for individual inventors and small businesses for whom cost is a major barrier to securing patent protection.

Implications for Patent Quality

However, while fewer office actions suggest a more efficient process, there could be concerns about the thoroughness of patent examinations and the potential impact on patent quality. The USPTO must balance the efficiency of the examination process with the need to maintain high standards for patentability, ensuring that only novel, non-obvious, and useful inventions are granted patent rights.

Impact on Patent Litigation

A decrease in office actions might also influence patent litigation. Patents that undergo fewer office actions could be perceived as less scrutinized, potentially affecting their defensibility in court. Conversely, this trend might result in patents that are more solid due to a more focused examination process, leading to less ambiguity and fewer grounds for litigation.

Enhanced Predictability for Planning

For businesses and investors, a predictable patent examination timeline facilitates better strategic planning and resource allocation. If the trend of decreasing office actions continues, it may enable more precise forecasting of patent portfolios and related business activities.

In conclusion, the downward trend in the average number of office actions per patent at the USPTO is a positive signal for applicants looking for a quicker and less costly patenting process. However, it’s imperative that this efficiency does not compromise the quality of granted patents—a balance the USPTO is undoubtedly striving to achieve. As we watch this trend continue, the patent ecosystem may need to adapt to the evolving dynamics of patent prosecution and enforcement.

Get in Touch for Insights on USPTO Data

If the information above has sparked your curiosity or if you have specific queries about USPTO data and trends, we invite you to reach out. Understanding the intricacies of patent data can provide valuable insights for your patent strategy and decision-making process. By filling out our contact form, you’ll connect with experts who can delve deeper into the data, provide personalized analysis, and help you gain insight from USPTO data.

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Enhancing Patent Prosecution Efficiency: A Strategic Approach to Examiner Interview Agendas

The path to securing a patent is intricate, with examiner interviews marking a critical juncture where direct dialogue can significantly influence the outcome. In this week’s The Precise Prosecutor, George Howarah leverages his extensive experience in patent law, unveiling a strategic method for preparing examiner interview agendas. This approach not only facilitates effective communication but also navigates the nuances of patent prosecution estoppel.

 

Crafting an Effective Agenda
The agenda for an examiner interview is more than a mere list; it’s a strategic tool that shapes the direction of the discussion. George emphasizes the importance of this document, which also becomes a part of the official record, potentially influencing future legal interpretations.

 

Key Elements of a Successful Agenda
George’s strategy for agenda preparation encompasses several critical steps:

Issue Prioritization: Identifying and ordering relevant issues and rejections according to their significance ensures comprehensive coverage without overwhelming the examiner.

Claim Amendments and Arguments: Proposing claim amendments and providing concise arguments or specification references in the agenda can preemptively address potential objections, setting the stage for a constructive conversation.

Flexibility in Discussion: The order of discussing issues might differ from their listing, allowing for tactical adjustments based on the complexity of issues and the time available.

Preparation of Backup Options: George advocates for the readiness of alternative amendments or arguments, offering flexibility in addressing examiner concerns and enhancing the likelihood of overcoming objections.

Clarity and Organization: A bullet-pointed, well-structured agenda respects the examiner’s limited preparation time, ensuring the discussion focuses on substantive issues rather than navigational confusion.

 

Leveraging the Agenda for Success
The preparation of an examiner interview agenda, as outlined by George, is a meticulous process that requires insight into the legal and procedural nuances of patent prosecution. By emphasizing clarity, strategic issue presentation, and the anticipation of potential objections, patent practitioners can engage more effectively with examiners. This approach not only addresses the immediate challenges of a particular patent application but also fosters a collaborative environment conducive to achieving a favorable resolution.

 

The strategic preparation of examiner interview agendas is pivotal in the patent prosecution process, offering a pathway to clearer communication and more efficient resolution of issues. George’s guidelines provide a blueprint for patent attorneys and agents striving to optimize their engagement with USPTO examiners, enhancing the prospects for patent grant success.

Want more Precise Prosecutor? Check out other videos with George Howarah here!

Stella Ennals: A Legacy of Innovation and Independence

As we commemorate the end of Black History Month, it is crucial to celebrate the stories that highlight the intersection of diversity, innovation, and resilience. Stella Ennals, a black female inventor, embodies this convergence through her journey to overcome personal and systemic barriers with her groundbreaking invention. This Driving Diversity blog post aims to shine a light on Stella’s invention, a device designed to empower individuals with disabilities, showcasing her perseverance and the impact of her work on fostering independence.

In Bethesda, Maryland, Stella Ennals embarked on a journey that would not only challenge her physical limitations but also the systemic obstacles that often hinder black female inventors. Her invention, a device enabling those with disabilities to transport their own trays, was born out of a necessity for independence after a personal physical injury left her desiring more autonomy.

Stella’s path to innovation was marked by a relentless pursuit of self-sufficiency and a desire to contribute a solution that would assist others facing similar challenges. Her invention is not just a testament to her engineering ingenuity but also to her deep understanding of the everyday hurdles faced by people with disabilities. By addressing a specific need, Stella’s device offers a broader message of empowerment and inclusion, underscoring the importance of accessibility in all aspects of life.

Reflecting on Stella’s journey, it’s evident that her fortitude and persistence were her greatest assets. Her ability to navigate the patent process and bring her invention to fruition is inspiring, particularly when considering the additional layers of challenge presented by systemic biases. Stella’s story is a powerful reminder of the impact one individual can have on improving the lives of many, driven by the simple yet profound goal of enhancing independence.

Stella Ennals stands as a beacon of innovation, resilience, and independence, her story resonating deeply as we celebrate Black History Month. Her invention transcends its practical application, symbolizing the broader struggles and triumphs of black female inventors against systemic barriers. Stella’s legacy encourages current and future generations to persevere in the face of adversity, innovate for the greater good, and strive for a more inclusive and accessible world for all.

Want more Driving Diversity? Check out other videos with Elaine Spector here!

The Art of Examiner Interviews: A Strategic Approach for Success

In the complex and nuanced world of patent prosecution, examiner interviews stand out as a crucial element in navigating the approval process efficiently. George Howarah shares his invaluable insights on how to leverage examiner interviews to their full potential. This blog post delves into the strategic preparation necessary for conducting successful examiner interviews, highlighting George’s expert perspective.

Understanding the Client’s Goals

The first step in preparing for an examiner interview involves a clear understanding of the client’s objectives. Whether the aim is to expedite claim approval within a reasonable scope or ensure the claims align with a specific product or standard, identifying these goals upfront is critical. This initial clarity guides the strategy throughout the interview process, ensuring that the direction pursued aligns with the client’s expectations.

Analyzing the Prosecution History

A thorough examination of the application’s prosecution history is essential. This involves distinguishing whether the application is original, a continuation, or a divisional. Understanding the nuances between the current claims and those in previous applications helps tailor the approach to the interview. Additionally, recognizing the stage of prosecution is key. An aggressive stance might be more suitable at the beginning, whereas a more conciliatory approach could be beneficial in later stages, aiming for a middle ground that maintains the claims’ integrity.

Evaluating the Examiner’s Position

Assessing the examiner’s posture towards the application and the specifics of any rejections is another critical step. This includes reviewing past interactions for any precedents of overcoming objections and scrutinizing the current office action for potential misunderstandings or oversights by the examiner. Such an evaluation helps in anticipating the examiner’s concerns and preparing a more effective response.

Assessing the Strength of the Rejection

Finally, George emphasizes the importance of analyzing the strength of the rejection. Whether dealing with a 102 (novelty) or a 103 (non-obviousness) rejection, it’s vital to give the examiner the benefit of the doubt while also firmly advocating for the patent’s validity. This may involve deciding on the necessity of claim amendments to navigate around the rejection.

The preparation for an examiner interview is a multifaceted process that requires a deep understanding of the client’s goals, the application’s history, the examiner’s perspective, and the nature of the rejection. George’s approach showcases the importance of meticulous preparation and strategic planning in achieving successful outcomes in patent prosecution. By adopting these strategies, patent practitioners can enhance their effectiveness in examiner interviews, leading to more favorable results for their clients.

Want more Precise Prosecutor? Check out other videos with George Howarah here!

Unlocking Genius: Empowering Black Innovators in the World of Patents

In the tapestry of American history, Black innovators have woven a rich legacy of ingenuity and resilience, yet their contributions often remain underrecognized in the annals of patent law. Dr. Charles Richard Drew, a surgeon and medical researcher renowned for pioneering blood plasma storage methods, exemplifies this legacy of innovation. As we delve into his story and the broader narrative of Black excellence, a pressing question emerges: How many potential Einsteins are we overlooking in our Black communities? During Black History Month, it’s imperative to confront the stark underrepresentation of Black professionals in the patent field—a reflection of a wider systemic disparity that limits the realization of Black potential in science, technology, engineering, and mathematics (STEM).

The story of Dr. Charles Richard Drew is not just one of historical significance but also a beacon of inspiration, highlighting the transformative impact that individuals from underrepresented backgrounds can have on society. Despite such monumental contributions, the patent field reveals a disheartening disparity: while 14% of Americans identify as Black, a mere 1% of patent holders are African American. This is in stark contrast to the 7% of STEM jobs held by African Americans, underscoring a significant gap between potential and realized opportunities for innovation.

This discrepancy not only dims the prospects of individual Black innovators but also deprives society of diverse perspectives and solutions. Addressing this gap requires a multifaceted approach, focusing on foundational issues such as access to education and resources. Enhancing STEM education, providing mentorship, and ensuring access to necessary resources are critical steps towards empowering Black individuals to invent, patent, and lead in the realm of technology and innovation.

Organizations like Invent Together are leading the charge by creating accessible educational resources, such as the Inventor’s Patent Academy, that aim to demystify the patenting process and make it more inclusive. By leveraging these resources and fostering a supportive community, we can start to bridge the gap for Black innovators.

The underrepresentation of Black professionals in patent law is a glaring issue that requires immediate and sustained action. By addressing systemic barriers and providing targeted support, we can pave the way for a new generation of Black inventors and innovators who will shape the future of technology and society. Let us commit to being part of this transformative journey, recognizing and uplifting the contributions of Black innovators not just during Black History Month, but all year round. As we reflect on the legacy of pioneers like Dr. Charles Richard Drew, let’s ask ourselves how we can contribute to creating a more inclusive and equitable patent field, where every potential Einstein has the opportunity to thrive.

Want more Driving Diversity? Check out other videos with Elaine Spector here!

The Underrated Key to Patent Prosecution Success: Examiner Interviews

In the realm of patent prosecution, there’s a tool that often goes underutilized, yet holds the potential to significantly streamline the patenting process, ensuring clarity, efficiency, and a stronger patent position. In this week’s Precise Prosecutor vlog, George Howarah brings to light the importance of examiner interviews, a strategy that can pivot the usual course of patent prosecution towards more favorable outcomes.

George points out a common pitfall in patent prosecution where practitioners might lean heavily on written responses to office actions. This method, while traditional, might not always capture the examiner’s perspective accurately, potentially leading to miscommunications, unaddressed rejections, or, in some cases, creating estoppel issues that could weaken the patent’s enforceability.

Examiner interviews stand out as a solution to these challenges. Engaging in a dialogue with the examiner post-office action not only clarifies the examiner’s stance but also opens the door for direct feedback on proposed arguments or amendments. This proactive approach can lead to more precise adjustments, avoiding the back-and-forth that often characterizes patent prosecution.

George advocates for scheduling an examiner interview after every office action, highlighting the benefits he has observed in his practice. These benefits include demonstrating a commitment to the patent application, reducing the time and cost associated with obtaining a patent, and minimizing the risk of prosecution estoppel.

George’s advice to fellow practitioners is clear: leverage examiner interviews as a standard step in your prosecution strategy to foster a more efficient, transparent, and successful patent prosecution process.

Want more Precise Prosecutor? Check out other videos with George Howarah here!

Bridging the Gap: Elevating Black Inventors in the Patent System

This February, as we observe Black History Month, we turn our focus to an often-overlooked arena where black excellence continues to fight for recognition and equity: the patent system. The underrepresentation of black inventors is not just a statistical oversight; it’s a reflection of systemic barriers that have persisted for far too long. These barriers not only hinder individual aspirations but also deprive our society of diverse innovations and contributions.

The systemic challenges faced by black inventors in navigating the patent system are multifaceted. From limited access to resources and networks to the financial burdens of patenting, the obstacles are significant. However, the tide is beginning to turn, thanks to the efforts of organizations committed to fostering diversity in innovation.

Invent Together stands out as a beacon of hope, offering free online programs designed to guide first-time patent applicants through the intricate process. By demystifying the patent application process, Invent Together is breaking down one of the significant barriers to entry for underrepresented inventors.

Moreover, educational institutions across the country are beginning to recognize the importance of supporting diversity in innovation. By adopting resources like those offered by Invent Together, universities, colleges, and institutes are laying the groundwork for what we hope will be a new era of inclusivity and diversity in the field of invention and innovation.

The path toward a more inclusive patent system is long and fraught with challenges, but it’s a journey worth embarking on. By supporting initiatives like Invent Together and encouraging educational institutions to play their part, we can begin to dismantle the systemic barriers that have sidelined black inventors for too long.

As we celebrate Black History Month, let’s commit to making a difference, not just this month but every month. The contributions of black inventors, both past and present, deserve recognition and support. By working together, we can ensure that the future of innovation is as diverse as the society it aims to serve.

Visit TIPA’s site to learn more and help us empower the next generation of inventors. Your support can change the course of history.

Want more Driving Diversity? Check out other videos with Elaine Spector here!

Maximizing Patent Value: A Strategic Approach to Claim Management

In the intricate world of patent filings, understanding how to leverage the structure of your patent application can significantly impact its value. One area that often goes underutilized is the strategic management of claims within an application. As Neil Kardos highlights in this week’s Practical Patents series, a nuanced approach to claim management can not only streamline the patent prosecution process but also ensure clients receive maximum value for their investments.

In the United States, the initial patent application filing fee covers the inclusion of up to 3 independent claims and a total of 20 claims. It’s a common misconception that the quantity of claims within a patent directly correlates with its strength or value. However, the strategic composition and management of these claims can significantly enhance a patent’s effectiveness and its potential to protect innovative technology comprehensively.

During the patent prosecution phase, it’s not uncommon to amend claims to align with the United States Patent and Trademark Office (USPTO) requirements for patentability. This often involves consolidating the concepts of multiple dependent claims into fewer, broader independent claims to facilitate application approval. Yet, this consolidation presents a unique opportunity for strategic claim management.

Neil emphasizes the importance of adding a new dependent claim for every claim that is canceled. This practice ensures that the final patent utilizes the full quota of claims that the filing fee entitles, thus maximizing the patent’s breadth and flexibility without incurring additional costs. It’s a practice that, surprisingly, not all patent practitioners follow, as evidenced by numerous patents issuing with fewer than the allotted 20 claims.

The implications of this strategy extend far beyond mere numerical optimization. Each claim in a patent application can be viewed as a unique tool for protecting different facets of the invention. By ensuring that each patent utilizes its full complement of claims, inventors can secure a more robust and nuanced protection. This not only enhances the patent’s defensive capabilities but also its value in potential licensing discussions or infringement disputes.

Furthermore, this approach demonstrates to clients a meticulous and value-driven management of their intellectual property. In a landscape where every detail counts, the strategic addition and adjustment of claims can significantly differentiate a patent’s quality and its potential for commercial success.

Neil’s insights into claim management offer a valuable perspective for anyone involved in the patent filing process. By understanding the strategic potential of claims adjustment and ensuring that patents utilize their full entitlement, practitioners can deliver enhanced value to their clients, reinforcing the importance of detail-oriented strategies in patent law.

Stay tuned for more insightful tips and tricks from Neil Kardos in our 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!

Elevating Patent Clarity: The Strategic Use of ‘Threshold’ in Patent Drafting

In this edition of the Practical Patents series, we delve into the nuanced use of the term ‘threshold’ in patent language, guided by Neil Kardos. This exploration highlights the importance of precision in patent drafting, a critical skill in the art of protecting intellectual property.

In the meticulous realm of patent drafting, every word counts. The term ‘threshold’ might appear straightforward, yet its application in patents is anything but. Neil explains this with two insightful examples.

1. Achieving Precision Over Vagueness

Clarity is the cornerstone of effective patent drafting. Generic terms like ‘high’ and ‘low’ are laden with ambiguity, often leading to Section 112 rejections. Neil’s advice is to opt for phrases such as ‘satisfies’ or ‘does not satisfy a threshold.’ This method enhances clarity and strengthens the enforceability of the patent.

2. Broadening Patent Scope Through ‘Threshold’

In instances where an inventor provides a specific number or range, the term ‘threshold’ can be used to expand the invention’s scope. By defining these figures as examples of satisfying a ‘threshold,’ a patent can encompass a broader range of applications, enhancing its protective coverage.

Neil emphasizes caution in using ‘threshold.’ He advises against framing claims based solely on a value being ‘greater than’ or ‘less than’ a threshold. Such language can inadvertently open doors for competitive workarounds.

Instead, Neil recommends a more comprehensive approach: asserting that a value ‘satisfies the threshold’ or ‘satisfies a condition.’ This strategy, when combined with a detailed specification, provides a stronger, more defensible patent.

As we conclude this discussion, we’re reminded of the critical role precise language plays in patent law. Neil’s insights into the use of ‘threshold’ underscore the importance of thoughtful and strategic patent drafting.

Stay tuned for more insightful tips and tricks from Neil in our 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!

Patent Data Reveals Unique Continuation Practice Amongst Patent 300® Companies

By Rocky Berndsen, Head of Analytics

Continuation practice in US patent law refers to a procedure where an applicant files a subsequent application based on the disclosure of a prior non-provisional application, while the prior application is still pending.  This strategy can be used for various reasons, such as refining claims, pursuing different scopes of protection, or keeping a patent family alive as the business strategy or technology develops.  The Patent 300® data, focusing on the highest and lowest percentages of patents issued in 2023 that were continuations, provides fascinating insights into the innovation and patenting strategies of top companies.

Strategic Use of Continuation Practice Found in Numerous Industries

The chart above indicates that companies like Sonos, Edwards Life Sciences, and Ebay lead with the highest continuation percentages.  For example, the data shows that 88% of Sonos’ patents issuing in 2023 were continuation applications.  This approach suggests a targeted approach to innovation, where companies are keen on fortifying their market position by building robust patent portfolios around their core products and services.  Continuation practice allows these companies to create a thicket of patents, making it harder for competitors to navigate without infringing.  It also provides them the flexibility to adapt to technological advancements and market changes by updating or expanding their patent claims.

Moreover, continuation practice might be indicative of a strategic layering of patent protection that enables companies to keep certain innovations under initial protection while testing the market or developing further improvements.  For companies like Palantir and Dolby, whose products involve complex software or hardware, the ability to file continuations means they may have the ability to continually update their patent claims to cover the latest iterations of their technology.

Continuation applications can also serve as a legal strategy to keep competitors uncertain about the final form of the patent claims, which could deter potential infringement or at least make it more difficult for competitors to design around an applicant’s patent portfolio.

Why are some companies not filing many continuation applications at all?

The Patent 300® data also reveals a set of companies that utilize continuation practices minimally in their patenting efforts.  Notably, this list includes a significant number of automotive manufacturers, highlighted above, such as Subaru, Mazda, and Honda, all showing low continuation percentages.  This pattern could suggest a distinct approach to portfolio management within the automotive industry, where innovation is rapid and product development cycles are aligned with manufacturing and release schedules.

Another reason for the minimal use of continuation practice could be budgetary constraints.  Continuation applications incur additional costs, not just in filing fees but also in legal and administrative expenses over time.  For some companies, the cost of maintaining a high number of continuations may not justify the potential benefits.  Some companies may opt to instead focus on obtaining patents for newly developed technologies.

Additionally, the strategy behind claims could influence the use of continuation practice.  Companies may choose to file comprehensive initial patent applications with broad claims to cover their inventions fully from the outset.  This approach could reduce the need for subsequent continuation applications to refine or broaden the scope of the original claims.  Some companies may prioritize filing detailed applications that anticipate future product developments, thereby lessening the need for continuations.

Moreover, the breadth of patenting may reflect an applicant’s innovation strategy.  Companies with a wider range of products and services may prefer to obtain a broader spread of original patents rather than deepening the protection around a narrower technology area through continuations.  This approach can create a more extensive barrier to entry for competitors across a wider technology landscape.  Automotive companies, with their frequent iterations of vehicle models and technologies, might find more value in creating a broad patent portfolio that covers a range of innovations rather than focusing on continuing applications for specific technologies.

In sum, the Patent 300® data offers a revealing glimpse into the nuanced strategies behind continuation practices in patent law.  While certain companies leverage this mechanism to build a dense web of protection around key products, adapting to market and technological shifts, others in sectors like automotive opt for a broader innovation footprint, potentially driven by cost considerations, a preference for comprehensive initial filings, or the strategic spread of their patent efforts across a wider range of technologies.  These divergent approaches underscore the complexity of IP management, where each applicant crafts a strategy aligned with its business goals, market position, and the dynamic landscape of technological advancement.  The data not only reflects the tactical choices of individual companies but also illustrates broader industry trends in patenting, revealing the careful balance between depth and breadth in securing intellectual property rights.

Inside the European Patent Revolution: An Analysis of Emerging Unitary Patent Data

Inside the European Patent Revolution: An Analysis of Emerging Unitary Patent Data

By Ayana Marshall, Patent Data Analyst

Brief Introduction to the Unitary Patent System

Launched on June 1, 2023, the Unitary Patent System, managed by the European Patent Office (EPO), simplifies patent protection across participating European Union (EU) member states.  Replacing the need for separate validations in each state, it allows a single application and fee for protection in all participating countries.  Based on the European Patent Convention (EPC), the system enables patent holders to seek uniform protection post-grant in 17 initial EU member states.  The Unitary Patent is described as a “European patent with unitary effect”.  The system includes the Unified Patent Court (UPC), comprising judges from participating states, adjudicating on Unitary and European patent infringements and validity.  This system signifies a streamlined approach for patent protection in the EU.1-5

Trends in Unitary Patent Registrations

The European Patent Office (EPO) has compiled and shared data from the launch of the Unitary Patent System up to January 15, 2024.  This includes various statistics and insights into how the system has been utilized.  The following discussion will delve into the key elements and findings from this data set.

Requests for Unitary Effect

The data above reveals that the Unitary Patent System received 18,273 requests for unitary effect, with 17,733 successfully registered as patents.  Additionally, the uptake rate for the system in 2024 stands at 17.3%.  This statistic represents the proportion of total requests that resulted in registered patents within the specified timeframe.6

The chart above tracks unitary patent request trends from December 2022 to December 2023.  Monthly request volumes, shown via bars, are aligned with the left vertical axis.  The right axis and line graph represent the cumulative total of requests.

From December 2022 to June 2023, the chart shows a rise in monthly requests for unitary patents, starting below 1,000 and reaching around 2,000 by May with a peak of almost 3,000 in June 2023.  July 2023 through September 2023 saw a decline in requests for unitary effect followed by a slight increase of just over 2,000 in October 2023.  There was a subsequent decline to approximately 4,000 by December 2023.  This illustrates the evolving interest and engagement with the Unitary Patent system over the year.  The cumulative line shows a consistent and steady upward trajectory throughout the year, reflecting the addition of each month’s new requests to the total count.  Starting at almost zero in December 2022, the cumulative count surpasses 20,000 by December 2023.  This upward trend suggests growing interest in and engagement with the Unitary Patent system over the year.

Top 25 Companies (Proprietors)

The chart above displays the number of unitary patent requests filed by the top 25 companies.  The bars are color-coded to represent different regions: EPO states, the US, Japan, China, Korea, and Others.  Johnson & Johnson holds the top position in terms of requests with the highest tally, followed by Siemens AG trailing by a narrow margin.  Both corporations submitted requests in the mid-two-hundreds.  Similarly, Qualcomm, Inc.  and Samsung Group exhibit parallel levels of requests, showcasing comparable engagement in the unitary patent application process.  The chart demonstrates a diversity of companies across different regions, with several companies from EPO states and the US occupying the top spots, while companies from Japan, China, and Korea also feature prominently, although with fewer requests.

Origin of Proprietors

The map above illustrates the geographic distribution of patent proprietors, with Europe and North America exhibiting higher volumes of requests.  Europe is particularly prominent, with requests ranging between 3,000 to 4,000, while the United States shows a lower range of approximately 2,000 to 3,000 requests.

WIPO’s Technology Fields (IPC)

Medical technology and electrical machinery are the most represented technology fields, suggesting robust activity and interest in these areas.  The technology fields are classified by the International Patent Classification (IPC) system, detailing the distribution of unitary patent requests across various sectors.  The size of each block in the image corresponds to the number of requests in that technology field, with larger blocks indicating more requests.  The technology fields include Medical technology, Computer technology, Pharmaceuticals, Civil engineering, Transport, Measurement, ‘Machine tools, Handling, and Other special machines.

Each technology field in the image above is quantified with a count and percentage, indicating its share of unitary patent requests.  Medical technology leads with 2,135 requests, accounting for 11.7% of the total.  Civil engineering, Transport, and Other special machines,  also feature significantly with 1080 (5.9%), 1,000 (5.5%), and 971 (5.3%) requests respectively.  Other fields like Computer Technology and Handling show smaller proportions, with 792 (4.3%) and 756 (4.1%) requests.  The distribution of requests across these fields suggests a varied interest in unitary patent protection across different technology sectors.

Status of Registration

The status of registration represents the proportions of unitary patent applications in each stage of the registration process.  The chart above quantifies and categorizes unitary patents according to their registration status of registered, pending, and rejection.  Dominating the chart is the registered category with 17,733 cases, accounting for 97.0% of the total, while pending applications comprise 2.8% with 509 cases followed by the 23 (0.1%) cases that were withdrawn.  The rejected category, representing the smallest segment, includes only 8 cases, making up a 0.04% of the total.  This chart highlights the number of successful registrations in the unitary patent system.

Translation and Procedural Languages

Data on translation and procedural languages used reveals that English is commonly used for both, with German and French also being used.  English is used in 73.3% of procedural languages, a significant lead over German and French.  Spanish is the mostly commonly used translation language outpacing English by a narrow margin.

In summary, the consolidated data provides insight into the unitary patent system as it currently stands.  It appears to indicate active participation across various technological sectors, a high rate of patent registrations, and a wide geographic distribution of proprietors.  The diverse origins of the applicants appear to highlight the system’s potential global appeal, and the significant majority of finalized registrations appear to suggest its efficiency.  These details offer an understanding of how the system is being used, positioning it as a potentially key mechanism for safeguarding modern innovations.  The detailed breakdown of request origins, technology fields, and registration statuses offers stakeholders an understanding of the system’s current scope and functionality.

For those interested in accessing customized analytics, contact Harrity Analytics today!

Stay tuned for more insights and analyses from Harrity Analytics, as we continue to explore the ever-evolving world of patents and innovation.

  1. https://www.epo.org/en/applying/european/unitary/unitary-patent
  2. https://www.epo.org/en/legal/guide-up/2022/uppg_a_v.html#:~:text=32The%20primary%20aim%20of,obtaining%2C%20maintaining%20and%20managing%20them.
  3. https://www.unified-patent-court.org/en
  4. https://www.epo.org/en/legal/guide-up/2022/uppg_a_iii_1.html
  5. https://www.epo.org/en/applying/european/unitary
  6. https://www.epo.org/en/about-us/statistics/statistics-centre#/unitary-patent
  7. All images were obtained from https://www.epo.org/en/about-us/statistics/statistics-centre#/unitary-patent

 

 

Enhancing Patent Drafting: The Essential Role of Claim-Figure Mapping

Welcome back to another edition of the Practical Patents series. This week Neil Kardos brings his seasoned perspective to an often-overlooked yet pivotal aspect of drafting: the strategic alignment of claims with figures in patent applications.

Neil emphasizes the importance of creating a mapping between the figures and claims in a patent application. This step, often overlooked, is crucial in ensuring a coherent and comprehensive patent specification. By mapping each figure to the claims they support, patent drafters can establish a clear connection, laying the groundwork for a well-structured specification.

The beauty of this approach lies in its simplicity and efficacy. When you start working on your figures, Neil advises, make it a point to identify which claims each figure relates to. This mapping acts as a guide, ensuring every claim has a corresponding figure where it can be effectively described. If you find a claim that doesn’t neatly align with any of the figures, it’s a clear sign that you need to either introduce a new figure or revise an existing one.

This proactive strategy offers two significant benefits. Firstly, it eliminates the risk of ending up with unsupported claims in your patent application – a common pitfall that can lead to lengthy revisions or, worse, a weakened patent. Secondly, it serves as a remedy for writer’s block. Knowing exactly what to write for each figure can streamline the drafting process, making it more efficient and less daunting.

Neil warns of the pitfalls of neglecting this step. Without pre-mapping your claims to figures, you might find yourself with a draft specification and unsupported claims. At this juncture, the options are limited and unappealing: either retrofit your figures (and consequently, the specification) to accommodate the orphaned claims or force them into sections where they don’t quite belong. Both scenarios lead to a disjointed and potentially weaker patent application.

In summary, Neil’s advice is straightforward yet powerful: map your claims to your figures before diving into the specification. This method not only saves time but also ensures that each element of your patent application is well-supported and clearly articulated.

Stay tuned for more insightful tips and tricks from Neil in our 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!

Elevating Patent Application Efficiency: The Case for a Claims-First Approach

Welcome to another installment of the Practical Patents series, where we delve into the art and science of patent drafting. Today, we’re exploring a provocative statement by Neil Kardos, an experienced patent attorney and advocate for strategic patenting: “If you’re not drafting claims, then figures, then the specification in that order, you’re doing it wrong.”

At first glance, this assertion seems to challenge conventional wisdom. Traditionally, many practitioners draft the figures and specifications first, leaving the claims for last. However, Neil’s approach, honed through experimentation and practice, suggests a radical departure from this norm.

Traditionally, the process begins with drafting detailed figures and a comprehensive specification. The rationale? It’s believed that having a clear visual and descriptive foundation paves the way for more precise claims. However, Neil’s experience tells a different story.

Neil discovered that this traditional method often necessitated significant rework. Terminology used in the specification might not align with the nuanced language of claim drafting. Questions arise: should it be “one or more” or “at least one”? “Multiple” or “a plurality”? Furthermore, naming conventions in the specification might not resonate with the intricate requirements of claim language, leading to a laborious cycle of revision and alignment between the claims, figures, and specification.

Advantages of a Claims-First Approach

  1. Clarity in Novelty and Non-Obviousness: Drafting claims first forces a focus on the invention’s novel aspects. It lays bare the innovative heart of the patent, guiding the subsequent detailing in figures and specifications.
  2. Efficiency in Drafting: By starting with claims, Neil found that subsequent steps became more streamlined. The figures and specification could be tailored to support the claims, reducing the need for iterative revisions.
  3. Strategic Focus: This approach ensures that the specification and figures emphasize the invention’s most crucial aspects, enhancing the patent’s overall strength.

Neil’s method turns traditional patent drafting on its head, emphasizing a strategic, claims-first approach. While it may not be a one-size-fits-all solution, it certainly provides food for thought for anyone involved in the patenting process.

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!

Elevating the Craft of Inventor Interviews

Navigating inventor interviews without a robust disclosure document can be a daunting task for even the most experienced patent professionals. In this week’s Practical Patent series, Neil Kardos shares invaluable tips for transforming these challenges into opportunities for deeper understanding and more comprehensive patent applications.

Tip #1: Record the Call

Recording inventor interviews is a game-changer. It allows patent professionals to immerse themselves in the conversation, fully absorbing the inventor’s insights without the distraction of note-taking. This approach ensures no crucial detail is overlooked, capturing the essence of the invention in its entirety.

Tip #2: Use a Structured Question Checklist

Neil emphasizes the importance of a structured approach, beginning with high-level questions to grasp the overall concept before delving into the finer details. This technique not only clarifies the invention’s framework but also reveals its unique aspects and potential improvements.

The Kardos Questionnaire: Your Blueprint for Success

  1. Identifying the Problem: Understanding the specific issue the invention aims to solve sets the stage for assessing its significance and market relevance.
  2. Summarizing the Solution: This helps in evaluating the innovation’s practicality and its effectiveness in addressing the identified problem.
  3. Exploring Existing Solutions: Knowing what’s already out there highlights the invention’s unique selling points and potential competitive advantages.
  4. Comparing the Invention: This comparison sheds light on why and how the new invention stands out in the existing market landscape.
  5. Uncovering Additional Benefits: Often, inventions have secondary advantages that can broaden their appeal and marketability.
  6. Identifying Novelty: Pinpointing the novel aspects of an invention is crucial for determining its patentability.
  7. Assessing Business Value: Understanding which elements of the invention hold the most commercial potential can guide strategic patent drafting.

For process inventions, a step-by-step walkthrough reveals the intricacies of the method, while mechanical inventions benefit from a detailed analysis of component interrelations. Brainstorming sessions about enhancements and alternatives further refine the invention’s scope and applicability.

Neil’s approach culminates with an open-ended query, inviting any additional insights or overlooked aspects, ensuring a comprehensive understanding of the invention.

By adopting these strategies, patent professionals can adeptly navigate inventor interviews, laying a solid foundation for robust and defensible patent applications.

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!

AI Prompts Do Not Compromise Attorney Confidentiality Obligations

In a detailed article on IPWatchdog, Harrity attorney Alexander Zajac provides a nuanced analysis of how the use of large language models (LLMs) aligns with the confidentiality obligations of attorneys. Addressing the concerns of IP attorneys about the remote storage of LLM queries, he compares this to the routine use of web search engines and cloud storage, which also involve sharing queries with third-party servers.

Alex scrutinizes the data retention policies of Google and OpenAI, explaining how they collect and use data, and how users can opt for more privacy. He emphasizes that if standard digital tools like email and cloud storage are trusted for confidential information, then the robust security measures of Google and OpenAI should be equally reliable. He suggests that attorneys can adjust settings on these platforms to enhance privacy, rather than avoiding LLMs altogether.

This thoughtful exploration by Alex sheds light on the intersection of technology and legal ethics, urging the legal community to adapt to technological advancements while maintaining client confidentiality. To delve into the specifics of these policies and comprehensive perspectives on AI as a legal resource, read the full article on IPWatchdog HERE.

Decoding the Patent Puzzle: Key Tips to Crystal-Clear Patent Applications

In the intricate and often bewildering terrain of patent applications, achieving clarity is both an art and a science. This is particularly true for software or process-based inventions, where conveying complex ideas in a comprehensible manner is crucial. Neil Kardos offers his expert advice, sharing pivotal strategies to demystify these often perplexing documents. In this blog post, we’ll delve into two of Neil’s key tips, which promise to bring much-needed lucidity to your patent applications.

Tip #1: The Power of Descriptive Naming

Neil’s first tip revolves around the strategic use of descriptive names for devices in patent applications. This approach goes beyond mere labeling; it’s about creating an intuitive understanding of each device’s role. For example, naming a device that handles user verification as an “Authentication Device” instantly reveals its function. This practice ensures that every mention of the device within the document not only identifies it but also reminds the reader of its purpose, thus maintaining a clear focus on the invention’s core functionalities.

Tip #2: Artful Separation of Function and Form

In his second tip, Neil highlights the importance of distinguishing between what devices do and what they are. He recommends that the narrative in the “Invention Detail Figures” should concentrate on the devices’ roles in the invention’s process. For example, describing a user device transmitting credentials to an authentication device should be about this process, not about the possible physical forms of the user device. The comprehensive description of the devices’ physical forms and variations should be allocated to the “Device Environment Figure.” This methodical separation ensures the patent application remains streamlined and focused, facilitating a smoother reading experience.

By implementing these tips, inventors and patent drafters can significantly enhance the readability and clarity of their patent applications. Neil’s guidance is not just about simplifying content; it’s about structuring it in a way that guides the reader through the invention’s narrative with ease and understanding.

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!

Mastering the Art of Clarity in Patent Applications

The world of patent applications is intricate and demanding. Among the numerous challenges faced by inventors and patent practitioners, one that stands paramount is the art of drafting a clear and engaging patent specification. Neil Kardos offers profound insights into enhancing the readability of patent applications.

The heart of Neil’s advice lies in the organization of the patent specification. The traditional approach of hopping between figures can be disorienting, leading to confusion. Neil advocates for a more linear, structured approach. This entails starting with an introductory paragraph for each figure, detailing its contents thoroughly, and concluding with a summary. Such an approach doesn’t just enhance readability; it builds a narrative, making the invention’s journey through its various stages more comprehensible and compelling.

Neil delves into two scenarios frequently encountered in patent drafting:

  1. Sequential Storytelling with Figures: Often, a series of figures (e.g., Figs. 1a to 1c) is used to unfold the invention step-by-step. Neil suggests employing a single introductory and concluding paragraph for the entire series. This technique ensures a seamless narrative flow, making the progression of the invention easier to follow and understand.
  2. Balancing Overview and Detail: When one figure presents an overarching view (e.g., Fig. 1) and another dives into granular details (e.g., Fig. 2), Neil recommends a delicate balancing act. Mention Fig. 2 while discussing Fig. 1, but save the in-depth discussion for later. This approach keeps the reader anchored in the broader context before delving into specifics, thereby maintaining engagement and understanding.

Neil’s methodology extends beyond mere structural organization. It embraces the art of storytelling within the technical confines of patent law. By treating each figure not just as a visual representation but as a chapter in the story of the invention, the drafter can create a more immersive and understandable narrative. This approach resonates with examiners and potential licensees, making the invention not just a list of technical features but a compelling innovation journey.

In the realm of patents, clarity is not just about compliance; it’s about captivating the reader, be it an examiner, a judge, or a potential investor. By adopting these strategies, patent practitioners can transform their applications from mere technical documents to engaging narratives that effectively communicate the essence of their inventions.

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!

Crafting the Narrative in Patent Applications

In the realm of patent applications, the art of storytelling is often overshadowed by the complexity of technical details. However, Neil Kardos brings a refreshing approach to structuring patent applications, emphasizing not just the technicalities but the story of the invention itself. His method improves readability and enhances the experience for inventors and in-house counsel alike.

1. Setting the Stage with Background
Neil begins by advising the inclusion of a background section. This part introduces the technology behind the invention. Depending on the familiarity and complexity of the technology, this section can vary in length. For well-known concepts, a few sentences suffice, but for more intricate technologies, a detailed exposition might be necessary.

2. Identifying the Technical Problem
Following the background, Neil emphasizes the importance of clearly outlining the technical problem addressed by the invention. This step is crucial as it sets the stage for the solution and helps the reader understand the necessity of the invention.

3. Introducing the Technical Solution
Next, a high-level explanation of the technical solution is presented. This part showcases how the invention solves the identified problem. It’s a strategic move to keep this explanation at a high level, ensuring clarity and engagement.

4. Highlighting the Technical Benefits
Neil suggests elucidating the technical benefits of the invention. This section reinforces the value of the invention and its contribution to the field.

5. Diving into the Details
The fifth part of the structure delves into the specifics of the invention, including various options, alternatives, and detailed benefits. This comprehensive exploration allows for a deeper understanding of the invention’s potential.

6. Standardized Figures and Descriptions
Finally, standardized figures and descriptive language, particularly important for hardware supporting process-based inventions, are placed towards the end of the application. Neil’s rationale for this arrangement is to captivate the reader’s interest with the most significant elements upfront, avoiding boredom or confusion.

Neil’s recommended structure is not just about organizing content; it’s about crafting a narrative that makes patent applications more accessible and engaging. By following this structure, patent professionals can effectively communicate the essence of an invention, making the complex world of patents a bit more approachable and relatable.

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!

Navigating the Maze of Machine Learning Patents: Strategies for Steering Clear of Obviousness

In the ever-evolving domain of machine learning, securing patents for novel inventions is a complex challenge. Neil Kardos shares his expert strategies in this week’s Practical Patents series. His focus is on the intricacies of drafting machine learning patent applications that stand out, avoiding the common trap of obviousness.

Neil stresses the significance of meticulously detailing machine learning patents. Building on the insights shared in last week’s blog post, which highlighted the importance of delineating the inputs to the model, the outputs generated, and the resultant actions, he now introduces three advanced strategies to further distance machine learning models from the risk of being deemed obvious.

Strategy 1: Novel Inputs

Neil’s first strategy centers on the unique choice of inputs in machine learning models. He advocates for leveraging unconventional inputs with significant predictive power to strengthen the non-obviousness of a patent application. For example, he cites the intriguing correlation between an individual’s time spent in a car and their smartphone purchasing preferences as a potential differentiator in a patent application.

Strategy 2: Diverse Outputs and Actions

The second strategy Neil suggests relates to the outputs of the models and the corresponding actions. He points out that beyond the typical binary actions, incorporating a range of responses based on different levels of probability can impart a unique edge to a patent. This could involve varying marketing tactics depending on the predicted likelihood of a customer making a purchase.

Strategy 3: Continual Model Refinement

Neil’s final strategy emphasizes the ongoing improvement and adaptation of machine learning models, especially through feedback mechanisms for re-training. Such adaptive features are often viewed positively by patent examiners and can be crucial in either the independent or dependent claims of a patent application.

Neil offers these strategies as a guide for those seeking to navigate the intricate world of machine learning patents. His insights shed light on effective approaches to elevate machine learning patent applications above the standard threshold of obviousness.

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!

Harrity Analytics Presents: 2023 U.S. Patent Office Superlatives

In the dynamic world of patents, it can be difficult to stay informed about the latest trends and statistics. Harrity Analytics has compiled a fascinating series of USPTO Superlatives for 2023, highlighting key players based off of statistics from the United States Patent Office. Let’s dive into these insightful findings:

1. US City with Most Inventors on Granted US Patents (2023):
-San Diego, CA stands out this year with the most inventors! Inventors from this vibrant city have been listed on 18,429 patents granted in 2023. This is an impressive figure, showcasing the city’s thriving innovation ecosystem.
– Historical Leader (Since 1999): San Jose, CA holds the long-term crown. With its deep-rooted connection to Silicon Valley, inventors from San Jose have been listed on US granted patents a staggering 206,363 times since 1999.

2. World City with Most Inventors on Granted US Patents (2023): – Tokyo takes the global lead! This year, inventors from Tokyo have been listed on 25,317 US granted patents. Since 1999, the total reaches an impressive 403,818.
– Runners-up: Beijing and Seoul follow closely, with 22,585 and 22,205 listings respectively, demonstrating the global spread of innovation.

3. US State with the Most Patents Granted (2023):
– California (CA) leads the race in the United States, with CA inventors being listed on 153,141 granted patents in 2023. This reinforces California’s position as a hub of innovation and technological advancements.
– Following CA are Texas (TX) and Massachusetts (MA), with 31,757 and 25,214 patent listings in 2023 respectively, highlighting the diverse geographic distribution of innovation in the US.

4. Country with Most US Patents Listing Foreign Priority (2023):
– Japan is at the forefront in this category. Out of 329,056 US patents granted so far in 2023, 39,919 claim foreign priority in Japan. This is a testament to the strong innovation links between Japan and the US.
– China and Korea are not far behind, with 25,598 and 25,567 patents claiming priority respectively, showing a significant Asian influence in US patent filings.

These superlatives not only reflect the current landscape of patent filings but also highlight the global interconnectivity in the field of innovation and intellectual property. For those interested in diving deeper into these trends and accessing more analytics, visit Harrity Analytics.

Stay tuned for more insights and analyses from Harrity Analytics, as we continue to explore the ever-evolving world of patents and innovation.

 

Decoding the Art of Machine Learning Patents

In the dynamic and ever-changing world of machine learning (ML), creating a standout patent application is akin to solving a complex puzzle. It’s a landscape where innovation meets the challenge of differentiation. Neil Kardos offers insightful strategies to navigate this complexity, ensuring your ML patents are not just innovative but distinctively non-obvious.

The crux of patenting ML innovations lies in surpassing the “non-obviousness” threshold. This is where Neil’s expertise becomes invaluable, guiding inventors to develop patents that truly stand apart.

Strategy 1: Capitalizing on Unique Inputs

Neil highlights the significance of the inputs used in ML models. The key is in leveraging unconventional inputs that provide predictive insights. Imagine an ML model predicting consumer behavior based on seemingly unrelated data, like time spent in a car. These unique inputs can dramatically strengthen the non-obviousness of a patent application.

Strategy 2: Leveraging Outputs and Actions

The second strategy delves into the outputs of ML models and the subsequent actions they trigger. Neil suggests focusing on how these outputs, often probabilistic, can dictate varied actions at different confidence levels. This nuanced approach adds a layer of sophistication to your patent, exemplified by a navigation system that adjusts routes based on the ML model’s confidence levels.

Incorporating these strategies into your patent claims is essential. Neil advises that if these innovative approaches are central to your invention, they should be included in independent claims. However, if they are supplementary, consider adding them to dependent claims or the specification. This method ensures robustness during the patent prosecution process, especially against potential prior art challenges.

In the intricate dance of ML patenting, it’s the nuanced details and strategic claim drafting that make all the difference. With Neil’s guidance, your ML inventions can transcend the ordinary, securing a place in the ever-growing patent landscape.

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!

Efficient Patent Application Drafting: Minimizing Rework in Inventor Interviews

In the world of patent application drafting, efficiency is key. Neil Kardos offers valuable insights into making the process more streamlined, especially in handling inventor interviews. A common trap many patent practitioners fall into is the inadvertent engagement in rework, particularly in the way inventor interviews are conducted. Transcribing or listening to the entire recording of these interviews, as it turns out, is a significant time sink.

Recording inventor interviews is useful as a backup, but relying on them extensively for information can lead to inefficiency. Instead, Neil advocates for effective note-taking as the cornerstone of efficiency. This involves preparing questions in advance, written in blue ink, and noting down answers in red during the interview. This method is flexible, working well with both traditional and digital note-taking methods.

In this process, strategic note-taking is key. It’s important to avoid noting down information that is already known or included in the invention disclosure form (IDF). The focus should be on clarifying ambiguities and jotting down new insights. If you fall behind in note-taking, marking the time elapsed in the interview can help you quickly locate the needed section later, should you need to revisit the recording.

Modern technology, such as screen sharing, can further enhance the efficiency of reviewing recordings, allowing for quick navigation to relevant sections. A critical aspect of this process is setting aside time for a post-interview debrief. This could range from determining focus areas for claims to drafting the claims and figures. Neil describes this method as “frontloading,” a highly effective strategy that he discusses in more detail in another presentation.

Neil’s advice highlights subtle but impactful methods for refining workflow in patent application drafting. By adopting these strategies in inventor interviews, patent practitioners can transform a routine task into a significant efficiency booster.

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!

Revolutionizing Patent Applications: The Case for Clarity in Language

In the intricate world of patent law, the clarity of legal documents is not just a nicety but a necessity. Neil Kardos, a vocal advocate for more readable patent applications, recently highlighted an issue that’s often overlooked yet crucial. Patent applications, by their nature, are complex. They are technical documents, intricately detailing how new technologies function. However, Neil points out an additional layer of complexity that stems not from the content but from the style of writing.

Patent professionals are experts in their fields, with rich backgrounds in science, math, and engineering. However, Neil observes that this technical focus often comes at the expense of writing skills. The result? Patent applications that are not just technically dense but also linguistically challenging. Adding to this complexity is the traditional use of legal jargon, or legalese, which can make documents even more daunting.

Neil suggests a simple yet effective change: replacing “said” element with “the” element in patent claims. While this might seem minor, the impact on readability is significant. He draws on a Patently-O article, which indicates that in the 1970s and 1980s, about 90% of patent applications used “said”. Today, this usage has reduced to around 20%. Neil argues that even this is too high. By embracing simpler language, the patent community can make these vital documents more approachable and understandable.

What sets Neil apart is his approach to this issue. He doesn’t just propose a change; he invites a discussion. This open invitation is more than a call for change; it’s a call for a community-wide reflection on how the patent world communicates.

Neil’s advocacy for clearer writing in patent applications goes beyond merely suggesting a change; he fosters a dialogue towards a future where legal documents are not barriers but bridges to understanding. By adopting simpler language, the patent community can ensure that these crucial documents are not only legally sound but also broadly accessible.

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!

The Art of Precision: Enhancing Patent Illustrations with a Touch of Expertise

Navigating the patent process is akin to crafting a masterpiece—each line, shade, and angle contributes to the final depiction of innovation. In this intricate dance, the initial sketches set the stage. Neil Kardos, like a skilled artist, starts with strokes of inspiration, transforming the abstract into tangible hand-drawn figures.

This is where the journey from concept to concrete begins. It’s a pivotal transformation, facilitated by the adept hands of a Visio specialist at Harrity. With an arsenal of tailored templates and precision stencils, these initial sketches are elevated to the standards of professional patent drawings—often within the span of a day.

For many practitioners, however, such in-house luxuries may be a distant dream. Neil advises those in the wider legal landscape to seek out and foster relationships with professional drafters or specialized firms. Particularly for elaborate mechanical applications, where the minutiae matter, these partnerships can be invaluable.

Neil’s strategic advice extends beyond the logistics of drafting—it’s a philosophy of time management and focus. For the modern attorney, particularly in the world of fixed fees, the importance of honing in on crafting claims and the specification is paramount. Neil shares some of his personal tips to cut down on the drafting drudgery: avoid redrawing components that can be pulled from an IDF or another application—simply annotate “copy from slide 7 of the IDF” as a directive. And when it comes to modifications, why not start with a print-out of an existing drawing and manually add your edits?

At the heart of Neil’s methodology is a balance between efficiency and quality. By delegating the drawing process, attorneys at Harrity & Harrity are empowered to dedicate their expertise to the core elements of patent applications. This not only enhances the firm’s productivity but also upholds the high-quality standard that clients have come to expect.

What inventive methods do you employ in your practice to ensure your patent drawings are the epitome of efficiency and precision? At Harrity & Harrity, we’re committed to learning and sharing insights that propel us all towards excellence in the ever-evolving patent landscape.

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!

Streamlining Inventor Approvals in Patent Drafting

As patent attorneys, one of our principal objectives is to draft applications that not only meet legal standards but also receive the nod of approval from the inventors we represent. It’s a delicate balance of interpreting technical ingenuity and presenting it through the stringent lens of patent law. Join us this week in our Practical Patents series, as Neil Kardos offers seasoned advice on how to navigate this process effectively, ensuring that when inventors review our applications, their most frequent response is an affirming “looks good.”

The process begins with the inventor interview—a critical juncture where the foundation for a robust application is laid. Here, we delve into the nuances of the main embodiment of the invention. Yet, it’s not just about the present innovation; it’s about potential future iterations as well. This is where the art of questioning becomes paramount.

Neil advises that to unlock the full narrative of an invention, one must go beyond the surface. It starts with identifying the novel aspects of the technology at hand. The question “What are some other ways this could be done?” not only helps in outlining potential alternatives but also safeguards against future design-around efforts. By brainstorming these alternatives preemptively and discussing them with inventors, we can stimulate a more dynamic and comprehensive exploration of the invention’s scope.

The inquiry doesn’t stop at what exists; it extends to what could follow. Asking inventors to envision further improvements or next steps in their innovation journey can reveal valuable insights into the invention’s future applications or enhancements. This foresight is crucial in crafting a patent application that is not only relevant today but will stand the test of time.

Lastly, a thorough wrap-up question such as “Is there anything we’ve overlooked?” ensures that all relevant details have been captured. It’s an essential part of the interview that can uncover overlooked aspects, leading to a more complete and robust application.

Setting expectations with the inventor is equally vital. The level of detail and focus in the patent application often correlates with the inventor’s experience with the patent process. For newcomers, it’s beneficial to outline what the patent application will include and why certain aspects will be highlighted over others. This clarifies the document’s focus on novel elements and prepares the inventor for the application’s format and content.

By adhering to these strategies, Neil asserts that patent attorneys can significantly reduce the need for subsequent revisions and increase the likelihood of obtaining that initial “looks good” from inventors. This approach not only streamlines the review process but also fosters a collaborative relationship with the inventor, ultimately leading to higher-quality patent applications.

The key is about understanding the inventor’s vision and ensuring that the patent application accurately and effectively communicates that vision within the legal framework. By incorporating these practices, patent attorneys can enhance their drafting process, resulting in greater satisfaction for both the inventors and the legal professionals tasked with protecting their creations.

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!

The Evolving Landscape of Automotive Patents Among German Automakers

The patent landscape in the automotive industry has been a topic of interest for stakeholders seeking to navigate the technological advancements and innovations shaping the market. A recent analysis by Harrity Analytics illuminates how the tides have turned in patent acquisition among Germany’s top three automakers—Mercedes, BMW, and Porsche—over the last two decades.

In the early 2000s, Mercedes led the pack in annual patent acquisitions. This period can be characterized as one where Mercedes aggressively sought to protect its intellectual property, a strategy that aligned well with the company’s pursuit of technological leadership in the industry.

However, a noticeable shift occurred around 2010. At this juncture, Mercedes began acquiring fewer patents annually, leveling the playing field for BMW and Porsche. Both companies seized this opportunity and started acquiring patents at a rate that put them in line with Mercedes. The trend suggests a strategic repositioning by BMW and Porsche, possibly driven by a need to catch up with Mercedes’ early lead and to solidify their own footing in rapidly evolving areas like electric vehicles, autonomous driving, and connected services.

The most significant transformation has been observed in the past five to seven years. During this phase, BMW and Porsche have not only caught up but have surpassed Mercedes in annual patent acquisitions. This shift signals a substantial realignment in the industry’s innovation focus, with BMW and Porsche ramping up their efforts to secure technological advancements through intellectual property. Conversely, Mercedes has fallen well behind, prompting questions about its long-term strategy in a landscape increasingly defined by disruptive innovations.

Understanding these shifts is crucial for industry players, investors, and policymakers as it provides insights into the competitive dynamics and innovation strategies of these automakers. The data suggests that while Mercedes may have been an early pioneer, BMW and Porsche have been more agile in adapting to new technological paradigms, as evidenced by their more robust patent portfolios in recent years. It will be interesting to observe how technological advances continue to disrupt the automotive industry and whether these three big players will adjust their patent strategies.

Keep an eye on the Patent 300® Dashboard to see how these trends play out!

Check out our other Patent Analytics services HERE.

Understanding the Sequence: Navigating the Nuances of “First” and “Second” in Patent Claims

In the meticulous practice of patent application drafting, the choice of words can be as crucial as the invention itself. Neil Kardos explores the subtleties of using sequential terms in the latest edition of the Practical Patents Series. Clarity and precision in claim language are the cornerstones of a robust patent application, a principle that Neil emphasizes in his discourse.

The common practice of denoting elements or steps as “first” and “second” serves a fundamental role in distinguishing components within patent claims. However, Neil cautions that these seemingly straightforward terms can be a double-edged sword. He presents a scenario that many practitioners encounter: defining a sequence within an invention. The term “first” might intuitively imply the beginning of a sequence, but as Neil elucidates, its interpretation in patent law can be broader.

Neil urges that when the order is pivotal to an invention’s functionality, the terms “first” and “second” should be used with discernment. For instance, if the intention is to specify the very start of a sequence, more explicit language might be warranted, such as “an initial time period” or “the earliest-occurring time period.” These alternatives leave no room for ambiguity and ensure that the claims are understood as intended.

In his practical guidance, Neil also highlights the importance of aligning the specification and drawings with the claims. This harmony across the patent application is vital for delineating the exact meaning of sequence terms, especially when dealing with inventions where timing is key.

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!

Monitoring U.S. Patent Maintenance Fee Data: A Look at Strategy Shifts

Monitoring U.S. patent maintenance fee data provides valuable insights into the behavior and strategies of patent owners. At Harrity & Harrity, we have been actively tracking this information since 2015. Our analysis reveals a consistent pattern in maintenance fee payments, with data generally falling within a single standard deviation. However, 2020 stands as an exception, with activity moving outside this range for the first time. This anomaly could be attributed to various factors, such as the economic uncertainties of the COVID-19 pandemic or shifts in specific technology sectors.

As we look toward 2024, it becomes increasingly important to observe whether this data will experience further deviations. These trends could indicate either a return to previous payment behaviors or the emergence of new strategic approaches by patent owners. Factors like innovation cycles, market demands, and global crises could all contribute to shifts in data.

For patent owners, the implications of this analysis are significant. A consistent reevaluation of patent maintenance strategies is advisable to ensure alignment with long-term organizational goals and current market conditions. Harrity & Harrity’s commitment to patent analytics and consultative services aims to provide clients with the necessary insights to navigate the complex landscape of intellectual property rights effectively. As we approach 2024, we will continue to monitor these trends closely, offering valuable data to help patent owners stay informed and agile in their maintenance fee strategies.

Check out our Patent Analytics services HERE.

Navigating Patent Prosecution: Understanding Your Examiner for Better Outcomes

In the world of patent prosecution, understanding the intricacies of the process can be the key to success. Neil Kardos shares some invaluable insights into how to achieve better outcomes during patent prosecution. With a background as a former patent examiner at the USPTO, Neil brings a unique perspective that can significantly impact your patent application journey.

Neil’s journey from a patent examiner to his current role at Harrity has given him a unique perspective on the patent world, and he’s here to shed light on a crucial aspect of the process – working effectively with examiners.

When Neil embarked on his career as a patent examiner, he encountered the familiar hesitation that often plagues newcomers in the field when it comes to allowing patent applications. This sentiment was widespread among his peers, and the challenges were amplified by his assignment to a business methods art unit. Neil’s early experiences reflect the reality of the patent landscape, as his examiner score in PatentPrufer started at a modest 56 out of 100.

Experience Breeds Confidence

Time and experience proved to be Neil’s greatest allies. With the accumulation of years spent in patent examination, he gradually became more comfortable with granting patents and, equally crucial, collaborating effectively with applicants to fine-tune claims for a higher likelihood of success. Neil’s journey underlines a universal truth in patent prosecution: grasping the unique dynamics of your assigned examiner is a cornerstone of success.

In the world of patent examination, each examiner brings their distinct perspective, expertise, and approach to the table. Acknowledging and embracing this individuality is pivotal in navigating the intricacies of patent prosecution. At Harrity & Harrity, we recognize this fundamental truth.

Harnessing the Power of Examiner Analytics

Within our firm, we harness the potential of examiner analytics to make well-informed decisions during the prosecution process. A critical judgment involves evaluating whether to request the presence of a primary examiner during inventor interviews. This decision hinges on the experience level of the examiner assigned to your application.

Moreover, you have the opportunity to request a specific primary examiner based on their performance score. This score offers a rough indication of their likelihood to allow your patent application. It’s a strategic move that can significantly impact your prosecution strategy.

In closing, Neil’s remarkable journey underscores a profound truth: the art of patent prosecution is as diverse as the examiners themselves. By delving into the intricacies of each examiner’s approach and leveraging the power of examiner analytics, you hold the key to unlocking a world of possibilities in the ever-evolving landscape of patents. As you embark on your own patent prosecution journey, remember that knowledge truly is power, and harnessing it can lead to transformative success.

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!

Leveraging AI in Gap Analysis Reports

Gap Analysis Reports are instrumental for companies to understand the comparative strengths and weaknesses in their patent portfolios. At Harrity & Harrity, we have begun to incorporate generative AI technology like ChatGPT to rapidly identify and summarize these crucial differences between portfolios, based on data provided by the Harrity Analytics Team. The use of AI in this context is not just an experimental venture; it presents a significant opportunity to make the patent analysis process more efficient, quicker, and potentially less costly, particularly in matters of litigation and licensing.

Our Patent 300® Dashboard helps users easily filter between companies and technology areas for easy to view gap analysis, which AI can then quickly delineate. Let’s take a case study that involved comparing the patent portfolios of NVIDIA and Intel Corporation. This analysis highlighted several interesting differences and competitive focuses between the two tech giants. For example, NVIDIA has a noticeable lead in ray-tracing technology with 33 patents, while Intel trails with only 13. When it comes to learning methods, a domain essential for artificial intelligence, Intel surprisingly leads with 31 patents as opposed to Nvidia’s 14. In the areas of texture mapping and processor architectures, both companies appear neck-and-neck, each holding five patents, suggesting a mutual recognition of the importance of these technologies. Furthermore, while NVIDIA has made some headway in cooling technologies with four patents, Intel has none. On the flip side, Intel dominates in the domain of remote windowing with eight patents, dwarfing Nvidia’s single patent. Lastly, in terms of the organizational structure of processors, Intel holds twice the number of patents that Nvidia does, with six against three.

The potential implications of this rapid, AI-driven comparative analysis are significant. Firstly, by providing quick and accurate insights into patent portfolios, the AI can significantly reduce the time and financial resources usually required for litigation and licensing processes. Secondly, these insights can also be instrumental for a company’s strategic planning, particularly for directing R&D investments and identifying areas for competitive positioning. Finally, when aggregated across multiple analyses, this data may also serve as an industry barometer, signaling where innovation is heating up and where it is cooling down.

Overall, the integration of generative AI technology like ChatGPT in the patent analysis process offers promising advantages. By parsing large sets of complex data with both speed and accuracy, we are poised to provide our clients with more cost-effective and timely solutions without compromising the quality of insights crucial for strategic decision-making. The challenge now lies in considering how to further harness this technology.

Could there be other facets of the patent field where the capabilities of generative AI could be further explored for better efficiency and cost-effectiveness? Let us know your thoughts!

Check out our Patent Analytics services HERE.

Providing Context in Patent Applications: A Strategic Approach to Storytelling and Claiming

Patent professionals understand that the choice of language in patent applications can have far-reaching implications. This week, Neil Kardos explains how one such term fraught with peril is “background.” The concerns around this terminology are twofold:

  1. Admitted Prior Art: Any information presented in a section labeled as “background” may be considered as admitted prior art, which can negatively influence the patent examination process.
  2. Obviousness Rejection: Describing the problem solved by the invention under “background” could provide the examiner with a basis to argue that the solution is obvious, thereby facilitating an obviousness rejection.

Alternatives to ‘Background’

So, how can one maneuver around these pitfalls? Neil explains that there are two strategies that can be employed:

Omission or Renaming

The first strategy is to either omit a section explicitly called “background” or to rename it to something like “Introduction” or “Technical Field.” By doing so, you reduce the risk of the examiner interpreting this section as an admission of prior art.

Contextual Placement

The second strategy involves placing the context or “background” information within the “Detailed Description” section. Here, you can set the stage for understanding the technical problem without overtly admitting it as prior art.

Tailoring Context to the Nature of the Invention

Different types of inventions require different levels of contextual detail:

  • Technical Standards-Related Inventions: For an invention that closely aligns with technical standards, it’s crucial to clarify any standard-specific terminology. Failure to do so could lead to an examiner or court misconstruing your patent claims.
  • Consumer-Friendly Inventions: For inventions that are easier to comprehend, such as extending a phone’s battery life, a shorter, less technical explanation would suffice.

Addressing Section 101 Rejections

For inventions that stand a high chance of facing Section 101 rejections, it’s beneficial to frame the invention as a technical solution to a technical problem. This could make it easier to argue against any 101-based rejections.

In conclusion, Neil explains that choosing the right language and placing it appropriately can make a significant difference in the outcome of a patent application. By considering the nature of your invention and the potential pitfalls surrounding the term “background,” you can craft a more compelling and robust patent application. This strategic approach not only improves the chances of success at the patent office but also sets a strong foundation for any subsequent legal evaluations.

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!

The Power of Checklists in Patent Application Drafting

When it comes to the intricate process of drafting patent applications, even seasoned professionals can find themselves submerged in a maze of technicalities, client-specific requirements, and meticulous details. Neil Kardos highlights a simple yet effective strategy for navigating this complex terrain: the use of a checklist. This blog post delves into how a well-crafted checklist can not only improve the quality of your patent applications but also bring a new level of efficiency to your work.

The Quality Factor: More Than Just a Safety Net

First and foremost, let’s talk about quality. It may seem like a given, but when you’re working on something as complex as a patent application, it’s surprisingly easy to forget the basics. Running a spell check or utilizing patent proofreading tools might seem rudimentary, but these are the steps that ensure the polished finish of a professional application. Here, a checklist acts as more than just a safety net; it becomes an essential quality control measure. By ticking off these checks as you go, you make sure that no minor or major step gets overlooked, thereby elevating the quality of your entire application.

Navigating Client Preferences: A Customized Approach

In a professional landscape where one size rarely fits all, it’s imperative to cater to the unique needs of each client. Whether it’s about the sequence in which they want to review the application—be it claims, figures, or the entire draft—or the mode by which they prefer to receive submissions, client preferences can vary widely. This is where a customized checklist shines. Not only does it serve as a reminder of the individual needs of each client, but it also acts as a flexible tool that can be adapted to different processes, ensuring you hit the mark every time.

Drafting: An Art and a Science

When it comes to the art and science of drafting a patent application, most of us don’t approach it in a linear fashion. Neil, for instance, prefers to start with the context for the invention and the details of the invention itself. This initial focus allows him to fine-tune the claims, which are the backbone of any patent application. Once the claims are set, he then circles back to complete the summary, flow chart descriptions, and other interconnected sections. Here, the checklist serves as a tactical guide, ensuring that not only do all these pieces get the attention they deserve, but they also follow an optimized sequence for maximum efficiency.

At its core, a checklist is more than just a list of tasks; it’s a strategic tool that enables better planning, higher quality, and efficient execution in the patent application drafting process. Neil recommends creating master checklists that can be customized according to the diverse needs of each client. This approach not only fosters quality and efficiency but also brings a newfound level of clarity to your drafting process.

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!

The Art of Word Selection in Patent Application Drafting

Drafting a patent application is an art form that requires meticulous attention to detail, especially when it comes to language use. Neil Kardos accentuates this point by highlighting the potential pitfalls of using terms like “first” and “second” in patent claims. Such terms, while seemingly straightforward, can introduce ambiguity that may have far-reaching legal implications.

Neil presents a compelling example to illustrate the complexities involved. Imagine a claim that involves multiple signals, say a “first signal” that generates a “second signal.” If additional claims reference other signals, labeling them as “third,” “fourth,” etc., could create significant confusion. This is not just a theoretical concern; such ambiguity could actually compromise the enforceability or scope of the patent claim.

Strategic Approaches to Resolve the Issue

  1. Specific Labeling: One way to avoid confusion is to adopt specific labels for these signals. However, care must be taken to ensure these labels do not unintentionally limit the claim’s scope.
  2. Dependent Claim Labeling: Another approach Neil recommends is to only use “first” and “second” in the independent claim. This allows for the use of distinct labels for signals in dependent claims, minimizing the risk of confusion.

Considerations for Long-term Strategy

As patent attorneys, agents, and support staff, it’s crucial for us to think beyond the immediate challenges of patent drafting. For instance, how can we adopt an analytics-driven approach to identify common pitfalls in patent application drafting? How could automation aid in standardizing terminology and reducing errors?

Neil’s advice is not just a set of drafting tips but also a call for critical thinking in the patent field. His insights remind us that every word in a patent application carries weight and could have long-term consequences for innovation in the computer, electrical, and mechanical fields. As we continue our pursuit of innovation and quality in patent law, taking heed of such expert advice is indispensable.

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!

Mastering the Art of the Inventor Interview: Ensuring Confidence While Asking the Right Questions

Greetings fellow patent enthusiasts! An inventor interview is not just an information-gathering session; it’s an opportunity to build rapport and trust between the inventor and the patent professional. Join us this week as Neil Kardos explains how the nuances of these interactions can significantly impact the inventor’s confidence in your capabilities to represent their interests adequately.

Pre-Interview Research: A Non-Negotiable Step

Before the interview, always take the time to research any unfamiliar concepts in the inventor’s documentation. This not only prepares you for the discussion but also avoids asking questions that could potentially undermine the inventor’s confidence in your expertise. A simple web search for unknown terms or concepts is often enough to provide the necessary context.

Tackling the Unknown: Phrasing is Key

There will inevitably be times when prior research doesn’t yield clear explanations for certain terms or technologies. In such instances, how you pose your questions can make all the difference. Here are some strategies:

1. Acknowledge Your Effort

Example: “I searched the web for XYZ, but I couldn’t find a really good explanation. Can you explain it to me?” This approach shows that you have made an effort to understand but have hit a roadblock, inviting the inventor to fill in the gaps.

2. Draw Parallels with Familiar Concepts

Example: “I’m familiar with how ABC works, but I don’t understand XYZ. Can you explain it to me?” This method acknowledges your expertise in related areas and humbly asks for clarification on the specific topic at hand.

3. Navigate Company-Specific Jargon

Example: “I saw that you’ve used the term XYZ in your documentation, and I couldn’t find a good explanation of what that is. Can you explain that to me, or is there another term for this that I could look up?” When dealing with internal jargon, this approach shows that you are proactive and willing to learn.

The inventor interview is a crucial aspect of patent law practice, requiring a blend of expertise, humility, and strategic questioning. A well-prepared and conscientiously executed interview not only yields the information necessary for drafting a robust patent application but also establishes a positive working relationship with the inventor.

So the next time you’re preparing for an inventor interview, remember these tips. A little preparation and strategic questioning can go a long way in ensuring a productive and confidence-inspiring conversation. 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!

A Strategic Approach to Preparing Patent Claims for Multiple Jurisdictions

Welcome back, fellow patent enthusiasts! In the dynamic world of patents, one size does not fit all, especially when considering international filings. As a seasoned patent professional, Neil Kardos delves into strategic tips tailored to the unique requirements of several major jurisdictions.

1. Understanding U.S. Application Trends: For U.S. applications, it’s customary to file with 3 independent claims and 20 total claims, maximizing the filing fee benefit without incurring additional charges for excess claims. As an illustration from software patent applications, Neil frequently files:

  • 7 method claims
  • 7 device claims
  • 6 computer-readable medium claims

2. European Patent Office (EPO) Strategies: The EPO permits 15 claims without additional fees. A savvy approach Neil adopts is leveraging method claims to craft a nuanced computer-readable medium claim. This involves:

  • Using the 7 method and 7 device claims from the U.S. application.
  • Adding a unique 15th claim: “A computer program product that, when executed by a processor, causes the processor to perform the method of any of claims 1 to 7.”

Further, utilizing multiple dependent claims, which the EPO allows, can be beneficial.

3. Navigating Claim Filings in China and India: Both China and India allow a filing of up to 10 claims without surplus fees. Given that each additional claim costs under $25, Neil suggests submitting between 10 to 20 claims from the U.S. application. Filing all 20 claims in these jurisdictions would cost approximately $250, a stark contrast to the EPO’s fee structure.

4. The Canadian Perspective: Canada presents a unique scenario, as there aren’t excess claim fees. Neil’s strategy here often involves deferring examination until the entire U.S. patent family (inclusive of parent applications and continuations) is finalized. Subsequently, a Patent Prosecution Highway request is filed with an amendment encompassing all claims from the sanctioned U.S. applications.


In conclusion, effectively preparing patent claims for international jurisdictions demands both a deep understanding of regional nuances and a strategic mindset. Neil’s insights, as presented, provide a robust foundation for such endeavors.

Thank you for reading, we invite you to share your experiences and tips regarding claim preparation in these or other jurisdictions. 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!

Enhancing Claim Readability for a Competitive Edge

Greetings once again, esteemed patent aficionados! We’re back this week with Neil Kardos’ Practical Patent tips, as he shares a valuable tip that can not only enhance the readability of your patent claims but might also bestow a subtle psychological advantage when liaising with a patent examiner.

In the complex field of patent drafting, clarity and precision are paramount. Neil shares a valuable insight into refining the presentation of patent claims. The objective? To make them more reader-friendly and potentially create a positive impression on patent examiners.

Typically, claims are drafted using sizable blocks of text for each step or component. These blocks are neatly separated by semicolons and start on fresh lines with an indent. But what happens when a single step or component spans over four lines or more?

Neil suggests, “If you encounter a step comprising two lines, followed by a ‘wherein’ clause also spanning two lines, it can be cumbersome for readers. Instead of presenting it as a continuous four-line chunk, break it up.” He recommends placing a comma at the end of the first two lines, then initiating the ‘wherein’ clause on a new indented line. This technique breaks the invention down into bite-sized, easily digestible segments.

Possible Psychological Advantage with Examiners

Another potential upside to this approach is its optical effect. The same word count, when spaced out, consumes more lines on paper, possibly giving the impression of a more detailed claim. Kardos, drawing from his experience as a former examiner, expresses skepticism about the weightage of this theory. He says, “In my examiner days, I was mostly hunting for the claimed invention, irrespective of its presentation.” However, if an examiner vacillates about an allowance, and this presentation nudges them towards granting it, then the strategy surely holds merit.

Enhanced Readability Equals Improved Quality

Neil emphasizes that the chief advantage of this technique lies in its improved readability. An easily comprehensible claim not only facilitates the examiner’s job but also ensures that reviewers and inventors can accurately gauge if the invention has been captured aptly.

He concludes, “In the intricate realm of patents, clarity is a boon. By adopting this simple strategy, patent attorneys can significantly enhance the quality and perception of their claims. I genuinely hope practitioners find this tip beneficial.”

Thank you for reading, and we invite you to explore more insights and strategies in the patent field on our Practical Patents blog series. 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!

Honing Business Methods Patent Applications: A Shift Towards Technicality

Welcome back, fellow patent enthusiasts! We’re back this week with Neil Kardos’ Practical Patent tips, as he draws on his experience as a former business methods patent examiner and his extensive work in the field, to offer strategic insights for navigating the complex terrain of business methods patent applications. Neil emphasizes the imperative of transitioning the focus from primarily business methods to technical aspects.

Understanding the Shift

Business methods often grapple with a common conundrum: they are inherently business-centric, which makes them particularly susceptible to invalidity challenges. The magic lies in reframing the invention’s narrative. Neil’s approach hinges on the following:

  • Engaging in Inventor Conversations: Start by discerning the technical elements during initial discussions with inventors. This sets the groundwork for refocusing the application.
  • Identifying Key Technical Aspects: Using an example of a system harnessing transaction data to inform users about sales in nearby stores, Kardos underscores the value of delving into the ‘how’ of the invention. This includes understanding:
    1. The mechanisms behind determining a user’s shopping preferences.
    2. The methodologies for identifying stores with ongoing sales.
    3. The intricacies of location-based messaging.

By interrogating these technical dimensions, the narrative can shift away from targeted advertising to spotlight the innovation’s technical prowess.

Deep Dive into Technicality

To reimagine a business methods patent application with a technical lens, consider the following questions:

  1. Data Processing & Analysis: How is the user data processed? Are there any transformative elements involved? Does the system employ machine learning techniques?
  2. Sales Data Acquisition: Does the system utilize web scraping? Is there an element of natural language processing involved? How are emails analyzed for sales information?
  3. Messaging Mechanism: How is location-based messaging achieved? How does the system discern store locations? What decision-making algorithms are in place for timely and relevant messaging?

Addressing these inquiries aids in capturing the essence of the invention’s technical novelty, presenting it in a light more favorable for patent allowance.

Conclusion

The patent application domain is rife with challenges, especially for business methods. However, with a tactful shift towards highlighting technical components, these hurdles can be effectively navigated. Neil Kardos’s expertise and willingness to share knowledge offer a beacon of hope for those navigating this intricate field.

Thank you for reading, and we invite you to explore more insights and strategies in the patent field on our Practical Patents blog series. 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!

Crafting Single-Party Infringement Claims: A Strategic Approach

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!

Handling Different Types of Invention Disclosure Forms (IDFs): A Practical Guide with Neil Kardos

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:

  1. 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.
  2. 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!

Essential Tips for Conducting Inventor Interviews with Minimal Documentation

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:

  1. What is the background and context for this invention?
  2. What is the problem being addressed?
  3. What are the advantages of this invention over alternatives?
  4. What are the novel elements of the invention?
  5. 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:

  1. 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.
  2. 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!

Efficiently Handling Overwhelming Amounts of Invention Disclosure Materials

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!

Boosting Patent Application Drafting Efficiency and Quality

Greetings, fellow patent enthusiasts! Today, we’re excited to share an invaluable tip from Neil Kardos on how to improve the efficiency and quality of your patent application drafting. We’ll delve into the benefits of this approach and explore how it can streamline the patent application process.

When it comes to patent drafting, timing is everything. One of the most significant time-saving strategies Neil employs is to draft claims and figures promptly after conducting an inventor interview. By capturing the essence of the invention while it’s fresh in his mind, he achieves remarkable results.

Here’s how he does it: After scheduling an inventor interview, Neil blocks off a few hours afterward to work on claims and figures. By setting aside a dedicated block of time immediately after the call, you can capitalize on the freshness of the invention in your mind, ensuring top-notch claims and figures. Ideally, he aims to draft the complete set of claims and figures right after the call. In certain cases where he’s deeply familiar with the technology, and the inventors are savvy, he may even prepare an independent claim before the call and get real-time feedback from the inventors—an incredibly beneficial practice.

In the real world, though, urgent tasks can sometimes intervene. Neil has a savvy solution for this too. At the very least, he outlines an independent claim and explores some dependent claim ideas before attending to other pressing matters. This keeps the momentum going and avoids the common pitfall of relearning the invention from scratch later on.

Neil’s method is a game-changer, providing a structured and streamlined approach to patent application drafting. With this technique, you’ll not only increase efficiency but also enhance the overall quality of your work.

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!

Improving Patent Application Readability and Avoiding Misinterpretation

Greetings, patent enthusiasts! In this latest blog post, Neil Kardos sharessome valuable tips for enhancing the readability of your patent applications and avoiding potential misinterpretations that could arise due to wordy writing.

As patent lawyers, we often find ourselves delving into complex technical details and intricate legal concepts, which can lead to a natural tendency to be wordy in our writing. However, it’s crucial to remember that great writing is often characterized by its conciseness and clarity. Therefore, we urge you to embrace brevity when drafting your patent applications.

One common issue Neil encountered while reviewing a patent application the other day was the excessive use of the phrase “in order to” instead of simply “to.” It might seem like a minor difference, but it can significantly impact the clarity of your patent application. In fact, Neil firmly believes that you can replace the phrase “in order to” with the word “to” in 100% of cases without losing any meaning.

Let’s take a look at an example to understand the significance of this change:

“The system may process multiple events… In order to save time.”

On the surface, this sentence may appear harmless, and most of us would interpret it as the system processing events to save time. However, if we reevaluate the phrasing, another interpretation becomes possible:

“The system may process multiple events in order… To save time.”

Here, the meaning slightly changes, leaving room for ambiguity. Are the events processed to save time? Or are they processed in a specific order that ultimately saves time? Such ambiguities can introduce uncertainties in your patent application and potentially lead to challenges during the examination process.

To uphold the clarity and precision of your patent application, it’s crucial to be succinct in your writing. As they say in the movie Ocean’s 11, “Don’t use seven words when four will do.” By trimming unnecessary phrases and being concise, you can convey your ideas more effectively and minimize the chances of misinterpretation.

In conclusion, it is strongly recommended to adopt a succinct writing style for your patent applications. Not only will this improve the readability for patent examiners and other stakeholders, but it will also reduce the risk of ambiguity and potential challenges during the examination process.

We hope these tips help you improve your patent drafting skills. Thank you for reading! Don’t forget to come back for more tips in the next installment of the Practical Patents Series.

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!

Navigating the Pitfalls of “At Least One” in Patent Claims

Greetings, patent enthusiasts! In this latest blog post, Neil Kardos shares some valuable tips on how to avoid common mistakes in patent applications.

When it comes to drafting patent applications, precision in language is crucial. One common mistake is the misuse of the phrase “at least one of.” In patent applications, it is customary to include this phrase to indicate that certain data or elements can be present in different combinations. However, there is a significant distinction between using the word “and” versus “or” in this context.

Let’s consider an example: “Wherein the data includes at least one of a name, an address, or a phone number.” Notice that the word “or” emphasized. Unfortunately, some patent practitioners use the word “and” instead, which can be a mistake.

To illustrate why using “and” can lead to confusion, let’s use a simple analogy. Imagine someone saying, “I’m going to the grocery store, and I’m going to buy at least one of an apple, a banana, and a carrot.” Does this mean they intend to purchase at least one apple, at least one banana, and at least one carrot?

Most patent practitioners would not intend such an interpretation with this statement, but it’s easy to see how this wording could be misinterpreted. In contrast, if the statement were, “I’m going to the grocery store, and I’m going to buy at least one of an apple, a banana, or a carrot,” it would be clearer.

In this revised version, the speaker could buy only an apple, and the statement would still hold true regardless of how you interpret it. Of course, in real-life conversations, nobody talks like this. So, perhaps a simpler approach would be to drop the “at least one of” altogether and say, “I’m going to the grocery store, and I’m going to buy an apple, a banana, or a carrot.”

However, the desire to be explicit about the acceptability of combinations of an apple, a banana, and/or a carrot is understandable. This is where the phrase “at least one of” comes into play. Some practitioners may also include “or a combination thereof” at the end of the list. There are various ways to convey your point clearly, but our recommendation is to avoid saying “at least one of a, b, and c.”

In conclusion, using the word “and” instead of “or” in patent applications when expressing options can lead to confusion and misinterpretation. To avoid this common mistake, it’s essential to choose your words carefully and consider the implications of your language choices. Precision and clarity are key when it comes to drafting successful patent applications.

We hope these tips help you improve your patent drafting skills. Thank you for reading! Don’t forget to come back for more tips in the next installment of the Practical Patents Series.

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!

Tips for Improving Readability of Patent Claims

Greetings, patent enthusiasts! In this latest blog post, Neil Kardos shares some valuable tips on how to enhance the readability of your patent claims.

As we all know, patent claims can be challenging to comprehend due to the presence of legal and technical terminology. Neil sheds some light on one particular aspect of claim language: antecedent basis and how it affects the readability of your claims.

Antecedent Basis and Awkward Wording: Antecedent basis refers to using the word “the” to refer back to a word or phrase previously introduced in the claims. This practice often leads to peculiar phrasing, making the claims less accessible to readers. To illustrate this point, let’s consider an example. If the phrase “at least one widget” is used, referring back to it would require saying “the at least one widget,” resulting in awkward language.

Simplifying the Language: A simple solution to improve readability by replacing “at least one” with the phrase “one or more.” By using “one or more,” you can refer back to the widgets as “the one or more widgets.” This change brings the language closer to standard usage, eliminating the unusual phrasing of “the at least one widget.” In some cases, an even better alternative is to use the indefinite article “a” or “an.” For instance, instead of “the system includes one or more widgets,” you can state “the system includes a widget” and then refer back to it as “the widget.” In terms of claim interpretation, saying “the system includes a widget” is equivalent to saying “the system includes one or more widgets.”

Avoiding “One of a”: Try avoiding the phrase “one of a,” as it leads to cumbersome wording when referring back to it. For instance, using “one of a plurality of widgets” would result in “the one of the plurality of widgets.” A more concise alternative by rephrasing it as “a widget, of a plurality of widgets.” This way, you can easily refer back to it as “the widget.”

Enhancing Clarity: In general, it is crucial to be vigilant for instances where phrases create awkward wording upon reference. By identifying these situations, you can find alternative ways to make the language more fluid and understandable. The goal is to improve the readability of your patent claims for a wider audience, including examiners, potential licensees, and competitors.

In conclusion: Neil’s tips provide valuable insights into enhancing the readability of patent claims. By simplifying language and avoiding awkward phrasing caused by antecedent basis, you can make your claims more accessible to readers. Clear and concise claims are essential for effective communication and successful patent prosecution.

Thanks for reading! Don’t forget to come back for more tips in the next installment of the Practical Patents Series.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Unraveling the Intricacies of Negative Claiming

In this latest blog post, Neil Kardos brings to light an essential tip about drafting patent claims – the art of sidestepping negative claiming.

Negative claiming occurs when something that doesn’t happen is claimed, a phenomenon that can make patent claim drafting quite convoluted. For instance, consider the situation where your cell phone receives a specific request from a cell tower and usually responds by sending back a message.

However, imagine if the invention introduces a unique twist where the phone, upon detecting a certain condition that the cell tower isn’t aware of, chooses not to respond as per the norm. For instance, the phone may identify that it’s running low on battery or the request is inapplicable for some other reason, leading to the phone’s decision to abstain from responding.

The traditional patent claim language for this scenario might be: “(1) receiving a request, (2) determining that the request isn’t applicable, and (3) not responding to the request?” However, this formulation feels somewhat cumbersome, and patent examiners are known to frown upon such negative limitations.

Neil has developed a handy workaround for these situations – the use of the word “refrain.” This term implies a deliberate decision to abstain from an action or to halt an event, effectively conveying the same meaning without resorting to negative claiming. Thus, in the given example, the claim could be elegantly rephrased as “refraining from transmitting a response to the request.”

Have you discovered other effective strategies to handle such scenarios? If you’ve encountered similar situations and found effective ways to deal with them, we’d love to hear it!

Thanks for reading! Don’t forget to come back for more tips in the next installment of the Practical Patents Series.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

The Global Impact of Pro Bono Intellectual Property Work – Alexander Zajac

Alexander Zajac‘s article, “The Global Impact of Pro Bono Intellectual Property Work,” discusses the significant global effects that pro bono intellectual property (IP) services can have for the American Bar Association’s Landslide Magazine.

Despite the reluctance of lawyers to perform IP services pro bono due to liability concerns and marketing goals, Zajac argues that there are worthy clients with cross-border legal needs that can greatly benefit from such services.

Zajac identifies several impediments to global pro bono services in IP. Lawyers are often risk-averse, fearing malpractice liability from pro bono activities. The decentralized nature of licensure also makes cross-border pro bono work difficult. During the COVID-19 pandemic, these difficulties were exacerbated as more attorneys began working remotely from jurisdictions in which they were not licensed. Additionally, many lawyers look for pro bono opportunities that seem particularly philanthropic, and some believe that IP work does not help disadvantaged people and thus is not philanthropic.

However, Zajac argues that trademarks, patents, and copyrights are not mere tools of profitability. They can be used to fundraise for humanitarian causes or to keep unsafe products off the market, among other philanthropic uses. Even if pro bono IP services are not provided directly to disadvantaged people, social enterprises may benefit from pro bono IP services and use their saved costs and IP rights philanthropically.

The article presents two case studies to demonstrate the global impact of pro bono IP services. The first case study is Shimmy Technologies, a company that uses artificial intelligence to help apparel workers upskill and reskill in light of ongoing automation. The company benefited from pro bono IP work, which helped it protect its inventions, copyrights, and trademarks when it expanded into new countries. The pro bono work also provided peace of mind to the company, allowing it to focus more on developing its products and continuing to roll out upskilling programs.

The second case study is Be Girl, a social enterprise dedicated to providing access to sanitary supplies that are appropriate to cultural practices and socioeconomic conditions. The company’s founder, Diana Sierra, understood the importance of obtaining a patent on her invention and was able to accelerate her fundraising abilities with a pending patent application. As Be Girl grew, it continued to receive pro bono assistance, which helped it expand its patent portfolio and trademark filings. This expanded patent portfolio opened discussions with big players in the sanitary supplies market and allowed Be Girl to insist on the safety and affordability of sanitary supplies before such products are pushed to market.

In conclusion, Zajac emphasizes that providing pro bono IP advice and services can have positive global effects. There are many well-meaning enterprises that would benefit from pro bono IP services, and many of these potential clients have cross-border legal needs. For companies like Shimmy and Be Girl, receiving pro bono IP assistance helped them pursue their goals of upskilling workers and furthering female education around the globe.

Read the full article to learn more about the global benefits of providing pro bono intellectual property work.

 

Improving Clarity in Patent Applications: The Red Flag of “It”

In this latest blog post, Neil Kardos shares why the seemingly innocuous word “it” can lead to ambiguity and misinterpretation in your descriptions, and offer an alternative approach to improve your patent application writing.

The Ambiguity of “It”: Consider this example sentence: “When the client device communicates with the server, ‘it’ may send a message based on a triggering event.” Now, pause for a moment and ask yourself: What exactly is the subject of the sentence? Is it the client device or the server that may send the message? Unfortunately, the word “it” leaves room for uncertainty, and its usage can create confusion, especially when different interpretations are possible.

Plain English vs. Translations: Even in plain English, determining the intended meaning of “it” can be a challenge. However, when patent applications are translated into languages with different grammar rules, the potential for misinterpretation grows significantly. Each language has its own structure and syntax, and relying on a vague pronoun like “it” may lead to inaccurate translations and misunderstandings.

The Importance of Clarity in Patent Prosecution: In patent prosecution, the clarity and precision of your language are crucial. A well-crafted patent application should support the claims and clearly define the scope of the invention. Using the word “it” can inadvertently weaken your case by introducing ambiguity that could be exploited by competitors or create confusion during examination.

Addressing the Issue: To avoid these complications, it is advisable to replace the word “it” with the actual name of the subject you are referring to. In our example sentence, instead of using “it,” you could specify whether it is the client device or the server that may send the message based on the triggering event. By explicitly naming the subject, you provide clarity and eliminate potential misunderstandings.

In conclusion, the word “it” may seem innocuous, but in the context of patent applications, it can introduce ambiguity and create confusion. By replacing “it” with the actual name of the subject, you enhance the clarity of your writing and reduce the chances of misinterpretation, especially in translations and during patent prosecution. Remember, precision and clear communication are essential in protecting your invention and establishing a strong patent. Thank you for reading, and I hope this tip helps you improve your writing in patent applications.

 

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Mastering the Art of List Management in Patent Applications

Neil Kardos covers “Mastering the Art of List Management in Patent Applications”, in this Practical Patents short blog.

Today, we’re diving into the practical patents segment with an essential tip on handling lists in patent applications, particularly in the specification section. In our pursuit to create precise, clear, and efficient patent applications, even the way we handle lists can make a significant difference.

Providing lists of items in patent applications has been a long-standing practice to explain terminology or enumerate examples. For instance, “the sensor data may indicate temperature, pressure, speed, etc.”

Notice the use of the term “etc.”, which is quite prevalent in patent drafting. However, this approach could be improved upon. To illustrate this, let’s understand the intention behind using a list in the specification. There are two key points that we aim to convey:

  1. The items in the list serve as examples.
  2. The items in the list can be applied individually or in a combined manner.

“Et cetera,” or its commonly used cousin, “and so forth,” attempt to encompass both these aspects. However, in reality, they fall short. While they do indicate that the list consists of examples, they don’t explicitly mention that the items can be used individually or in combination.

“Et cetera” translates to “and the rest,” and the usage of “and” in the list might suggest that all items are necessary, which is not our intention. So how do we refine our list handling in patent applications?

To address the first point, it’s crucial to explicitly state that the list consists of examples. You could use phrases like “for example,” “in some implementations,” or “such as.”

For the second point, we want to clarify that the items in the list can be applied individually, in groups, or in entirety. My preferred term for this is “and/or,” as it directly represents the concept we’re trying to express. So our initial example transforms into, “For example, the sensor data may indicate temperature, pressure, and/or speed.”

Now, I’m aware that the usage of “and/or” in patent applications might ruffle some feathers in the patent practitioner community. For those who shudder at its mention, there’s an alternative phrase you could use: “or some combination thereof.”

In conclusion, the way we present lists in patent applications holds more weight than we might initially think. Implementing these strategies can significantly enhance the clarity, precision, and overall efficiency of your patent applications.

Thanks for reading. I hope you find these insights helpful on your patent journey!

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Avoiding Anthropomorphizing in Patent Applications

Neil Kardos covers why “Avoiding Anthropomorphizing in Patent Applications” is important, in this Practical Patents short blog.

Today, we will discuss a term that seems out of place in the sphere of patents, yet often finds its way into the discussion: anthropomorphizing.

At its core, anthropomorphizing involves attributing human traits, emotions, or intentions to non-human entities, including animals, natural phenomena, and yes, even devices. While this can serve as an imaginative exercise in storytelling, it can lead to confusion when applied to technical documents, such as patent applications.

When inventors conceive a novel device, they often inadvertently anthropomorphize it. The device might “know” something, or perhaps it “tells” another device something. This language may work as shorthand for internal discussions and preliminary design documents, but it introduces potential inaccuracies and ambiguities when drafting patent applications.

Consider a simple scenario: An inventor may describe a device that “knows” its location. While this is an easy-to-understand description, it is not technically precise. When translated into patent-speak, the device does not “know” anything – it’s an inanimate object, not a sentient being. Rather, the device may store or process information that identifies its location.

Similarly, if a device “tells” another device about its location, we’re again sliding into anthropomorphizing territory. A more precise technical description might be that the device transmits a location identifier to the other device.

Why does this matter? When drafting a patent application, it’s crucial to maintain technical precision. The words and phrases you use in your specification could later be needed for the claims. You want to ensure you’re using language that will stand up under scrutiny and is as clear and precise as possible.

Moreover, when dealing with patent examiners and courts, using language that attributes human qualities to your device could lead to a misunderstanding of its functionality and scope, possibly impacting your patent’s enforceability.

And here’s a bonus tip: Avoid using jargon or excessively long words, like “anthropomorphizing,” in your patent applications. While they might showcase your expansive vocabulary, they do little to enhance clarity. Use simple, clear language that accurately describes your invention and its unique features.

Remember, the goal of a patent application is to clearly define the unique features and operation of your invention. Avoiding anthropomorphizing language helps to ensure the focus stays on the technical and mechanical aspects of your device, aiding in the creation of a robust, enforceable patent.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

How a Track One Patent Filing Could Increase Your Chances of Getting a Patent

Neil Kardos covers “How a Track One Patent Filing Could Increase Your Chances of Getting a Patent” in this Practical Patents short blog.

Here is a compelling reason for you to consider prioritized examination, known as “Track One,” at the USPTO, beyond simply obtaining a patent more quickly. Were you aware that filing a patent application with a Track One request could potentially enhance your likelihood of securing a patent? Our patent analytics team at Harrity conducted a comparison between Track One and non-Track One filings and discovered that Track One patent applications exhibit approximately a 10% higher allowance rate than non-Track One applications.

In the realm of business methods, the allowance rate for Track One applications is notably 21% higher! Now, the pertinent question arises: Is the Track One request directly responsible for this elevated allowance rate, or are patent applications with inherently higher chances of success, owing to their “more patentable” subject matter, more likely to be filed with Track One requests?

In conclusion, it is presumed that it’s a combination of both factors. Theoretically, Track One applications tend to be assigned to seasoned patent examiners who are more inclined to grant patents. Therefore, if you possess a patent application encompassing a significant technological advancement, it would be wise to consider filing it under Track One to heighten your prospects of securing a patent.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Hindsight Bias in Patent Examination: How Language Models Can Help

Derek Abeyta covers “Hindsight Bias in Patent Examination: How Language Models Can Help” in a featured article for IPWatchdog.com.

The article discusses the issue of hindsight bias in the patent examination process and proposes the use of artificial intelligence (AI) models, specifically large language models, to address this problem. Hindsight bias occurs when a patent examiner unknowingly uses their knowledge of the invention to reject a claim as obvious. This can lead to incorrect determinations of obviousness, prolong prosecution, and result in unfair narrowing of independent claims. AI models can help mitigate this bias by providing an objective and consistent standard for determining obviousness. These models can analyze the examiner’s rationale for an obviousness rejection and identify instances of impermissible hindsight, thereby assisting the examiner in providing a more reliable assessment of patentability.

“Language models have the potential to reduce the likelihood of appeals and legal challenges, streamline prosecution, and lead to more consistent and cost-effective patent examination,” Derek says.

The article also highlights the challenge of determining whether an invention would have been obvious to a person of ordinary skill at the time of filing and how to overcome this challenge, the potential benefits of using language models, and whether they outweigh the initial costs and cons.

Read the full article to learn if language models offer a promising solution to mitigate hindsight bias, improve the patent examination process, and ensure consistency and objectivity in determining patentability on IPWatchdog.com.

The Importance of Using Commas After “Such As” in Patent Applications

Neil Kardos covers “The Importance of Using Commas after ‘Such As’ in Patent Applications” in this Practical Patents short blog.

As patent applications are legal documents, it is crucial to draft them accurately and without any ambiguity. A common grammatical error that can lead to unintentional narrowing of the scope of a patent application is the improper use of the phrase “such as.” In most cases, the intention of using this phrase is to provide examples of the items listed after it, but failing to use a comma before “such as” can result in the items being considered restrictive clauses and limiting the scope of the application.

For instance, consider the sentence “the network device may transmit packet data, such as a source address or a timestamp.” Here, the intended meaning is that a source address and a timestamp are examples of packet data. However, if there is no comma before “such as,” it becomes a restrictive clause, meaning that only a source address or a timestamp will be considered as packet data, not any other data like a destination address or a packet header.

Using a comma before “such as” can convert the phrase into a non-restrictive clause and make it clear that the items listed after it are only examples and not the only items that can be considered packet data. Therefore, it is essential to include a comma before “such as” to avoid any unintentional narrowing of the scope of a patent application.

In conclusion, patent applications require careful drafting and precise language to avoid any misinterpretation or ambiguity. Proper use of punctuation, especially commas, can help prevent unintentional narrowing of the scope of the application and ensure that the application provides adequate coverage of the invention.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Rocky Berndsen Featured in IAM Article: Covid Impact on US Patent Filings

A recent article by Angela Morris for IAM features patent data and insight from Rocky Berndsen, Head of the Harrity Patent Analytics Team. Using the annual Patent 300® report, Rocky provides reasoning for the apparent decline in patents from major players since the start of Covid.

“The slide in patent grants means something, according to Rocky Berndsen, head of patent analytics at Harrity & Harrity, which conducted the data analysis.

First, it could be indicative of changing prosecution patterns. ‘Thinking back, 2020 was the covid year. It was really when it started hitting and we all had the shut-downs. But some of the impact is showing in the 2021 data. We had a drop-off in 2021 as a result of what was happening in 2020. There is a lag that happens in the patent field with filings and prosecution budgets,’ explains Berndsen.”

Read the full article at HERE.

Learn more about our patent analytics capabilities by visiting the Harrity Analytics site HERE.

Harrity Featured in Bloomberg Law: Moving the Needle

Harrity & Harrity has recently been recognized by Bloomberg Law for our diversity initiatives, specifically with respect to increasing the representation of African-American/Black women within patent law.

The article, Black Women Lawyers Still Sparsely Seen at Federal Circuit, refers to Harrity as a law firm focused on moving the needle by creating programs that target the pipeline problem of a lack of women and minorities sitting for the patent bar, including quotes from Diversity Co-Chair, Elaine Spector, on our Patent Pathways program.

“Harrity & Harrity LP—after conducting a diversity and inclusion study that found that there are more patent attorneys and agents named “Michael” than there are racially diverse women in those roles in the US—launched a program to register more Black women as patent practitioners.

The initiative, called Patent Pathways, starts this summer. Harrity & Harrity will help women who complete the program find law firm jobs afterward. The inaugural program’s 20 participants could ‘move the needle quickly,’ said Elaine Spector, a Harrity partner leading Patent Pathways.

‘We want to make sure that innovation is expanded across all of our populations,” Spector said. ‘Women and racially diverse inventors are inventing or showing up on patents at a lower rate, and there is that correlation, to make sure that they can go to attorneys that represent them.'”

Patent Pathways is a Diversity & Inclusion Program dedicated to increasing numbers of registered African-American/Black women patent attorneys and agents through free patent skills training, mentoring, career counseling, and expenses paid to prepare for and take the patent bar exam. This program was created to help address the significant lack of diversity found in IP Law.

To learn more about the Patent Pathways program, click HERE.

Click HERE to read the full article by Samantha Handler.

Elaine Spector Featured in ChIPs for World IP Day

Harrity’s Elaine Spector was recently featured in a blog by ChIPs in celebration of World IP Day.

The organization shared what World IP Day means to their ChIPsters, and what needs to happen to make the theme of this year, IP and Youth: Innovating for a Better Future, a reality.

Elaine’s feature can be found below.

What are the opportunities to continue to increase access for young women inventors, creators, and entrepreneurs in intellectual property? 

“In recent years, we have learned through numerous studies that women are not showing up on patents in proportion to their representation in the workforce. And that’s a loss for all of us.  

 In fact, the Hamilton Project found that bringing more women, Black Americans and other underrepresented groups into the innovation process could increase GDP by more than 4%. We all win when these groups are informed about our amazing patent system and given the amazing tools to become a part of the innovation ecosystem.  

 As such, it is important for us in the innovation ecosystem to reach back to young women to provide them with the information, tools, and resources to innovate, create, and protect their intellectual property. Consider hosting an outreach event to expose these young women to intellectual property, whether it be presenting through organizations like the Girls Scouts or Girls Who Code.  To truly make a difference, we need “all hands on deck!” 

Elaine Spector, Member, ChIPs Washington, DC Chapter, Partner, Harrity & Harrity, LLP  

Click HERE to read the full article.

Harrity Recognized for DEI Initiatives

Harrity & Harrity has recently been recognized by IM-Media, in their article “Closing diversity gaps in patenting: current initiatives and the HP perspective” for it’s many DEI initiatives – in particular, the Patent Pathways program which Harrity is helping to launch the first iteration of this program Summer 2022.

Patent Pathways is a Diversity & Inclusion Program dedicated to increasing numbers of registered African-American/Black women patent attorneys and agents. This program was created to help address the significant lack of diversity found in IP Law.

To learn more about the Patent Pathways program, click HERE.

Click HERE to read the full article.

Track One Filings on Faster Track?

Are Track One Filings on a Faster Track?

By Neil Kardos, Partner

Does filing a Track One prioritized examination request increase the chances of getting a patent? I discussed this idea in a recent Practical Patents video, and below is a chart of the data broken down by USPTO technology center.

Track One applications have a higher allowance rate compared to non-Track One applications across all technology centers, ranging from a 7% boost to a 21% boost.

The boost from Track One is particularly significant (16%-21%) in technology areas with lower allowance rates, like chemical, biotech, and business methods.

Of course, correlation is not causation. Does filing a Track One request boost the chances of getting a patent, or are patent applications that already have a higher chance of success being filed with Track One requests?

My guess: it’s a bit of both.

What do you think?

Learn more about our patent analytics capabilities by visiting the Harrity Analytics site HERE.

Harrity Names Ryan Thelen as Newest Partner

Congratulations to Harrity’s newest Partner, Ryan Thelen!

(WASHINGTON, DC)  Harrity & Harrity, LLP, a leading patent law firm based in Fairfax, VA, is pleased to announce the promotion of Ryan Thelen to the position of Partner with the firm. Harrity & Harrity operates nationwide, with 37 total patent attorneys and agents across 26 states. Ryan is Harrity’s 8th Partner and first promotion of 2022.

Ryan has been with Harrity since 2018. His practice focuses on the preparation and prosecution of patent applications in various fields, such as telecommunications, networking, software, semiconductors, cloud computing, automation, data analytics, and security. He has been instrumental in landing, onboarding, and managing one of the firm’s largest clients and is regularly involved in firm innovation and best practice implementation. Ryan is an active member of the Intellectual Property Owners Association (IPO) and PTAB Bar Association.

“It is an honor to be a part of the leadership of such an amazing firm with such a bright future. I could tell right away when I first joined Harrity that this firm was going to be very different from other firms because how amazing the support staff is and the level of training that was provided. Everyone here really cares about the success of others and the firm as a whole. I am really grateful to be given the opportunity to pay it forward and to help the firm continue to grow,” said Ryan of his new position.

Prior to joining Harrity & Harrity, Ryan practiced in-house at Panduit Corp. and Hewlett Packard Enterprise. While in-house, Ryan gained extensive experience in patent portfolio management, product clearance, invention disclosure mining, infringement analysis, and post-grant proceedings before the Patent Trial & Appeal Board. Prior to his work in-house, Ryan worked at Finnegan, Henderson, Farabow, Garrett, & Dunner as well as Arent Fox while attending law school in the evenings.

Ryan received his Juris Doctor with honors from The George Washington University Law School (2016) and earned a Bachelor of Science degree in Electrical Engineering from Kettering University (2008).  Prior to starting his legal career, Ryan was a project engineer for United Technologies in the UTC Aerospace Systems business unit, where he led teams of engineers in the development of commercial and military aircraft engines.

Ryan works remotely out of Flushing, MI, where he lives with his wife and three young daughters.

 

About Harrity & Harrity, LLP

Harrity & Harrity is a leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas, with a focus on giving back through its Harrity 4 Charity program and many diversity initiatives. Harrity is considered a Go-To Firm for the Patent 300™ and their clients trust in their high-quality work, experienced people, industry leading innovation, and outstanding service.

For more information on Harrity’s analytics, automation, and patent services, firm culture, and current openings, please visit harrityllp.com.

Making Technology Part of Your Strategic Planning, Featuring Neil Kardos

Harrity is focused on providing high-quality work to our clients in a timely & efficient manner, a lot of which comes down to our people.

Legal Management, the magazine of Association of Legal Administrators (ALA), recently featured interviews with Neil KardosJohn Remsen, Jr., and other law experts on the implementation of technology in the legal practice as a way to improve efficiency, deliver better service, and increase profitability – and the associated obstacles with making technology part of your strategic planning.

“Having an adaptable workforce is usually the bigger challenge over finding the right tools,” Kardos says.

Check out all of their advice in the full article by Mark Brewer at http://ow.ly/ZyLT50Gu3N9.

 

Harrity Welcomes Four Outstanding Patent Professionals

Harrity & Harrity, LLP, a leading patent preparation and prosecution firm in the electrical and mechanical space, is excited to announce the addition of four experienced patent professionals. Over the last six months, Harrity has welcomed Jim Nuxoll, Thomas Hartin, Christopher Wen, and Christopher Dawson to the firm. With over five decades of combined experience across a variety of complex technologies, including semiconductors and 5G networks, each hire is a valuable addition to the team. “At Harrity, we handpick every single individual to join our firm. To say that we are excited to have these four superstars on our team is an understatement,” Managing Partner Paul Harrity says of the firm’s recent growth. 

Learn more about the new Harrity team members below.  

 

Jim Nuxoll | Working remotely from Idaho (Joined June 7, 2021) 

Jim Nuxoll is a registered patent agent has over twenty-five years of experience in the semiconductor industry, including having served on Micron Technology’s patent committee. He is a listed inventor on nine U.S. patents and has extensive experience in drafting and preparing patent applications covering various aspects in the field of semiconductors, as well as prosecuting patent applications in the U.S. as well as non-U.S. jurisdictions.   

Learn more about Jim Nuxoll here. 

 

Thomas Hartin | Working remotely from New York (Joined August 9, 2021) 

Thomas Hartin is a registered patent attorney and a member of the firm’s patent prosecution team with a focus on helping large technology companies build valuable, high-quality patent portfolios in an efficient manner. In this role, he develops and implements best practices for managing workflow and innovative, data-driven patent prosecution strategies for reaching favorable results at the USPTO. Thomas has 7 years of experience in the patent field, with experience in patent litigation, as well as preparing and prosecuting hundreds of patent applications related to telecommunications, computer software, consumer cable products and technologies, networking devices, data privacy, and the Internet of Things. 

Learn more about Thomas Hartin here. 

 

Christopher Wen | Working remotely from Michigan (Joined September 27, 2021) 

Chris Wen is a registered patent attorney with nearly a decade of experience whose practice includes assisting clients obtain patent rights in the U.S. and abroad.  His experience covers a variety of technologies, including various types of mechanical and electro-mechanical devices, among others. Prior to joining Harrity & Harrity, Chris was a partner at an intellectual property boutique firm in the metro-Detroit area where he worked on a wide array of patent and other intellectual property matters. 

Learn more about Chris Wen here. 

 

Christopher Dawson | Working remotely from Kansas (Joined October 11, 2021) 

Chris Dawson is a registered patent attorney with over a decade of experience in patent preparation and prosecution, intellectual property litigation, and technology transactions. He has extensive experience drafting patent applications directed to computer software, telecommunications, power generation and alternative energy, aerospace, LED and lighting, consumer electronics, and many other technologies. 

Prior to joining Harrity & Harrity, Chris was a partner in a Midwest-based intellectual property boutique firm, where he represented clients through all phases of intellectual property procurement and enforcement. 

Learn more about Chris Dawson here. 

 

Ask A Mentor: How Do I Negotiate Long-Term Flex Work?

 Ask A Mentor: How Do I Negotiate Long-Term Flex Work? 

By Elaine Spector (September 16, 2021) 

Experts answer questions on career and workplace conundrums in this Law360 Pulse guest column series. Have a question you’re afraid to ask your law firm chair, practice area leader or mentor? Submit it anonymously here. 

In this installment, Harrity & Harrity LLP’s Elaine Spector offers advice on how attorneys can negotiate a flexible work arrangement that preserves their opportunity to advance professionally at a firm and safeguards their partnership prospects.

Q: As a parent who has enjoyed better work-life balance when working from home, how can I negotiate a flexible work arrangement with my law firm, and ensure the arrangement doesn’t hinder my career advancement, as we plan returning to the office? —Associate at midsize firm 

Women have been advocating for change with regard to work-life flexibility for years. Prior to the pandemic, many law firms were reluctant to allow remote work. Often, law firms equate lawyers who want to work remotely with a lack of commitment. As such, if a law firm actually agreed to a remote work arrangement, the lawyer working remotely would often be taken off the partnership track. And then the pandemic hit. Employers, including law firms, were forced to allow their lawyers to work from home. And what did they discover? That lawyers, as professionals, were able to be just as efficient and effective at home. In fact, many firms discovered that billable hours actually increased, as the pandemic eliminated commuting time and other commitments. However, many law firms are still reluctant to embrace the flexibility that would allow working parents, especially women, to thrive both at home and in the office. As offices begin opening back up, here are five tips for negotiating a flexible work arrangement that does not hinder your career advancement.

1. Determine your firm’s revised COVID-19 remote work policy. Before you begin your negotiations, determine your firm’s current remote work policy. Some law firms have taken the initiative to revise these policies prior to opening offices back up. It could be that your law firm has a modified policy that allows for remote work due to health and safety reasons born out of the pandemic, particularly one that does not take you off the partnership track, that you are unaware of. If your firm has not revised its policy or does not formally allow a remote work option, that fact alone doesn’t mean you can’t negotiate one. I was able to negotiate a remote work schedule when my children were very young. It happened during a job transition. A partner that I worked for in the past wanted me to join his new firm. At our first discussion, I asked him if they allowed for a remote work schedule. I was living in Baltimore, and knew that commuting to the District of Columbia five days a week was a deal breaker for me. He said he didn’t know, but that he would find out. The next day he got back to me and indicated that they could accommodate a remote work schedule for my situation. However, if I had not asked, I would not have been offered the option to work from home. So, don’t be afraid to ask about a remote work schedule when it is not clearly offered. You won’t know what options you can negotiate if you do not try.

2. Do exceptional work — become indispensable. It might go without saying that doing exceptional work provides you with a negotiation advantage. Your negotiating power increases dramatically when you do exceptional work and become indispensable to your firm. Not only should your legal work be exceptional, but it is also important to spend time thinking about how you can be a contributor at your firm. Look for high-value, low-commitment opportunities to get involved. This might mean taking on a mentoring role, joining firm committees, planning firm activities, representing your firm in the legal community, participating in external events and more. Designating just 30 minutes per week, whenever possible, to contribute to your firm’s initiatives allows you to maintain work-life balance while making yourself more valuable. Firms are more willing to negotiate with lawyers that they want to keep.

3. Be clear with your intentions. It is imperative to make clear your intentions to stay on the partnership track despite wanting flexibility to work from home after offices reopen. Although I was able to negotiate a remote work schedule, I was not clear with my intention to stay on the partnership track at my previous firm. This led to challenges in my ability to climb the ladder, like many women on flexible schedules face. When I interviewed for my current firm, I explicitly asked how working a remote and reduced-hour schedule would affect my ability to become partner. This outlined my intentions for the interviewer and compelled them to provide a clear answer about whether I would be treated differently based on my flexible status, rather than on my skills. Fortunately, I was told that it would not affect my partnership track whatsoever — a response that held up when I made partner just two years later. Do make it clear in your negotiation that working remotely does not equal a lack of commitment or a desire to abandon the partnership track, or whichever other career goals you are working toward.

4. Stay connected virtually. Relationship-building is the core of culture, inclusion and, ultimately, success at your firm. It is critical to continue to build relationships in the remote work environment. If you plan to work remotely either a few days a week or full time, I recommend having weekly virtual video meetings with the members at your firm you would typically interact with in an office setting. This type of face-to-face interaction is so much more engaging than a telephone call, as we have all experienced during the pandemic, and can allow for better communication through gesture and expression. When holding the video call, put an emphasis on personal connection. You can talk about your life to whatever extent you feel comfortable sharing, whether it be your weekend, your family or a new TV show, just as you would in the office. This watercooler talk, untied to any pressing work matters, will transform your internal relationships.

5. Find a firm that supports your family values and career goals. I began working remotely a few years before the pandemic hit. My firm allows for any lawyer at the firm, regardless of the numbers of hours they work or whether they show the requisite face time in the office, to make partner. And I did — remotely. Many of my female colleagues at other firms have reached out to me to ask: How can we keep the remote work going? How do we continue to develop relationships and culture within our firm? And how can someone make partner while working remotely? It is wonderful to be at a firm that unequivocally supports remote, flexible work. If your firm does not support a remote work schedule and is unwilling to compromise after you have a candid conversation, it may be time to consider switching employers. Regardless of your stature at your current firm, if they do not respect your need for flexibility, it will be hard to be fulfilled. 

Be open about finding a law firm that supports you where you are and what you need to be happy. After all, happy workers are more productive workers. As a mom who just dropped off her first child at college, I know that the time you have with your children is limited. Don’t ever sacrifice that time for a rigid policy of your employer. So many law firms are embracing this new way of working. Why be stuck at firm that is living in the dark ages?

Conclusion It is far past time to shift perspectives from the old, rigid mindset of the traditional firm, to one that embraces a more diverse and flexible workforce — one where we, as parents, don’t have to give up the important job of raising our children, while also providing top-quality service to our clients. Lawyers should not be excluded from partnership because they work remotely or are on flexible schedules. An attorney can contribute just as much to the success and advancement of the firm, its culture and its future without physically being in the office. In fact, the benefits of working a flexible schedule may contribute to more growth and innovation in the firm. Flexibility is essential for advancing talented women and other lawyers seeking balance in their life and careers. Good luck with your negotiations! 

Read more at Law360.com.

 

 

Law360 Analysis: Retiring Federal Circuit Judge Kathleen O’Malley ft. Eli Mazour

In Praising O’Malley, Attys Call For District Judge To Fill Seat

By Ryan Davis

Harrity Partner Eli Mazour is featured in Law360’s recent analysis regarding retiring Federal Circuit Judge Kathleen O’Malley as an IP expert..

Law360 (July 28, 2021, 9:43 PM EDT) — Retiring Federal Circuit Judge Kathleen O’Malley is the only member of the court who has served as a district judge, a background that attorneys say provided a necessary perspective that informed her incisive decisions and that they hope to see in her eventual replacement…

“Judge O’Malley’s departure will likely be cause for concern among patent owners, said Eli Mazour of Harrity & Harrity LLP, because she was viewed as more pro-patent than other Federal Circuit judges, particularly on the issue of patent eligibility.”

Read more on what Eli and the other experts have to say at Law360.com.

 

 

IPWatchdog on Who Should Head the USPTO, ft. Eli Mazour

The Right Choice: IP Stakeholders Emphasize Practical Experience, Strong IP Advocacy in Next USPTO Head

By Gene Quinn

Harrity Partner Eli Mazour is featured in IPWatchdog’s recent article as an IP expert regarding what the profile of the next USPTO Director should look like.

January 26, 2021 (IPWatchdog) At 12:00pm EST on January 20, 2021, Joe Biden was sworn in as America’s 46th President. Over the next several months he and his staff will be working to fill thousands of positions within the federal government that have become vacant due to resignations. This is normal and expected. At the end of each presidential term all presidential appointees offer their resignation, which can then either be accepted or not at the discretion of the President.

The position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), as well as Deputy, is now vacant. Commissioner for Patents Drew Hirshfeld has been vested with the authority to act with the powers of the Under Secretary of Commerce for IP and Director of the USPTO, although he has not been given the title Acting Director. This is almost certainly due to the fact that no one in the federal government can hold a title of Acting head of an agency for more than 270 days.

In our space, the position of Under Secretary and Director of the USPTO is a front-line, top-level position. In the greater political scheme, it is likely we will not have an appointee for many months. President Obama did not nominate David Kappos until June 18 and President Trump did not nominate Andrei Iancu until August 26.

There are many capable people—all realistic, based on party affiliation—who should be considered by the Biden Administration for nomination as Under Secretary of Commerce for IP, but in my opinion several names stand out above everyone else based on their background, ties with the tech sector, and what appears to be a preference on the part of President Biden (at least so far) to appoint those with close ties to the Obama Administration and longstanding ties to the Democratic party..

See these suggestions, and what Eli and the other experts have to say on IPwatchdog.com.

 

 

IPWatchdog: Wish Upon a Star ft. Eli Mazour

Wish Upon a Star: Experts Share Their Wildest IP Dreams for 2021

Harrity Partner Eli Mazour is featured in IPWatchdog’s recent article as an IP expert.

January 4, 2021 (IPWatchdog) We have already published industry roundups on the biggest moments in IP for 2020 and predictions and thoughts for 2021. But the longest running industry insider feature on IPWatchdog is our annual “wishes” article. Each year, we invite stakeholders to share their wildest IP dreams and wishes for the coming year.

Unlike our Predictions and What Mattered roundups, this series allows our experts to get creative. The responses may have nothing to do with what is likely to happen, but rather gives commenters a chance to explain how 2021 would unfold in their dream scenario. This year, responses remained fairly grounded in reality, with the possible exceptions of hope for clarity on Section 101 law and other issues from the Supreme Court and that Andrei Iancu will remain USPTO Director under future President Biden…

See what Eli and the other experts have to say on IPwatchdog.com.

 

 

Patents for Humanity

By Edward Kim, Harrity Associate

Some time ago, in discussing humanitarian efforts and engineering, a friend of mine told me about a concept project he worked on to create a new iteration of the Leveraged Freedom Chair (LFC), an all-terrain wheelchair manufactured by Global Research Innovation and Technology (GRIT).  The original LFC was created by engineering graduates of the Massachusetts Institute of Technology (MIT) to allow people with disabilities in developing countries to gain mobility and independence.  Conventional wheelchairs didn’t function well on the rugged terrain and rough local roads, and most were difficult and expensive to maintain.  The three-wheeled LFC uses a push-lever drivetrain to help people navigate over rugged terrain with ease and is built from commonly found bicycle parts to allow easy maintenance and repair.  Naturally, being an intellectual property professional, I started looking into patents related to the LFC.

That’s when I first discovered Patents for Humanity, an awards competition hosted by the United States Patent and Trademark Office (USPTO).  The creators of the LFC secured US Patent No. 8,844,959 in 2014 and was awarded a Patents for Humanity award in the subsequent year.  Nearly a decade has passed since the program itself started, but little is known about it.  Given the current situation with the global pandemic, and the season of giving around us, I thought it might be timely to share some information about the awards competition with our network of IP professionals.

Patents for Humanity was launched in February 2012 as part of an initiative to promote “game-changing innovations to address long-standing development challenges” and showcase how patent holders are pioneering innovative ways to provide affordable, scalable, and sustainable solutions for the less fortunate.  Awards have been given for innovations that range from Golden Rice that’s genetically enhanced to provide a source of vitamin A for people relying mainly on rice to the LFC to compact human wastewater converters called NEWgenerator.

Two types of awards are given – Patents for Humanity awards and Honorable Mentions awards.  Patents for Humanity award recipients are given an acceleration certificate, and of course, public recognition of their work at an awards ceremony sponsored by the USPTO.  The certificate can be used to accelerate a patent application examination, ex parte reexamination, and ex parte appeal to the Patent Trial and Appeal Board.*  Honorable Mentions award recipients receive accelerated examination of one patent application but not other types of matters.

The program is open to patent owners, applicants, licensees (including inventors who haven’t assigned their ownership rights to others), assignees, and exclusive and non-exclusive licensees.  Applicants must describe how they’ve used their patented technology or products to address a humanitarian issue, which, for the competition purposes, is defined as “one significantly affecting the public health or quality of life of an impoverished population.”

Applicants using a patent application as a basis for entry to the competition must show that a Notice of Allowance for one or more claims from that patent application has been issued before any certificate is awarded.  Applicants mainly compete in the following five categories:

  • Medicine: any medical-related technology such as medicines, vaccines, diagnostics, or medical devices.
  • Nutrition: technologies which improve nutrition such as higher yield crops, more nutritious food sources, food preservation, storage, or preparation.
  • Sanitation: improving lives by addressing environmental factors such as clean water, waste treatment, air pollution, and toxic substances.
  • Household energy: technologies providing power to energy-poor homes and communities for household needs like lighting, cooking, and heating.
  • Living standards: technologies that raise living standards to empower people to escape poverty, such as literacy, education, communications, information delivery, access to markets, and microfinance.

Applicants may also team together to submit joint applications explaining actions taken by multiple parties.  However, only one certificate will be issued to the joint applicants, and the certificate can be redeemed for only one matter.

The applications are then judged under one of two criteria: (1) Humanitarian Use (applying eligible technologies to positively impact a humanitarian issue, focusing on demonstrable real-world improvements) and (2) Humanitarian Research (making available patented technologies to other researchers for conducting research with a humanitarian purpose, particularly areas lacking commercial application).

The applications are reviewed and scored by qualified judges outside of the USPTO, and the USPTO forwards the top-scoring applications to participating federal agencies for award recipient recommendations.

As we prepare to bid farewell to a year that will live in infamy, I think it’s fitting to recognize this year’s award recipients: Global Vision 2020; Sisu Global; Sanaria Inc; Flexcrevator; NEWgenerator; Nonspec; Rubitection; and Lawrence Berkeley National Laboratory.  Congratulations!  Perhaps, now more than ever, we need and should honor more innovation that makes progress in human lives.  Keep an eye out for the next awards competition application period.

More information about the Patents for Humanity awards competition can be found at:

https://www.uspto.gov/ip-policy/patent-policy/patents-humanity

For those interested in the details of the Terms and Conditions:

https://www.uspto.gov/sites/default/files/documents/USPTO-P4H-2020Terms.pdf

 

*Inter partes matters and other post-grant proceedings may not be accelerated with the certificate at this time.

 

Law360: Harrity & Harrity Launches Academy To Diversify Patent Law

Law360 (December 23, 2020, 4:20 PM EST) — To address some of the issues underlying a lack of diversity in patent law, Harrity & Harrity LLP has announced a new set of free classes the firm hopes will inspire more patent lawyers from underrepresented populations.

The Harrity Academy, which the midsize firm launched this fall, consists of three Zoom classes that will convene throughout 2021. Ranging from four to eight weeks in length, the three classes address different aspects of patent law and range in scope depending on the participants’ experience. Each course will be led by a Harrity & Harrity attorney and has 20 spots available, the press release says. The program also includes mentorship and breakout sessions for more individualized attention…

Read the full article on Law 360 here.

 

 

John Harrity Interviewed for Law360: How 7 IP Firms Weathered The COVID-19 Pandemic

Law360 (December 21, 2020, 4:47 PM EST) — Intellectual property firms ranging from just a handful of lawyers to several hundred attorneys said the COVID-19 pandemic was a logistical curveball, but their industry has largely been insulated from the worst of the pandemic’s financial woes.

Law360 spoke with seven IP firms that span in size and location to get a snapshot of how the novel coronavirus pandemic impacted the industry, including Harrity’s John Harrity.

“Harrity & Harrity’s staff was already three-quarters remote before the pandemic hit, said John Harrity.

‘We were ready for it,’ he said. ‘We were already paperless — we had done that several years ago. It was probably as seamless a transition for us as possible.’

He said the firm has been continuously growing, and with a dozen new attorneys added in 2020, it marked its biggest year for hiring.

While Harrity said the firm had always allowed for flexibility with attorneys, such as letting them choose their own hours, it extended that same freedom to support staff during the pandemic.

‘[We’re letting them start] as late as 3 p.m. so that they could do their homeschooling if they have young kids and then start their day after that’s over,’ he said. ‘We’re put in this really awkward position with this, especially with virtual learning. If you have small kids, what are you supposed to do? We didn’t want our parents to have to choose between teaching their kids or working. We gave them an opportunity to be able to keep doing both.’

The patent preparation and prosecution specialists say they’ve seen particular growth in the telecom sector, which has blown up in the remote work environment.

Internally, the firm has used that remote technology to try and keep its employees connected to each other, including with virtual happy hours and live meditation sessions.

‘It’s necessary during a situation [like] we’re in — the inherent stress that’s involved with the pandemic and the uncertainty that’s around it,’ Harrity said.”

Read the full article here.

 

 

Joe Lentivech – An Ex-PTAB Judge on Ex-Parte Appeals: Clause 8, Episode 23

How does the USPTO’s Patent Trial and Appeal Board (PTAB) actually operate? What does it take to win an ex parte appeal? When should you request an oral hearing? What are the chances of the PTAB reversing a Section 101 rejection? How do you become an Administrative Patent Judge?

In this latest episode of Clause 8, I speak with former Administrative Patent Judge Joe Lentivech to get answers to these questions. He’s not only an expert in how the PTAB operates, but also a master storyteller.

Listen and subscribe on IPwatchdog.com or your favorite podcasting app!

 

Maximize Your Patent Portfolio Using Helferich-Style Claims

By Michael Woodward, Harrity Associate

Patent owners often obtain patents to protect products, as well as complementary products or use cases associated with those products. However, when selling or licensing the patented products, a patent owner may inadvertently extinguish potential revenue streams associated with the complementary use cases due to the doctrine of patent exhaustion.

Patent exhaustion follows the basic idea that if a company sells or licenses a patented product to a buyer, the company cannot sue the buyer (or a third party that the buyer provides the patented product to under the license) for patent infringement for using the product. Patent owners should take care when preparing and licensing patents to ensure that infringement claims for complementary products or use cases associated with patented products are not exhausted by the sale or licensing of the patented products, as shown by the Federal Circuit case of Helferich Patent Licensing v. New York Times, 778 F.3D 1293 (Fed. Cir. 2015)…

Keep reading on IPwatchdog.com.

 

 

Automation in the Patent Field: From Fantasy to Reality

By Robert O’Loughlin, Harrity Associate

Before joining Harrity & Harrity, LLP at the beginning of 2020, I would have summarily dismissed the fairy tale that I could be drafting even half as many patent applications as I am regularly drafting today.  But, alas, here I am, bringing the tale to life.

Harrity, as a firm, has mastered a number of factors that play a large role in taking patent application drafting efficiency from fantasy to reality.  Such factors include, for example, employing a uniform writing style across the firm; utilizing a well-organized and uniform second attorney review structure that serves as the gatekeeper for the high level of quality that Harrity’s clients have come to expect from every piece of work product; having attorneys exclusively draft or prosecute applications to focus on and maximize each attorney’s strengths; and incentivizing efficiency with a pay-per-production compensation model.

One particular factor that deserves attention, however, is Harrity’s development and utilization of proprietary automation software.  It certainly has been no secret, as the decades have worn on, that automating tasks can greatly improve efficiency and, as a result, significantly increase output.  And it is no different in the world of patent application drafting.  Automation also improves the quality of the output, and it frees up an attorney to focus on the more substantive aspects of the application.  The automation software, known as Patent Draftr, at my disposal has been game-changing and has played no small role in making my decision to join Harrity life-changing.

Gone are the days of creating and maintaining folder after folder of template applications, file after file of template drawings, and page after page of boilerplate language.  The automation software (“the tools” as we so affectionately refer to them) takes care of these things.  With two or three mouse clicks to select options from a pull-down menu plugged right into my word processing user interface, I can generate a new patent application document, pre-filled with boilerplate language, templates for frequently used descriptions, client-approved formatting, and flags clearly identifying locations that require my attention.  Indeed, in many cases, even many of the personal preferences of a particular client or in-house attorney may already be incorporated into the document from those first two or three mouse clicks.

A few more clicks of the mouse gets me access to a library of client-specific, frequently-used drawings and drawing descriptions.  In the past, building the skeleton of a patent application meant searching for a previously drafted application that described similar subject matter, skimming the application for relevant language and/or drawings, copying the relevant material, pasting it into the new application, changing reference numbers to match the new figures, and removing material specific to the application from which I copied the material.  That process was only slightly more efficient than writing the entire application from scratch.  Now, a few clicks and I’m off and running.

A click here and a click there is all that is required to cause mirrored claim sets directed to statutory subject matter classes of my choice to appear in the document.  Just as easily, I can cause preliminary descriptions of flow charts to populate the document.  Summary paragraphs and an abstract also are mere mouse clicks away.  Before I even place my fingers on the keyboard, Patent Draftr may have prepared more than half the document for me.

I was skeptical at first, but have come to be a believer in “the tools.”  They fit seamlessly within the Harrity workflow to make my life infinitely easier than the days of old.  But I am not the only one that benefits from the “the tools” and the system in which they are employed.  Perhaps the greatest beneficiaries are the clients.  By automating portions of the patent application preparation process that tend to be otherwise menial tasks, “the tools” allow me to focus my time on the most important aspects of the application preparation – the aspects for which my skills and experience are most useful – understanding the invention, drafting the claims, and carefully describing the details of the invention.  The results: (1) a high quality, valuable, and thorough patent application; and (2) a stress-free patent attorney that can spend the evening resting and looking forward to doing it all over again the next day.

 

 

Core Wireless: Parsing the Data on Enforcement Trends Three Years On

By Alexander Zajac, Harrity Associate

To many patent practitioners, the Federal Circuit’s decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. was a watershed moment. In particular, this decision provided that claims directed to “display interfaces” that “improved” on existing interfaces were patent eligible under 35 U.S.C. § 101. In other words, Core Wireless decreased the chances of a court finding a graphical user interface (GUI) patent to be directed to ineligible subject matter and therefore invalid.

We don’t have to look far to see the impact that the nearly-three-year-old Core Wireless decision has had. Almost 100 district court decisions have cited the case since it came down in January of 2019, and nearly 30 inter partes review (IPR) proceedings filed after January of 2019 include citations of Core Wireless by practitioners, the Board, or both…

Keep reading on IPwatchdog.com.

 

 

Brad Watts – Section 101 Reform Efforts in the 116th Congress: Clause 8, Episode 22

Brad Watts is the Majority Chief Counsel and Staff Director for the Senate Subcommittee on Intellectual Property. Under the leadership of Senator Thom Tillis, Brad Watts has led the effort to fix the Section 101 patent eligibility mess.

A series of Supreme Court decisions over the last decade have caused enormous confusion and uncertainty with regard to patent eligibility. After the 2018 midterm elections, to the relief of many in the innovation community, Senators Thom Tillis and Chris Coons requested to reinstate the Senate Subcommittee on IP to fix this issue. The process for reforming 101 included a framework released in April 2019, a bipartisan, bicameral draft bill released in May 2019, and an unprecedented three days of hearings with 45 witnesses representing almost every imaginable view on the subject.

At the end of those hearings, Sen. Tillis said “I want to do this quickly . . . I think we can review the record and make changes, garner consensus, and introduce a final bill sometime after the July 4 recess.”  That never happened.

In an IP Watchdog interview earlier this year, Sen Tillis explained that the Section 101 reform “process stalled because stakeholders refused to compromise.”

What happened? Is the effort to reform Section 101 really over? Why did the effort fail in this Congress? What should the innovation community do help revive the effort? Is there a possibility of a narrow medical diagnostics fix that is likely to lead many others pushing for reform disappointed?

In this episode, I speak with Brad about what really happened during this last attempt at reform, why it wasn’t successful, where to go from here, and much more.

Some of the topics discussed:

  • How Capitol Hill staffers learn about IP issues
  • Influence of Professor David Taylor’s research about the current patent eligibility jurisprudence and its negative impact on investment
  • What prompted Sen. Tillis to focus on patent eligibility reform and restart the Senate Subcommittee on IP
  • Process laid out by Sen. Tillis for patent eligibility reform legislation
  • Why everyone who wanted to engage in good faith was invited to be part of the process
  • Whether goal was to pass bill this Congress or to start a multi-Congress effort
  • Bad faith efforts to stop patent eligibility reform and why even some opponents of patent eligibility reform might have legitimate points
  • How the bipartisan, bicameral draft bill released in May 2019 was drafted – involvement of staffers Jamie Simpson, Phil (Phillip) Warrick, and Tom (Thomas) Stoll and the principals
  • Possibility of narrow diagnostics-only fix for Section 101 and why Sen. Tillis is open to it
  • Why Sen. Tillis never introduced a bill after the 3 day of hearings
  • How stakeholders can reach consensus with regards to patent eligibility to make reform possible
  • Continued work on patent eligibility reform
  • How stakeholders can and should communicate their position and concerns to Sen. Tillis and their own Senators about IP issues in general

Listen and subscribe on IPwatchdog.com or your favorite podcasting app!

 

Diversity in Patent Law: A Data Analysis of Diversity in the Patent Practice by Technology Background and Region

Harrity’s Elaine Spector and LaTia Brand provide a deep-dive analysis of the lack of diversity in the patent practice for the American Bar Association’s Landslide® Magazine. Read the full article here:

 

Diversity in Patent Law

Professor Adam Mossoff – Academics in IP: Clause 8, Episode 21

When Eli first started practicing in the late aughts, he found that a lot of what he was seeing about patents in various academic papers and studies, on Capitol Hill, and even in Supreme Court decisions, didn’t really reflect the reality of what he was seeing in practice, talking to innovators. In contrast, Professor Adam Mossoff’s compelling work, including articles in various general interest newspapers, stood out.  Not surprisingly, he is largely responsible for providing the intellectual foundation that has helped shift the anti-patent narrative.  So, it was a huge honor to talk to someone who not only helped shape Eli’s own thinking about patent and IP policy issues but has really shaped the current debates in Washington, DC about these issues.

Professor Mossoff is currently Professor of Law at George Mason University’s Antonin Scalia Law School, a Senior Fellow at the Hudson Institute, and a Visiting Intellectual Property Fellow at the Heritage Foundation.

On this episode, Professor Mossoff and Eli discuss academics’ impact on IP policy and many other subjects, including:

  • how Richard Epstein influenced Professor Mossoff’s scholarship,
  • how the ideals of classical liberalism relate to intellectual property rights,
  • the debate among conservatives and libertarians regarding IP issues,
  • what’s wrong about framing IP rights as being all about providing incentives,
  • the Supreme Court’s approach to patent cases,
  • why Congress and the executive branch – not the Supreme Court – are the better path for improving America’s patent system,
  • “Why Do Law Professors Do What They Do?”
  • how law school professors influence the patent policy debate,
  • how trade organizations try to shape the patent policy debate by using law professors and other prominent attorneys,
  • importance of law school professors making it clear when they’re acting as advocates v. as academics,
  • navigating junk science studies/statistical claims about the patent system,
  • importance of engaging in a positive research agenda about the patent system instead of just reacting to bad scholarship,
  • empirical research overwhelmingly contradicting the patent holdup theory over the last 10 years,
  • educating Congressman Darrell Issa and the importance of having evidence and data on your side,
  • contradiction of China strengthening its own patent system while continuing to steal IP from other countries and having no rule of law otherwise,
  • the unprecedented response by the pharmaceutical industry to the COVID?19 pandemic thanks to the foundation previously created by America’s patent system,
  • how current changes to the patent system can undermine a similar response to the future,
  • and much more!

Listen and subscribe on IPwatchdog.com or your favorite podcasting app!

 

Bruce MacEwen – Adam Smith, Esq.: Clause 8, Episode 20

On the latest episode of the Clause 8 podcast, Eli interviews Bruce MacEwen – the founder and president of Adam Smith, Esq. Bruce is recognized as the world’s leading expert on the economics of law firms, has written thousands of articles on the subject, and provides advice to select firms about how to succeed in the changing legal landscape.

The Great Recession spurred lots of talk about innovation, technology, alternative fee arrangements, new compensation structures, and countless of other ways that law firms need to change. However, the economic boom that followed has allowed “Big Law” firms to continue to thrive without making any substantial changes. The COVID-19 pandemic has caused painful flashbacks for many law firm leaders who previously led their firms through the Great Recession. At the same time, the continued uncertainty and uneven impact on the economy, has made it much more difficult for law firms to decide what steps need to be taken. For example, in the IP field, there was an initial slowdown of litigation work while patent prosecution work remained relatively stable.

Eli reached out to Bruce to get his thoughts about how law firms have been responding to the COVID-19 pandemic, what law firm leaders should be thinking about while navigating this moment in time, and the business of law in general.

On this episode, Eli and Bruce discuss:

  • Why Bruce thought there was something off about law firms by Thanksgiving of his first year as an associate
  • How companies select & manage outside counsel
  • Tension of building in-house law departments v. relying on outside counsel
  • Why law firms refuse to do recession scenario planning
  • Surprising nimbleness of law firms
  • Law firms being much more thoughtful and humane in dealing with the Covid-19 pandemic than they were during the “Great Financial Reset of 2008”
  • Why successful law firm partners can be dynamite for law firms
  • Rethinking real estate needs of law firms
  • Different law firm models – “Best-in-breed” law firms v. full-service law firms
  • Boutiques and benefits of a lawyer’s practice being at the core of what a firm does
  • Using Net Promoter Score (NPS) to evaluate law firms
  • Law firms deciding whether to invest in a practice area
  • Vision and hunger being the key to starting a successful boutique law
  • Difference between lawyers who succeed v. fail
  • much more!

Listen and subscribe on IPwatchdog.com or your favorite podcasting app!

 

Data-Driven Decision Making for Patent Portfolio Managers

By Bret Tingey, Associate | IPWatchdog.com

A patent portfolio can be one of the greatest assets that a company owns. A patent portfolio may boost a company’s valuation for a stock offering or a sale, may be licensed for recurring revenue, may be sold to raise cash, or may be enforced to seek monetary damages or to exclude competitors from the market. However, growing a patent portfolio can be expensive. For this reason, many companies hire a portfolio manager to balance the value and expense of growing and maintaining the patent portfolio.

A portfolio manager may be responsible for making decisions including a total target number of patent filings, target numbers of patent filings for different technology areas of the company, patent firms to use for filing and prosecuting patent applications, or how to manage costs per issued patent. The portfolio manager can improve the decision-making process by using data-driven decision making. This article shows some examples of data-driven decision making.

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Product Success Can Show Nonobviousness

By Patrick Hansen, Associate

The U.S. Supreme Court’s KSR decision has left an impression that any claimed invention based on a combination of known, related features is likely obvious under 35 U.S.C. § 103.  The recent Fox Factory, Inc. v. SRAM, LLC (Fed. Cir. May 18, 2020) decision is a heartening reminder that is not always the case.  In Fox Factory, the Federal Circuit affirmed a Board holding that claims 1-26 of U.S. Patent 9,291,250 (‘250 patent) are not unpatentable as obvious under Section 103.  What makes this decision reassuring for patent owners and applicants is that the Federal Circuit upheld SRAM’s ‘250 patent based on objective indicia of nonobviousness (also known as secondary considerations).

Fox Factory and SRAM are bicycle competitors, and SRAM’s ‘250 patent is directed to a single chainring of a bicycle that does not switch a chain between multiple chainrings.  The single chainring has teeth that fit more snugly into chain link spaces, and the single chainring (marketed as “X-Sync”) has been praised for retaining the chain in poor cycling conditions.

As shown in Fig. 1 from the ‘250 patent, link spaces alternate in size (D1 or D2) due to the manner in which pieces of a chain are linked.Claim 1 of the ‘250 patent recites a chainring with wider teeth of a first size that alternates with teeth of a second size, in order to snugly fit into respective outer (D2) and inner (D1) link spaces.  In particular, claim 1 recites that a wider tooth is designed to fill, at the midpoint, at least 80% of an outer link space.

SRAM asserted the ‘250 patent against Fox Factory in the U.S. District Court for the Northern District of Illinois.  In a corresponding inter partes review (IPR) proceeding, Fox Factory cited Japanese patent publication JP S56-42489 (“Shimano”) and U.S. Patent 3,375,022 (“Hattan”).  Shimano describes a chainring with widened teeth for wider link spaces, and Hattan describes filling link spaces between 74.6% and 96% of a space width at the bottom of a tooth.  Fox Factory argued that it would have been obvious to a skilled artisan to see the utility in designing a chainring with widened teeth to improve chain retention and to look to Hattan for filling the link space at least 80%.  However, the Board found that Hattan’s fill percentages applied to the bottom of a tooth rather than the midpoint of the tooth.  Notably, the Board found that SRAM’s evidence of secondary considerations rebutted Fox Factory’s argument that a skilled artisan would nevertheless find it obvious to modify Shimano’s chainring teeth to fill at least 80% of a wide link space at the middle of a tooth.  Judge Lourie, writing for the Federal Circuit panel that included Judges Mayer and Wallach, affirmed the Board’s decision.

As you may recall, the Graham v. John Deere Co., 383 U.S. 1 (1966) analysis includes four factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the patent claims; (3) the level of ordinary skill in the art; and (4) secondary considerations (also known more favorably as objective indicia of nonobviousness).  All four factors are to be evaluated collectively before a conclusion on obviousness is reached, and the burden of proof remains with the patent challenger.  Fox Factory argued that the only difference at issue is the degree to which a wider link space is filled, measured halfway up the tooth.  Fox Factory also argued that the Board erred in presuming a nexus between the claimed invention and evidence of success, arguing that it is the tall hooked teeth that drove the X-Sync chainring to be successful.

While acknowledging that a mere change in proportion may not meet the level of invention required by Section 103, the Federal Circuit agreed with the Board that SRAM’s design of the X-Sync chainring teeth, as claimed, displayed significant invention.  The X-Sync chainring’s success surprised skilled artisans who were skeptical about it solving the long-felt need of chain retention.  In fact, the industry awarded the X-Sync chainring “Innovation of the Year.”

The Federal Circuit found that the X-Sync chainring and the ‘250 claims met the nexus requirement – that a product from which the secondary considerations arose is “co-extensive” with the claimed invention.  The Federal Circuit also stated that the unclaimed features, such as the hooks and protrusions of the teeth, are to some extent incorporated into the >80% fill requirement.  The Federal Circuit concluded that substantial evidence supports the Board’s determination that a nexus exists between the X-Sync chainring’s success and the teeth profile that is essentially the claimed invention.

While Fox Factory does not present any new rule, it is a reminder that patent owners and applicants should keep records indicating a long-felt need and any industry skepticism, as well as records of subsequent success of a product to which claims are directed.  Claim drafters should learn from inventors which features could contribute to a product’s commercial success or acclamation.  Fox Factory reassures us that objective indicia of nonobviousness can still be a meaningful consideration at the Board and the Federal Circuit, even over what may be argued to be routine optimization.

 

Sarah Tsou – Patent Litigation Funding: Clause 8, Episode 19

This episode features an interview with Sarah Tsou, who is an investment manager for patent litigation at the world’s leading litigation funder, Bentham IMF (now part of Omni Bridgeway Limited).

The playbook is simple for deep-pocketed defendants facing lawsuits from patent owners with limited resources. Even if a patent owner has a very strong case, the defendant can just drag the case out long enough until the patent owner and his lawyers run out of resources to continue. At best, the patent owners are forced to settle lawsuits for a fraction of what they think they are owed. Patent litigation funders have changed this calculus by providing select patent owners with enough resources.

During this episode, Sarah talks about:

  • becoming a patent litigation partner at Kirkland & Ellis and working with John Desmarais before he started his firm focusing on patent monetization;
  • how patent litigation funding can help in-house attorneys who are facing shrinking patent litigation budgets due to the Covid-19 pandemic;
  • what 1% of cases have the rare mix of merits and economics to receive funding from top litigation funders, including a discussion of specific amounts of potential damages and legal fees;
  • how she finds the cases that she funds;
  • why having the right patent litigation attorneys who are willing to share the risk is crucial;
  • what a Chief IP Counsel should think about when building a patent portfolio if he’s interested in possibly taking advantage of patent litigation funding in the future;
  • the importance of curiosity for junior attorneys who want to enter the litigation funding field;
  • and much more!

Listen and subscribe on IPwatchdog.com or your favorite podcasting app!

 

Brian Pomper – The Innovation Alliance: Clause 8, Episode 18

This episode of Clause 8 features an interview with Brian Pomper of the Innovation Alliance.

Thomas Edison, the Wright Brothers, and Charles Goodyear are some of America’s best-known innovators. Instead of just making and selling the final products, they obtained patents and licensed their innovations to manufacturers. American companies like IBM, Qualcomm, and Dolby have followed this great American tradition of focusing on innovation.

However, the patent troll narrative has undermined the idea that innovators should be incentivized and rewarded for their efforts. A string of Supreme Court decisions and the passage of the American Invents Act were part of an effort to deal with the so-called “patent troll” problem.

Around the time that the AIA was being debated in Congress, a diverse group of technology companies that focus on research and development formed the Innovation Alliance to educate DC policymakers.

And, Brian – a registered patent attorney who worked for several years on Capitol Hill – became the executive director of Innovation Alliance shortly after it was started.

During this episode, Brian discusses:
• working in Congress and how he became the head of The Innovation Alliance;
• the #1 way to improve the patent system;
• what unites the Innovation Alliance;
• how the Innovation Alliance tried to improve the AIA;
• the Obama administration’s continued efforts to restrict patent rights;
• how DC became more patent friendly;
• the Senate IP subcommittee and why there’s still hope for legislative action to fix patent eligibility;
• importance of having grassroots support for legislative efforts;
• the impact that the Covid-19 pandemic is having on the patent policy debate and the Open Covid Pledge; and
• much more!

Listen and subscribe on IPwatchdog.com or your favorite podcasting app!

 

Harrity & Harrity’s First Virtual Women’s Workshop

By Elaine Spector

Harrity & Harrity just completed its 3nd Annual Women’s Workshop.  Due to the quarantine, we shifted gears to host our Women’s Workshop virtually for the first time, which allowed us to offer more women seats in our program.  The Women’s Workshop is part of Harrity’s Diversity Initiative, whose Diversity Mission is to “promote and nurture a respectful, highly engaged, family friendly, and inclusive culture that values the diversity of our talented team with diverse backgrounds, experiences, perspectives, skills/talents, and capabilities.”  35 women, including recent law school graduates and current law students, participated in a 3 ½ day long workshop. The interactive programs included patent preparation and prosecution skills training, resume and interview preparation, and sessions with prominent women guest speakers in the intellectual property field.  Ed Good joined us this year to provide a ½ day seminar in effective legal writing.

The guest speakers ranged from IP partners at major law firms (both litigation and prosecution partners), former leaders at the U.S. Patent and Trademark Office, Chief IP Counsel and IP Counsel at major corporations, and leaders within Diversity and Inclusion organizations. The speakers included Barbara Fiacco, a partner at Foley Hoag LLP and AIPLA’s President, Barbara Fisher, Assistant General Counsel, Intellectual Property and Technology Law for Lockheed Martin Corporation, Courtney Holohan, Accenture’s Chief Intellectual Property Counsel, Mercedes Meyer, a Partner at the law firm Faegre Drinker, Sophia Piliouras, president of MCCA’s Advisory Practice at the Minority Corporate Counsel Association (MCCA), Teresa ‘Terry’ Stanek Rea, a Partner at the law firm Cromwell & Moring and former acting and deputy director of the United States Patent and Trademark Office (USPTO), and Ellen Smith, a Partner at the law firm Sughrue Mion.

A favorite session among the participants was the Drafting 101 session with Harrity attorney, Peter Glaser.  The participants were taken through the application drafting process. Another favorite session was led by Harrity attorney, Tim Hirzel, who instructed the participants on patent prosecution.  Both sessions included a hands-on training assignment, which was reviewed by their instructors to maximize learning opportunities.

The session also included two-hour Q & A with Harrity attorneys, which included partners John Harrity, Paul Harrity, and Paul Gurzo.  John and Paul Harrity both agreed that their best career advice includes reading as much as possible with a focus on continued learning.  We hope the participants had a great time, and we are looking forward to next year’s workshop!

Frank Jakes, Legendary Trial Attorney – Clause 8 – Episode 16

This episode of Clause 8 features an interview with trial attorney Frank Jakes – the founder of the Intellectual Property Group at the firm of Johnson Pope in Tampa, FL. There’s a good chance that you have recently seen him questioning Joe Exotic in the Netflix documentary Tiger King. However, even before successfully representing Carole Baskin and Big Cat Rescue, Frank Jakes was already a legendary trial attorney in Tampa who handled lots of cases involving high-profile parties and interesting personalities and won many millions of dollars in verdicts. Many of those cases involved a wide variety of IP rights.

Listen and subscribe on IPwatchdog.com.

 

Your Licensees’ Patent Marking Program is Also Your Concern

By McCord Rayburn, Associate

As an in-house IP attorney, you may take comfort in knowing that your patent marking program is thorough, well-established, and properly executed. You have standardized procedures to determine which patents cover which products. You monitor product release dates to ensure appropriate marking. You have set up a “virtual marking” website to take advantage of this form of marking established by the America Invents Act (AIA). You regularly update the virtual marking website to remove expired patents and add newly granted patents. Your patent marking program is a well-oiled machine. But what about your licensees’ programs? Do you know anything about your licensees’ programs? Do you even care about your licensees’ programs? Well, you should, and the Federal Circuit recently provided another opinion to remind patent licensors that a licensee’s failure to mark can be costly.

Continue Reading on IPWatchdog.com.

In Response to the COVID-19 Outbreak, USPTO Extends Certain Patent Deadlines

By Ted Nissly, Associate

On Tuesday, March 31, 2020, the United States Patent and Trademark Office (USPTO) announced that it has exercised its authority under section 12004 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to make 30-day extensions available to certain patent and trademark-related deadlines.  Prior to the enactment of the CARES Act, the USPTO did not have authority to extend deadlines because most patent and trademark-related deadlines are defined by statute.

Rather than take a uniform approach to extending deadlines for all filings and payments, such as other patent offices have taken across the world, the USPTO has focused on allowing extensions to only certain filings and payments.  Patent application extensions apply to, for example, responses to office actions, issue fee payments, and certain appeal filings that are due between March 27 and April 30, 2020.  Notably, the USPTO has excluded replies to pre-examination notices and maintenance fee payments to most applicants, unless an applicant is a small entity or micro entity.  The USPTO also granted extensions for certain filings before the Patent Trial and Appeal Board (PTAB), including requests for rehearing of a PTAB decision.  Any qualifying filing or payment due between March 27 and April 30, 2020, will be extended 30 days from the initial date that it was due.

To qualify for an extension, a delayed filing or payment must be accompanied by a statement that the delay in filing or payment was due to a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or payment being personally affected by the COVID-19 outbreak, including through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.

The USPTO has clarified, in a frequently asked questions (FAQ) section of its website that the statement that the delay was due to the COVID-19 outbreak should be a separate statement (e.g., not as part of a response to an Office action) but does not need to be verified or provided in an affidavit or declaration form.  However, the COVID-19 outbreak must materially interfere with a filing or payment to qualify as a delay due to the COVID-19 outbreak.

The USPTO’s extension of deadlines under the CARES act is just the latest relief that the USPTO has granted due to the COVID-19 outbreak.  Last month, the USPTO waived fees for reviving applications that became abandoned because of failure to meet a deadline for responding to an Office communication due to the COVID-19 outbreak and waived requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.

As of the date of this posting, the USPTO’s extension of deadlines under the CARES act applies to deadlines through April 30, 2020, but the USPTO may extend the time window based on the continuing impact of the COVID-19 outbreak.

The USPTO’s Notice of Waiver of Patent-Related Timing Deadlines under the CARES ACT can be found here.

The USPTO’s FAQs concerning the Extension of Deadlines under the CARES ACT can be found here.

 

Obvious to Use Common Sense (If You Can Prove It)

By Jafar Ali, Associate

In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme Court recalibrated the obviousness analysis to (re-)emphasize the relevance of “the background knowledge posted by a person having ordinary skill in the art” when determining whether there would have been an apparent reason to combine and/or modify prior art to arrive at the claimed invention.  Before KSR, the Federal Circuit and lower courts had regularly been applying the so-called “teaching, suggestion, motivation” (TSM) test, which generally required some “teaching, suggestion, or motivation” to combine and/or modify the prior art to support a conclusion of obviousness.  Critically, the Supreme Court held that the TSM test as-applied was a rigid and mandatory rule that improperly limited the obviousness inquiry by denying factfinders (e.g., examiners and juries) recourse to common sense.  KSR changed the obviousness landscape by rejecting the rigidity and formalism of the TSM test and setting forth “an expansive and flexible approach” in which the factual determinations underlying the obviousness analysis could consider “the inferences and creative steps that a person of ordinary skill in the art would employ.”

One question that was not fully resolved in KSR itself, however, was the extent to which a claimed invention could be rendered obvious based on general knowledge or common sense.  Instead, the Court simply stated that the fact-finding supporting an obviousness analysis “should be made explicit” to facilitate review while favorably citing earlier Federal Circuit decisions holding that “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”  In Koninklijke Philips N.V. v. Google LLC, 2019-1177 (Fed. Cir. Jan. 30, 2020), the Federal Circuit clarified that the “general knowledge” of a person having ordinary skill in the art can indeed be relied upon to render a claimed invention obvious, even to supply an admittedly missing claim limitation, provided that the record contains a reasoned analysis and evidentiary support for such general knowledge.

In Philips, the Federal Circuit upheld an inter partes decision of the Patent Trial and Appeal Board (“Board”) finding claims 1-11 in U.S. Patent No. 7,529,806 (“the ’806 patent”) to be invalid as obvious over a single prior art reference.  The representative claim at issue generally related to a method for delivering digital content for playback on a client device.  In particular, the claimed method recited steps to retrieve a next portion of a media presentation during playback of a previous portion, thus reducing delays relative to traditional downloading approaches in which playback cannot begin until the entire media presentation has finished downloading.  Google, in challenging the validity of the ’806 patent, referred to a publication explaining a conventional pipelining scheme to divide a media presentation into multiple segments and play a current segment (Sn) while a next segment (Sn+1) is downloading.  Citing the pipelining scheme and an expert declaration, Google argued, and the Board agreed, that the claimed method was invalid as obvious because the features admitted to be missing from the prior art were within the general knowledge of a person having ordinary skill in the art.

On appeal, the Federal Circuit held that “the skilled artisan’s knowledge [can be considered] when determining whether it would have been obvious to modify the prior art” regardless of the tribunal.  Indeed, citing KSR, the court stated that the obviousness analysis requires an assessment of the “background knowledge possessed by a person having ordinary skill in the art.”  However, reliance on general knowledge or common sense would be improper if based solely upon “conclusory statements and unspecific expert testimony,” and using background knowledge to supply a missing claim limitation should be reserved to cases where the missing limitation is “unusually simple and the technology particularly straightforward.”  In this case, the background knowledge was sufficient to supply the missing claim features because the Board relied upon expert evidence that was corroborated by the literature establishing that pipelining was within the general knowledge of a skilled artisan.

This case provides important context to further refine the impact that general knowledge has on patentability.  One noteworthy aspect is that, in Philips, the party asserting obviousness presented an expert declaration and supporting documentary evidence rather than simply making conclusory statements that a person having ordinary skill in the art would have known about the missing claim features.  Accordingly, if a patent applicant is faced with an obviousness rejection relying upon general knowledge during prosecution, the applicant can challenge the Examiner to produce supporting documentary evidence.  Furthermore, this case reaffirms the importance of having robust backup positions in a patent application, including dependent claims.  Features of independent claims believed to overcome the prior art might be alleged to be within the general knowledge of a skilled artisan in adversarial proceedings when parties asserting invalidity typically devote more resources to finding evidentiary support.  Strong dependent claims provide an avenue for at least some claims surviving in that situation.

 

Addressing the Lack of Diversity in the Legal Field

Promoting the culture of diversity is important for all professions, but it is especially lacking in the legal field. In fact, the legal profession is among the least diverse professions in the United States.  Diversity and inclusion in the workplace help to identify and embrace different backgrounds and contribute to the overall advancement of the business.

There are several factors that impede the prevalence of diversity in the legal field.  At Harrity, we are dedicated to overcoming these obstacles by providing opportunities for minorities and developing tools for diverse candidates to succeed.  Although the disparity of minorities practicing law, and especially minorities in equity positions, will take time to overcome, it is an obtainable goal if all firms work to address the problem.

Statistics Talk

The industry needs to recognize the importance of creating an unbiased, equal, and harmonious working environment for all legal professionals.  Unfortunately, the lack of diversity is widespread in the legal field, and the numbers show the industry is moving at a slow pace to address the issue.

In 2018, 85% of lawyers in the U.S. were Caucasian, according to the American Bar Association.  Another report on diversity in U.S. law firms found that racially diverse women are the most underrepresented group in the legal profession.  Other diverse groups underrepresented include LGBTQ2+ lawyers, lawyers with disabilities, and Black/African lawyers.

The Challenges in Recruiting Diverse Workforce

While corporate legal departments and law firms are working on more inclusive recruitment and hiring practices, there is still a need to address the lack of diversity.  Many barriers impede the advancement and retention of diverse lawyers in the legal profession.  Some of the factors that contribute to the lack of diversity include in-group favoritism, stereotyping, unconscious biases, and diversity fatigue.

Law firms should regularly participate in diversity training, utilize a diversity consultant, and review their own Diversity & Inclusion policies.  Firms should also consider concepts such as implicit bias, i.e., attributing certain attitudes or associating stereotypes with a person or group of people without our conscious knowledge, and self-assessment bias, in which females and minority groups tend to rate themselves lower on skill-related surveys than white males.

Other factors that contribute to the lack of diversity in the legal field are the socio-economic circumstances that often hinder minority groups, including limited access to quality education and other resources, and the high cost of pursuing a legal degree.  Outreach programs, financial aid, and internal training opportunities targeting low-income families can help legal professionals address this and ensure all demographics have the same access to a legal career path.

Importance of Diversity in the Legal Field

Law firms must welcome a diverse workforce as it promotes mutual respect, acceptance, and co-existence.  It is crucial to formulate new strategies when working in the legal world.  A diverse group of lawyers, with different backgrounds, ethnicities, and skills, can help each other in building strengths and overcoming weaknesses.

Diversity leads to innovative ideas, opinions, and strategies.  It improves the quality of service and ensures that the voice of marginalized groups is also heard.  A female lawyer or black lawyer can highlight the issues of their respective groups better than others.  Diversity helps law firms to adapt accordingly to unprecedented or less familiar situations.  It allows them to respond to diverse clients more effectively.

Above all, diversity and inclusion in the legal field prevent discrimination against skilled and qualified lawyers.  Many reports and studies show that diverse workplaces are more productive and that they have lower turnover compared to non-inclusive workplaces.

Final Word

Harrity & Harrity strongly believes that the practice of law can advance only when there is a diverse legal team.  Our Diversity Mission is to promote a respectful, family-friendly, and diverse culture that recognizes and values the diverse backgrounds, perspectives, experiences, skills, and talents of each member on our team.

In order to provide equal opportunity to all candidates, Harrity developed the Rooney Rule 2.0 with regard to hiring, which is based off of The Rooney Rule.  The Rooney Rule is a National Football League policy that requires league teams to interview one minority candidate for each head coaching and senior football operation job.  According to The Rooney Rule, only one diverse candidate needs to be interviewed, while there could be hundreds or thousands of non-diverse candidates.  The Rooney Rule 2.0 changes that rule to commit to interviewing a female or minority candidate for every male or non-minority candidate we interview for any position at our firm.

The Harrity Diversity Committee has implemented several other initiatives in order to grow and nurture diversity in the IP legal field.  The Minority Firm Incubator helps train, develop, and launch minority-owned patent law firms in an effort to recruit, retain, and advance attorneys who will contribute to the diversity of the patent field.  The annual Women’s Workshop is a free program that introduces female engineers and law students or recent graduates to the practice of patent law with guest speakers, patent skills training, career mentoring, and more.  The Harrity Academy provides minority candidates with exclusive training and practice materials for drafting high-quality patent applications.

The goal of these programs is to help increase the number of diverse candidates applying to positions within Harrity and the legal field, help improve skillsets and the likelihood that these candidates will succeed in the interview process, and encourage upward movement for minorities within their firms.

If more firms commit to implementing a comprehensive diversity plan, together, we can help bridge the gap by eliminating biases and encouraging diversity within the legal community.  It is vital that the hiring process focuses only on required skillsets and qualifications, regardless of gender, color, race, or religion, and that steps are taken to reduce discrimination and give minorities the opportunity to succeed.

If you are interested in reading the 2018/2019 Harrity Annual Diversity Report, it can be found here.  For more information regarding Harrity’s diversity initiatives, visit harrityllp.com/diversity.

 

Elaine Spector
AUTHOR

Elaine Spector

Elaine Spector is a Partner at Harrity & Harrity, LLP, a boutique firm specializing in intellectual property law. Her practice focuses primarily on the prosecution of patent applications, specifically within electromechanical technologies. Elaine is a driving force in the firm’s diversity and charity initiatives and serves on several committees and boards in relation, including AIPLA’s Women in IP Law’s Global Networking Event & Outreach Subcommittee, IPO’S Diversity & Inclusion Committee, and the non-profit No More Stolen Childhoods.

Bunch O Balloons Inventor Josh Malone – Clause 8 – Episode 16

Tune into Eli Mazour‘s Clause 8 Podcast for an exclusive interview with Josh Malone – the inventor of Bunch O Balloons and America’s foremost advocate for reliable patent rights.

Josh came up with the idea for Bunch O Balloons to help his kids fill up 100 water balloons in less than one minute. It eventually became the most popular toy in America. However, before Bunch O Balloons even came to market, another company copied it and started selling its own versions of the product. Luckily – or so he thought at the time – Josh filed a patent application for his Bunch O Balloons invention. He did not know the enormous amount of time, money, and luck it would take to successfully enforce patents that covered his invention. This episode tells the story of what it took, including taking a trip to Bentonville, AR in the middle of the night to try to convince Walmart to stop selling knock offs of his product.

Listen and subscribe on IPwatchdog.com.

 

The Importance of Patent Analytics for Your Business Strategy

When a company or organization launches a new product, a patent is usually the first published evidence of the invention in the public domain. Patents are essential protections for any innovation-driven company that has a substantial Intellectual Property Rights (IPR) culture.

A patent protects the right of the inventor company to use their product, thereby preventing others from using the invention. Today, patents have become critical factors for businesses to get an edge over their competitors. Patent analytic tools are being used by organizations for various purposes, including development of sound business strategy.

How Does Patent Analytics Help Businesses?

Patent analysis helps businesses in many areas, both internally and externally. For instance, internal patent analytics helps organizations assess their own patent portfolio.

Further, it can assist in SWOT (strengths, weaknesses, opportunities, and threats) analysis. With patent analytics, companies can make informed decisions regarding licensing and acquisition of advanced technologies.

External analytics, on the other hand, provides information about competitors and the technologies they use.

Let’s discuss the benefits of patent analytics for business strategies in detail.

1.     Portfolio Analytics

To stand out amongst the competition, you must understand your organization’s patent portfolio. Analyzing your company’s portfolio reveals valuable insights; you get a clear picture of your strengths and weaknesses. Doing so allows you to make well-informed business decisions.

2.     Competitor Analytics

Another advantage of patent analysis is that it allows you to compare your own patent portfolio to those of competitors. Competitor analytics offers valuable insight into competitor business strategies and partnerships.  Patent analytics helps you understand what is working for your competitors and what mistakes you should avoid.

3.     Technology Analytics

Analytics tools keep you up to date on where your business and competitors stand in the dynamic landscape of technology. This information allows you to make better decisions regarding portfolio management and fosters stronger client relationships.

Field-relevant technology know-how helps identify market needs. Patent analysis provides researchers and inventors with valuable technological information needed to find innovative solutions to technical problems.

Additionally, patent analytics helps with licensing, mergers, and acquisitions. Patent data can provide a comprehensive, technical portfolio view for technologies and companies in consideration for licensing or acquisition and helps shorten the list of choices.

4.     Cost and Budget Analytics

Budgeting and wise resource-management is crucial to strong business strategy. Analytics provide detailed information on costs occurred during patent prosecution and maintenance periods. This information helps identify problems, cut costs, and spend your budget efficiently.

5.     Automated Portfolio Categorization

Patent portfolio categorization dashboards, such as those created by Harrity Analytics, are automated systems that categorize patent portfolios according to your business’s self-determined technology areas.  These tools can additionally perform a competitive analysis of the key players in your niche industry areas.

Final Words

Whether you are starting a new business, developing a new product, pitching a new client, planning a merger, or just trying to stay ahead of the competition, patent analytics is crucial to ensuring you are on the right track and building a sound business strategy.

Harrity Patent Analytics services can help you manage your patent profile, gain insight into your competitors’ portfolios, and understand patent trends around the world.  Harrity Patent Analytics can help you make patent prosecution decisions and refine your business strategy.  To view a list of Harrity Patent Analytics services or request your own customized reports, visit https://harrityllp.com/services/patent-analytics/.

 

About Harrity Patent Analytics

Harrity Patent Analytics, a team of professionals within the boutique IP law firm of Harrity & Harrity, LLP, uses cutting-edge capabilities to analyze patent data and extract insights for strategic decisions regarding patent portfolios.  Patent 300® companies rely on Harrity Patent Analytics services to better understand their own patent portfolios, those of their competitors, their key technology areas, and to keep track of patent office trends around the world.  For more information, visit harrityllp.com/services/patent-analytics.

 

Kevin Jakel of Unified Patents Pt. 2 – Clause 8 – Episode 15

Tune into Eli Mazour‘s Clause 8 Podcast for the second and final part of our interview with Kevin Jakel, the founder and CEO of Unified Patents. On this episode, we continue the conversation with Kevin about how Unified Patents operates, discuss Unified Patents’ new program for targeting Standard Essential Patents (SEPs), debate whether the patent troll narrative has been overblown, talk about the patent quality problem, and delve into some other patent policy issues related to IPRs and the PTAB. We also find out what Kevin has in common with George Costanza!

Listen and subscribe on IPwatchdog.com.

$750 Million Dollar Patent Infringement Award May Hinge on Whether a Certificate of Correction was Properly Issued to Fix a “Typo”

By Steven Underwood, Counsel

On December 15, 2019, a Los Angeles jury found that Kite Pharma Inc. (“Kite”) had willfully infringed a cancer-treatment patent licensed by Juno Therapeutics Inc. from Memorial Sloan Kettering Cancer Center and Sloan Kettering Institute for Cancer Research (collectively, “MSKCC”), and held that Kite should pay MSKCC $752 million.  The litigation (Juno Therapeutics Inc. et al. v. Kite Pharma Inc., case number 2:17-cv-07639, C.D. Cal.) was widely reported in the press as potentially hinging on whether the patent-in-suit (U.S. Pat. No. 7,446,190) contained a simple “typo.”

During the litigation, Kite argued that the U.S. Patent & Trademark Office (PTO) had erroneously issued a Certificate of Correction (CoC) because the “[t]he mistake corrected by the certificate of correction . . . was not of a clerical or typographical nature and was not of minor character,” as required under 35 U.S.C. § 255.  Kite’s position was that the CoC should not have been granted, and that if the CoC had not been granted, Kite clearly would not infringe the claims of the patent.

In order to understand the nature of the mistake corrected by the CoC, we must briefly consider the claims.  Claim 1 of the patent requires a “nucleic acid polymer encoding a chimeric T cell receptor comprising . . . a costimulatory signaling region [that] comprises the amino acid sequence encoded by SEQ ID NO:6.”  Therefore, infringement of claim 1 can be determined only by reference to the definition of SEQ ID NO:6 (which is provided in the specification of the patent) – and that definition was modified by the CoC (seven bases, out of 328, were deleted).

When the application was filed on May 28, 2003, the SEQ ID NO:6 listing was, as explained by MSKCC to the PTO, incorrect.  On September 4, 2007, after receiving a Notice of Allowance, MSKCC submitted a Request for Continued Examination (RCE) with an Amendment that requested the same changes to the specification that were subsequently requested by the CoC.  In the Amendment, MSKCC argued that the changes were not new matter, since one skilled in the art would have recognized, as clerical errors, the errors being corrected.  As required, a copy of the revised sequence listing on a computer-readable disk was submitted with the Amendment.  However, on November 2, 2007, the Amendment was rejected by the PTO, on the ground that the sequence listing disk submitted with the Amendment was “flawed technically.” After two attempts, in April 2008 MSKCC submitted, along with a corrected paper copy of the sequence listing, a copy of the disk that was accepted, and on November 4, 2008, the patent issued.

However, while the April 2008 submission made corrections that were requested by the PTO, those corrections were made to the original, not the amended, specification.  Consequently, the changes requested in the September 2007 Amendment/RCE were undone by the April 2008 submission.  As summarized in MSKCC’s Request of Correction: “Sequence ID Nos. 4 and 6 in the printed patent therefore contain the same errors that the RCE was filed to address.”  Thus, MSKCC argued, “The resubmission of the incorrect Sequence listing occurred through clerical error . . . and was not made in bad faith. The correction requested does not involve such changes in the patent as would constitute new matter . . . as it was the change that was presented to the Examiner in the initial amendment and arguments filed with the RCE.”

Regardless of the ultimate outcome of this case (an appeal seems likely), the clear takeaway for clients and practitioners is that a second pair of eyes should carefully review each filing with the PTO, including patent applications and responses.  Such a review will substantially reduce the risk of a patent application being filed with the wrong information, and better ensure that any mistakes are properly corrected.  As this case demonstrates, whether errors are properly (and promptly) corrected during prosecution may affect the validity or enforceability of a corresponding patent.

In Design Patents, Claim Language Matters

By Ryan Thelen, Associate

Often when a design patent application is prepared, the primary focus and effort of the drafting process is given to the drawings, while little thought is given to the wording of the actual claim.  However, the Federal Circuit recently issued a decision in a case of first impression in Curver Luxembourg, SARL v. Home Expressions Inc., 2018-2214 (Fed. Cir. Sep 12, 2019), in which the Federal Circuit highlighted how the words in a design patent claim can limit the scope of a design illustrated in a patent drawing.

Curver is the assignee of U.S. design patent no. D677,946 (’946 patent), which claims an “ornamental design for a pattern for a chair.”  However, the drawings of the ’946 patent do not show a chair and merely illustrate an overlapping Y design.  The term “chair” was added to the claim and title during prosecution as a result of an examiner objection to the use of the term “furniture part.”

Curver sued Home Expressions on the basis that Home Expressions sells baskets that incorporate an overlapping “Y” shape that infringes the ’946 patent.  The United States  District Court for the District of New Jersey first construed the scope of the ’946 patent to include the design illustrated in the drawings as applied to a chair, and then determined that Home Expressions’s baskets do not infringe under the “ordinary observer” test.  The District Court reasoned that the scope of the ’946 patent is limited to the article of manufacture listed in the ’946 patent, and found that an ordinary observer would not purchase Home Expressions’s basket with the ornamental “Y” design believing that the purchase was for an ornamental “Y” design applied to a chair, as protected by the ’946 patent.”

On appeal, Curver took issue with the claim construction aspect of the District Court opinion, arguing that the District Court improperly limited the scope of the claim due to the word “chair” in the claim, rather than focusing on the design shown in the drawings in which no chair is present.  35 U.S.C. § 171 permits patent protection for a “new, original and ornamental design for an article of manufacture” (emphasis added), yet no article of manufacture was illustrated in the drawings of the ’946 patent.  Thus, the issue before the Federal Circuit is how to construe the scope of a design patent in which the claimed design is illustrated in the abstract (i.e., is not applied to an article of manufacture in the drawings).

The Federal Circuit held that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.”  The Federal Circuit cited various persuasive sources to support its decision, such as Gorham Co. v. White (Sup. Ct. 1871), Ex parte Cady (USPTO 1916), 37 C.F.R. § 1.15, and the MPEP.  The Federal Circuit specifically noted that 37 C.F.R. § 1.15 permits the scope of a design patent to be defined by a combination of the drawings and the language of the design patent.

This case makes clear that when filing and prosecuting a design patent application, applicants and practitioners should ensure that the claimed design is tied to an actual “article of manufacture,” and should carefully choose the words that will be used in the claim, description, and title.

USPTO October 2019 Update On Subject Matter Eligibility

By Tim Hirzel

The PTO’s Revised Patent Subject Matter Eligibility Guidance (2019 PEG) has been generally well received for providing a more reliable manner of applying the Alice/Mayo test used by the courts.  Even so, the 2019 PEG still left some matters unclear and the PTO has now responded to public feedback by providing further clarification in the October 2019 Update.  Below, we discuss the updates and how practitioners can use the updated guidance in practice.

Step 2A Prong One

In Step 2A Prong One, the 2019 PEG instructs examiners to evaluate whether a claim recites an abstract idea by a) identifying specific limitations in the claims believed to be an abstract idea, and b) determining whether the identified limitations fall within any of the three specific groupings of abstract ideas (mathematical concepts, certain methods of organizing human activity, and mental processes).

However, there was some question as to how explicitly limitations in the claims have to recite an abstract idea.  The October 2019 Update clarifies that “recites” should broadly be construed to mean that the claims either explicitly set forth the abstract idea or merely describe the abstract idea without explicitly using words that identify the abstract idea.  The PTO further clarifies that claims may recite multiple abstract ideas, which may fall in the same or different groupings, and that the groupings are not mutually exclusive (i.e., a single claim limitation may fall into more than one abstract idea grouping).

The October 2019 Update also provides clarification on what the three groupings of abstract ideas entail.

  • Mathematical Concepts – The 2019 PEG defines “mathematical concepts” as mathematical relationships, mathematical formulas or equations, and mathematical calculations. The PTO interprets the courts as having declined to distinguish between types of math when evaluating claims for eligibility, and the PTO will do the same.  For example, math used to solve a particular technical problem (e.g., an engineering problem) will still be considered to fall within the mathematical concepts grouping.  However, a claim does not recite a mathematical concept if it is only based on or involves a mathematical concept.
  • Certain Method of Organizing Human Activity – The PTO clarifies that not all methods of organizing human activity are abstract ideas, and this grouping is limited to only fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people.
  • Mental Processes – Under the 2019 PEG, “mental processes” are concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. A footnote in the 2019 PEG indicates that a claim limitation is not a mental process when it “cannot practically be performed in the mind.”  The October 2019 update expanded on this and clarified that this is “when the human mind is not equipped to perform the claim limitations.”  The PTO reemphasized that claims can recite a mental process even if they are performed by a computer in the claim and further clarified that there is no requirement that the claim be performed entirely in the human mind to fall into the mental processes grouping.

The 2019 PEG also allows for the possibility that a claim limitation that does not fall into one of the three groupings of abstract idea may be still determined to be an abstract idea upon TC Director approval.  The October 2019 update indicates that the public will be notified once such an office action issues.  At this time, the PTO has not provided any such notification.

Step 2A Prong Two

In Step 2A Prong Two, the 2019 PEG instructs examiners to evaluate whether the claim as a whole integrates the abstract idea into a practical application and gives several considerations in making this determination, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.

The October 2019 Update reemphasized that this analysis considers the claim as a whole, and that the additional elements of the claim (i.e., those not identified as an abstract idea) are not to be evaluated separately from the limitations reciting the abstract idea.  Moreover, the PTO clarified that merely claiming a specific way of achieving a result is not a stand-alone consideration in Step 2A Prong Two and is not enough by itself to integrate the abstract idea into a practical application.  However, the specificity of the claims is relevant to the considerations related to using a particular machine, a particular transformation, and whether the limitations are mere instructions to apply an exception.

The October 2019 Update devotes lengthy discussion to how a claim improves the functioning of a computer or a technical field and provides a two-step procedure for how examiners are to perform this analysis.

  • Step One – Examiners are to evaluate the specification to determine if sufficient details are provided to establish the claimed invention provides an improvement to technology. However, there is no requirement that the specification explicitly recite the improvement.  The improvement is not relative to what is well-understood, routine, conventional activity in the field, but rather relative to existing technology.  Importantly, the PTO noted that an improvement to an abstract idea is not an improvement to technology.
  • Step Two – If the specification sets forth an improvement in technology, the claims must be analyzed to determine if the claims recite features that provide the improvement described in the specification. However, there is no need for the claims to explicitly recite the improvement.

Step 2B

In Step 2B, examiners are to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea.  The October 2019 Update itself provides almost no discussion or clarification of Step 2B other than to reemphasize that well-understood, routine, conventional activity will only be considered under Step 2B and not Step 2A.  However, the PTO provided Example 43 along with the October 2019 Update that shows how a claim can fail Step 2A but still be determined eligible under Step 2B.  Such an example was notably absent from the examples provided with the 2019 PEG.

Example 43 is a hypothetical based on the well-known Diamond v. Diehr case.  Example 43 is directed to a controller for an injection molding apparatus that repeatedly obtains temperature measurements of a mold, calculates an extent of curing completion based on the temperatures and an equation, and determines a percentage of curing completion.  Claim 3 specifies that the controller is connected to a means for temperature measuring (which is specifically interpreted to be an ARCXY thermocouple).  Under Step 2A Prong One, the claim is determined to recite a mathematical concept.  Under Step 2A Prong Two, the step of obtaining the temperature measurements is deemed to be insignificant extra-solution activity of data gathering and does not integrate the abstract idea into a practical application.  Notably, the fact that claim 3 uses an ARCXY thermocouple to obtain the temperature measurements is not considered in Step 2A Prong Two (not even to establish use of a particular machine).  Thus, claim 3 is determined to be directed to the abstract idea.

However, the consideration of whether the ARCXY thermocouple feature is mere insignificant extra-solution activity is reconsidered under Step 2B taking into account whether such extra-solution activity is well-known.  The PTO found that while use of ARCXY thermocouples is known in the aeronautical industry, the use of ARCXY thermocouples was not routine or conventional in injection molding apparatuses.  Because the ARXCY thermocouple resulted in better long-term performance, durability, and response time than other thermocouples, the result of using the unconventional thermocouple in the claimed manner amounts to significantly more than the abstract idea (i.e., mathematical concept) and the claim is patent eligible.

Key Takeaways

The October 2019 Update reinforces the idea that the best practice when drafting a patent application is to describe the invention as providing a technical solution to a technical problem.  In this way, should a Step 2A Prong One argument fail, practitioners can rely on a Step 2A Prong Two argument that the claims improve the functioning of a computer or other technology.  This argument seems to be the argument preferred by examiners and often cited by the courts as a basis for patent eligibility when there is a 101 issue.

Specifically, practitioners should keep in mind that examiners will heavily rely on the specification to determine if such a technical solution or technical improvement is provided.  The improvement should not be merely recited in a conclusory manner (e.g., an unsupported assertion that the invention provides a specific improvement), but should be explained in sufficient detail to tie specific features of the invention to the improvement.  Importantly, the claims should be drafted in such way to include the features that provide the improvement.  Examiners have often requested, or even required, that the claims explicitly recite the improvement to overcome a 101 rejection even though these claim features are often considered intended use or given little patentable weight.  The October 2019 update makes it clear this is not necessary.

The PTO also appears to narrow at least some of the three groupings of abstract ideas in Step 2A Prong One.  Practitioners should use this to their advantage when drafting applications to characterize features that may be arguably abstract in a way that avoids falling into the three groupings of abstract ideas.  For example, when appropriate, the application could describe the complexity of steps that may be arguably mental processes (e.g., determining steps, processing steps, analyzing steps, etc.) to establish that these steps cannot be practically performed in the human mind.  However, practitioners should be careful not to try to game the system by describing a simple step, which truly could be performed in the mind, as a complex step that cannot be performed in the mind because such a characterization could have unintended consequences for potential infringement and claim interpretation.  Moreover, if a feature truly could be performed in the mind, then there is most likely a better way to establish eligibility under Step 2A Prong Two or Step 2B.

The 2019 PEG stripped Step 2B of most of its previous considerations and moved them to Step 2A Prong Two.  While the 2019 PEG indicated that Step 2B was still a viable option to establish eligibility, there was little instruction on how practitioners could actually present a successful argument and no examples of succeeding under Step 2B were given.  Given this, examiners have been reluctant to seriously consider Step 2B arguments.  Although arguments under Step 2B are likely to remain an improbable way to overcome a 101 rejection in view of the of the October 2019 Update, practitioners should keep in mind that new Example 43 provides a manner of establishing an inventive concept and a rationale that can be used as a backup position under Step 2B going forward.  Therefore, practitioners should draft their specifications to highlight how their inventions differ from what is well-understood, routine, conventional in the field, even if it is a feature that is more tangentially related to the core invention that could be considered extra solution activity.

Overall, the October 2019 Update should help the PTO continue to provide more reliable subject matter eligibility analysis and clarify what kinds of arguments will successfully overcome a 101 rejection.

Why a Brief Response is the Best Response to an Office Action

By Rebecca Bachner, Associate

The Federal Circuit recently issued a decision that reminds us of the importance of always remembering prosecution history estoppel when presenting arguments in responses to the USPTO.  Specifically, in Amgen Inc v. Coherus Biosciences Inc., 2018-1993 (Fed. Cir. Jul. 29, 2019)) (“Amgen”), the Federal Circuit highlights how prosecution history estoppel can bar a patent owner from succeeding on its infringement claim under the doctrine of equivalents.

At issue was Amgen’s U.S. Patent No. 8,273,707 which was being asserted against Coherus for infringement.  During prosecution, the USPTO rejected Amgen’s claims as obvious in view of U.S. Patent No. 5,231,178 (“Holtz”).  In response, Amgen presented multiple different arguments.  First, Amgen argued that “the pending claims recite a particular combination of salts. No combinations of salts taught nor suggested in the Holtz et al. patent, nor [are] the particular combinations of salts recited in the pending claims taught nor suggested in this reference.” See Fed. Cir at pgs. 4-5.  Amgen further included a Declaration from the inventor of the ‘707 patent.  “The Declaration did not discuss any salt pairs other than sulfate/citrate, sulfate/acetate, and acetate/citrate—the only claimed pairs in the ’707 patent.”  See Fed. Cir at pg. 5.  The Patent Office issued another rejection and, in a final response, Amgen reiterated that Holtz did not disclose a combination of salts nor did Holtz disclose enhancing the dynamic capacity of an HIC column.  The Amgen patent issued after these arguments were filed.

Amgen filed suit against Coherus alleging infringement of the ‘707 patent under the doctrine of equivalents.  Coherus moved to dismiss Amgen’s complaint under Fed. R. Civ. P. 12(b)(6) stating that Amgen argued that Holtz did not disclose “one of the particular, recited combinations of salts.”  See Fed. Cir at pg. 7.  A magistrate judge issued a report that recommended that Coherus’ motion be granted due to prosecution history estoppel.  The report stated that Amgen “clearly and unmistakably—and indeed, repeatedly—indicated to competitors that it surrendered processes using combinations of salts different from the ‘particular combinations of salts recited in the . . . claims[.]’”  See id.  Therefore, the report found that “prosecution history estoppel bars Amgen from now attempting to reassert surrendered ground involving other combinations of salts.” See id.  The District Court adopted the magistrate judge’s recommendation and granted Coherus’ motion to dismiss.

At the appeal, the Federal Circuit agreed with the lower court’s dismissal.   The Court looked at the prosecution history and noted that “Amgen distinguished Holtz on the basis that Holtz did not teach or suggest the “particular combinations of salts” recited in Amgen’s claims.”   See Fed. Cir at pg. 9.  The Court further noted that “Amgen emphasized “particular” and referred to its particular salts three times in the span of two pages.”  See id.  As to Amgen’s argument that it distinguished from Holtz on the basis of increasing dynamic capacity, the Court states that “while Amgen did assert multiple reasons for why Holtz is distinguishable, our precedent instructs that estoppel can attach to each argument.”  See Fed. Cir at pg. 11.  Importantly, the Court stated that “[t]here is no requirement that argument-based estoppel apply only to arguments made in the most recent submission before allowance.”  See id.

This case is a strong reminder that everything written during prosecution can be used against the patent owner in later litigation.  The fact that “this particular combination” was a non-convincing argument, but still was used against Amgen with doctrine of equivalents shows how careful patent practitioners must be in drafting responses to the USPTO.  Each argument written down is part of the record that can be used against the ultimate patent.  As such, a high emphasis must be placed on having successful interviews with the Examiner.  Examiner interviews should be used at every stage of prosecution.  The Examiner interview is an invaluable way to receive feedback from the Examiner without adding to the written record.  Often, an agreement on claim language can be reached during the Examiner interview.  Based on the agreement, a response can be drafted in a way that minimizes the written record.  As such, Examiner interviews not only help with efficiency but are also a crucial part of obtaining high quality patents.

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