Clause 8’s Eli Mazour Named Partner

WASHINGTON, DC (January 28, 2020) Harrity & Harrity, LLP is excited to announce that Eli Mazour has been named partner of the firm. Mazour’s expert knowledge of the patent field, creativity and efficiency in patent prosecution, strong business acumen, and large network within the patent community will be crucial factors in the growth and advancement of the firm. He is one of three new partners at Harrity, as announced by the firm last week.

“I’m excited to now be a partner at America’s most innovative patent preparation and prosecution boutique,” commented Mazour.  “This will allow me to continue to provide the greatest possible value to technology companies that are interested in growing high-quality patent portfolios that best fit their business needs.”

Mazour leads the firm’s patent prosecution team with a focus on helping Patent 300® companies build valuable, high-quality patent portfolios in an efficient manner. He has extensive experience in all aspects of patent prosecution, including preparing and prosecuting hundreds of patent applications related to computer software, Internet and e-commerce, telecommunications, networking devices, electronic consumer products, and medical devices.

Mazour has specific expertise in developing and implementing innovative patent prosecution strategies for reaching favorable results at the U.S. Patent and Trademark Office. He assists clients in evaluating existing patent portfolios, identifying strategic areas for patenting, and creating processes for harvesting disclosures of patentable inventions.

Mazour began his patent law career at the law firm of Finnegan, Henderson, Farabow, Garrett, & Dunner and has been with Harrity, LLP since 2010. Throughout his tenure, Mazour has been helping clients resolve complex patent assertion and licensing issues. As a result, he is keenly aware of the pitfalls to avoid and opportunities to grasp during patent prosecution.

In addition to providing outstanding prosecution support, Mazour is the creator and host of the Clause 8 podcast, which was recently picked up by the IP field’s largest online publication, IPWatchdog.com.  Clause 8 features interviews with prominent members of the IP community in which the most interesting and influential topics of today’s patent world are discussed. As a result, Mazour is sought out by clients and professionals for his insight on various patent policy developments, including legislative proposals and changes at the United States Patent and Trademark Office (USPTO). Mazour has also partaken in several speaking engagements focused on patentability and authored a number of articles on patent strategy.

To learn more about Mazour’s background, and to view all of his speaking engagements and publications, please visit his Harrity Bio Page.

 

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300®. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

Harrity Promotes Three Attorneys to Partner, Including First Female Partner

WASHINGTON, DC (January 24, 2020) Harrity & Harrity, a leading patent law firm based in the Washington, DC metro area, is pleased to announce the promotion of three top patent attorneys into partner roles, effective January 1, 2020.

Neil Kardos, Eli Mazour, and Elaine Spector have consistently demonstrated excellence in their practices while going above and beyond to contribute to the firm’s accomplishments in the intellectual property sector. The announcement comes at a time when Harrity is on track to be national leaders in innovation, automation, analytics, charity, and diversity initiatives in the legal field. The transition of Neil, Eli, and Elaine into partnership roles will be a driving force in the continued growth and advancement of the firm.

“Neil, Elaine and Eli are an exceptional group of talent. During their collective time at Harrity, each has demonstrated a tremendous amount of leadership, innovation, efficiency, and progression, both within the firm and the IP community as a whole- all while providing top quality services to our clients. We are thrilled to have these three attorneys begin a new chapter with us as partners and know they will play an instrumental role in furthering Harrity’s accomplishments into the new decade,” said the firm’s Managing Partner, John Harrity.

Neil Kardos, a former Primary Patent Examiner at the United States Patent and Trademark Office (USPTO) and active member of the Intellectual Property Owner’s Association (IPO) and Corporate IP Institute, specializes in preparing and prosecuting patent applications. His practice focuses on electrical, computer, and mechanical technologies, including telecommunications, 5G, vehicle-to-everything (V2X) systems, financial technologies, computer hardware and software systems, computer networking, search engines, optical systems, internet hardware and software systems, machinery, sensors, control systems, e-commerce, and business methods. Neil is a graduate of The George Washington University National Law Center and has been with Harrity since April of 2012.

Eli Mazour joined Harrity in 2010 and currently leads the firm’s patent prosecution team with a focus on helping Patent 300® 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 patent prosecution strategies for reaching favorable results at the USPTO. Eli is also the creator and host of the Clause 8 podcast, which features interviews with prominent members of the IP community, and has written and presented about various patent-related trends. As a result, he is sought out by clients and other professionals for his insights on various patent policy developments, including legislative proposals and changes at the USPTO.

Elaine Spector has over 20 years of experience in intellectual property law. Her extensive experience in the IP field includes patent application drafting and prosecution, trademark prosecution and enforcement, as well as litigating complex patent cases in federal courts. Elaine’s current practice consists primarily of prosecuting patent applications with a focus on electromechanical technologies. Elaine is a driving force in legal service quality, diversity programs, and charity involvement at the firm, and currently serves as Chair of the Harrity Diversity Committee and Chair of the AIPLA Women in IP Law Committee’s Global Networking Event and Outreach Subcommittees. She is also on the IPO Diversity Committee’s Management Team and is a Board Member at the non-profit No More Stolen Childhoods. Elaine has been with Harrity since 2017 and is the firm’s first female partner.

“Truly, something extraordinary is happening here at Harrity; where a woman, or any other lawyer for that matter, can have the opportunity to be a partner, but not at the sacrifice of their family.  I am unaware of any other firms that provide the flexibility that Harrity offers; that can allow a mom like myself (who likes to cook for her family and be involved) an opportunity to work reduced hours, while still caring for my family in a way that feels good to me,” said Elaine.  “I am very excited for the opportunity I’ve been given and for what the future holds for this awesome firm.  The best is yet to come.”

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300®. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

Kevin Jakel – Clause 8 – Episode 14

Tune into Clause 8 Podcast as Harrity’s Eli Mazour delves into the unique and impressive story of Unified Patents with founder & CEO Kevin Jakel

“Either because it wants to keep patent owners on edge, does not want to provide ammunition to those who question how independently it really operates from its members, or for some other reason, Unified Patents has not publicly disclosed how it decides what patents to target. This interview with Kevin tries to resolve some of that mystery surrounding Unified Patents.”

Listen and subscribe on IPwatchdog.com.

#patents #ipnews #patentnews #unifiedpatents #interviews #patentinsights #podcast #subscribe #clause8 #elimazour #kevinjakel #patenttrolls #ptab #aia

IPWatchdog Picks Up Clause 8 Podcast

IPWatchdog, Inc., the largest online publication for IP news, is now home to Eli Mazour’s Clause 8 Podcast.

Mazour, Partner at Harrity, LLP and host of Clause 8, began the podcast in 2017 as a way to share his passion for discussing intellectual property issues. He routinely meets with the most interesting and influential personalities in the IP field, provoking intriguing conversations on modern patent processes and legal innovation.

Stay in the know by listening and subscribing now at https://bit.ly/39TZP2y.

 

https://soundcloud.com/clause-8/episode-13-gene-quinn

Gene Quinn – Clause 8 – Episode 13

On the Clause 8 Podcast, our own Eli Mazour talked to Gene Quinn about starting and running IPWatchdog.com – the most influential IP-focused website in America.  They also talked about the IP policy landscape in Washington, how to effectively impact the policy making process, and various patent issues.  #IntellectualProperty #Patents #Podcast

https://soundcloud.com/clause-8/episode-12-gilbert-hyatt

Gil Hyatt – Clause 8 – Episode 12

Eli Mazour recently interviewed the inventor of the microprocessor – Gil Hyatt – on the latest episode of the Clause 8 Podcast.  Gil talks about devoting his life to innovation, licensing patents for hundreds of millions of dollars, and getting stuck in USPTO’s Sensitive Applications Warning System (SAWS) program. #IntellectualProperty #Patents #Podcast

https://soundcloud.com/clause-8/episode-11-john-harrity

John Harrity – Clause 8 – Episode 11

Our Managing Partner John Harrity is the featured guest on this episode of the Clause 8 Podcast, sharing his thoughts on everything from how firms in the patent law space should be innovating, to some of the secrets of our own firm’s success. #Innovation #LawFirms #IntellectualProperty #Podcast

Law360 Interviews Eli Mazour regarding latest Clause 8 Podcast

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

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

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

Eli Mazour Harrity Team

Why the Revised 101 Guidance Continues to be Important After Cleveland Clinic

By Eli Mazour

After the 2014 Supreme Court Alice decision, the judges of the Federal Circuit failed to reach a meaningful consensus regarding how the subject matter eligibility test set out in Alice should be applied.  As a result, new USPTO Director Andrei Iancu recognized that there was no practical way for examiners to navigate all of the patent eligibility decisions for each individual patent application.  To address this problem, the USPTO released the “2019 Revised Patent Subject Matter Eligibility Guidance.”

In the recent Cleveland Clinic Foundation v. True Health Diagnostics decision, a panel of the Federal Circuit invalidated claims related to cardiovascular testing under § 101 and stated that “[w]hile we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance” (Fed. Cir. 2019).  The decision caused consternation among some practitioners regarding the value of relying on USPTO guidance.

Director Iancu’s comments regarding Cleveland Clinic

This past Thursday, at the ABA’s annual IP conference, Iancu addressed those concerns.  First, he pointed out that Cleveland Clinic did not even mention the 2019 revised guidance.  Instead, Cleveland Clinic discussed Example 29 from guidance that was published by the PTO on May 4, 2016, which is almost two years before Iancu became the director.  Second, Iancu noted that Cleveland Clinic just stated that to the extent that Example 29 contradicts a court decision, the court decision controls.  In other words, Cleveland Clinic pointed out facts that were clear before the 2019 revised guidance was even released: 1) courts are not bound by guidance released by the USPTO and 2) incorrect guidance released by the USPTO would not override previous court decisions.  Cleveland Clinic did not in any way directly undermine the 2019 revised guidance.

Moreover, Iancu indicated a change in approach by the USPTO: instead of reacting to each new Federal Circuit decision that deals with § 101, the USPTO is now taking a look at the § 101 issue holistically.  And, Iancu argued that the Federal Circuit should address the § 101 problem through en banc decisions by the full Federal Circuit.  In totality, this suggests that a single Federal Circuit decision by a panel of three judges is unlikely to significantly change the USPTO’s approach set out by the 2019 revised guidance.

Practical tips for drafting & prosecution

As it stands now, USPTO examiners and PTAB judges are expected to apply the 2019 revised guidance for § 101 analysis.  In fact, ex parte appeal decisions that deal with § 101 are currently being reviewed at the PTAB to make sure that the 2019 revised guidance is being applied by PTAB judges.  Therefore, in order to ensure efficient prosecution and positive appeal results, practitioners should primarily rely on the 2019 revised guidance to overcome § 101 rejections.

However, when drafting new patent applications, practitioners should plan for the possibility of the Federal Circuit, the Supreme Court, or even possibly Congress taking a narrower view of patent eligibility.  Therefore, to the extent possible, patent applications should be drafted with all of the relevant court decisions in mind.  The goal should be for an eventual patent to be able to withstand – or even better yet avoid – the most stringent § 101 scrutiny during litigation.

https://soundcloud.com/clause-8/episode-10-makan-delrahim

Makan Delrahim – Clause 8 – Episode 10

DOJ’s Antitrust Chief, Makan Delrahim, shares insight and tips for companies on FTC divide and more in Latest Clause 8 Podcast from Eli Mazour.

The podcast was originally published by Corporate Counsel here.

Following this podcast, Law360 published an article explaining the debate between DoJ and USPTO regarding the DoJ’s correction on the Standard Essential Patent (SEP) policy. For more information, read the article here (subscription required).

https://soundcloud.com/clause-8/episode-8-aaron-cooper

Aaron Cooper – Clause 8 – Episode 8

Check out the new Clause 8 interview about the passage of the American Invents Act (AIA) and how to effectively influence IP policy. Eli Mazour talks to Aaron Cooper, who served as Chief IP Counsel on the Senate Judiciary Committee and is now head of global policy at BSA | The Software Alliance.

Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.

https://soundcloud.com/clause-8/episode-6-representative-henry

Henry Waxman – Clause 8 – Episode 6

In the latest episode of Clause 8, Eli Mazour talks to legendary Congressman Henry Waxman about the passage of the Hatch-Waxman Act, current proposals to deal with the impact of new PTAB proceedings on pharma patents, effectively influencing IP policy in DC, and many other subjects.

Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.

Eli Mazour Harrity Team

Dissecting Dissents for Ex Parte Appeals

By Eli Mazour and So Ra Ko

Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB.  A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge.

The PTAB decides thousands of ex parte appeals per year.  Each appeal is assigned to a panel of three Administrative Patent Judges (APJs).  While one judge is designated to write the initial opinion, all three judges are supposed to take an active role in adjudication before the final decision is issued.

READ MORE>

https://soundcloud.com/clause-8/episode-5-gaston-kroub

Gaston Kroub Interview – Clause 8 – Episode 5

Eli Mazour recently interviewed Above the Law IP Columnist and Markman Advisor founder Gaston Kroub. Learn about the advantage of IP litigation boutiques handling your matters, advising financial firms about ongoing patent litigation, succeeding in the legal profession, and so much more! You do not want to miss this insider interview!

Find the full Clause 8 podcast interview available here https://www.clause8.tv/ or via your favorite podcast app.

https://soundcloud.com/clause-8/episode-4-david-kappos

David Kappos Interview – Clause 8 – Episode 4

Eli Mazour recently interviewed former USPTO Director David Kappos. Learn about his time at IBM and the USPTO, what in-house IP counsel should keep in mind, the importance of 5G technology, and so much more! You do not want to miss this insider interview!

Find the full Clause 8 podcast interview here https://www.clause8.tv/ or via your favorite podcast app. 

Clause 8 The Voice of IP

Eli Mazour Launches Clause 8 – An Online Video Interview Series Starting With Paul Michel

April 26, 2017 – Eli Mazour launched a new online video series, Clause 8, that will feature video interviews with prominent members of the IP community. IPWatchdog.com published an article highlighting the details of the first interview. 

His first interview is with former Chief Federal Circuit Judge Michel. During the interview, Judge Michel talks about his personal story and shares his thoughts about America’s patent system, patent eligibility, and the PTAB. He also provides great advice to those in, or thinking about being in, the IP field.

Please check it out and sign up to be notified about future interviews! www.clause8.tv

Eli Mazour Harrity Team

Eli Mazour Hosts Webinar on Patent Eligibility

On April 19, Eli Mazour presented during a webinar titled “Patent Eligibility: Navigating the Supreme Court’s 2016 Decisions and Its Impacts,” hosted by The Knowledge Group.  Eli’s presentation focused on practical patent preparation and prosecution strategies for dealing with trends related to patent eligibility and the The Patent Trial and Appeal Board (PTAB) for business, software, and high-tech related inventions.
Eli is an active member of the IP community, frequently publishing articles and participating in panels discussing preparation and prosecution.

For over 10 years, The Knowledge Group has produced thousands of best in class educational webcasts for a variety of industries and professions including legal, tax, accounting, finance, human resources, risk/compliance, and many others.

Click HERE to purchase a recording.

Alice in Wonderland falling surrounded by playing cards

Alice on Dulany Street: How the PTAB Handles 101 in Ex Parte Appeals

By Eli Mazour & James Bennin

“The outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection.”

Previously, we analyzed ex parte appeal decisions by the Patent Trial and Appeal Board (PTAB) from the year following the Alice v. CLS Bank decision. At the time, we concluded that the PTAB is unlikely to reverse § 101 rejections based on Alice. We decided to revisit this conclusion based on ex parte appeal decisions from December 2016.

READ MORE >