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

 

 

Analyzing Technology Trends from the 2024 Patent 300® List

Harrity Analytics is proud to announce the release of the 2024 Patent 300® List, an exclusive ranking of the top 300 companies, organizations, and universities obtaining US utility patents. This year’s list offers a comprehensive view of the intellectual property landscape and highlights the innovative strides made by leading technology firms.

The Top 15 Innovators of 2023 have showcased their commitment to innovation, collectively accounting for 16% of the 312,563 total utility patents issued. Despite a 3% drop from the previous year, these organizations have continued to push the boundaries of technology and innovation. Take a look at the top technology areas obtaining patents over the last 12 months.

Electronics and Semiconductors: The Front Runners
Samsung leads the pack with a staggering 9,036 patents, doubling the amount secured by the second-place LG. This indicates a strong focus on advancing consumer electronics, mobile communication technologies, and the underlying semiconductor technology. The emphasis on semiconductors is further highlighted by the presence of TSMC and Qualcomm in the top ranks, underlining the critical importance of these components in a multitude of devices.

Cloud, Software, and AI: The Digital Backbone
IBM, ranking third, along with Alphabet and Apple, emphasize the growing significance of cloud computing, artificial intelligence, and software innovation. These patents reflect not only their prowess in hardware but also their forward-thinking in the realms of software and services.

Optics, Imaging, and Automotive: Enhancing Vision and Mobility
Canon’s strong showing indicates a continued excellence in optics and imaging, a field that’s increasingly intersecting with automotive technologies, as seen with the presence of companies like Alphabet and Huawei. Such innovations are crucial for advancements in autonomous vehicles and connected mobility solutions.

Aerospace and Defense: Protecting and Exploring New Frontiers
Raytheon Technologies, known for its expertise in aerospace and defense, has maintained its position, signaling ongoing advancements in technologies critical for national security and exploration.

The Global Technology Landscape
The geographical diversity among the top 15 innovators, with companies from the United States, South Korea, Taiwan, and Japan, underscores the global nature of technological advancement and the interplay of different markets in driving innovation.

The 2024 Patent 300® List by Harrity Analytics not only celebrates the achievements of these innovators but also provides insights into the technology trends shaping our future. We invite industry professionals, analysts, and technology enthusiasts to delve deeper into our findings to understand the direction of innovation and its implications for the global market.

For a detailed exploration of the Patent 300® List and to gain more insights into these trends, visit our interactive Patent 300® Dashboard here.

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.

 

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.

 

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.

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.

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.

Leveraging the Patent 300® Dashboard for Competitive Intelligence

The Patent 300® Dashboard, created by Harrity Patent Analytics, is a powerful patent analytics tool that provides valuable insights into competitive intelligence. It offers a comprehensive view of patent portfolios, prosecution metrics, and technology areas, enabling companies and law firms to make informed decisions and strategic adjustments.

One of the key features of the Patent 300® Dashboard is its ability to provide a high-level view of a company’s patent portfolio. For example, by examining IBM’s portfolio, we can see the overall rank, the percentage of patents obtained, the overall pendency, and the total number of patents. The dashboard also provides a breakdown of the Cooperative Patent Classification (CPC) subclasses, giving a clear picture of the technology areas where the company is patenting.

The dashboard also allows for competitive analysis. By selecting a specific technology area, such as transmission of digital information, we can see who the company is competing against from a patent perspective. This feature allows companies to benchmark their statistics against those of the technology field, providing insights into their performance from a patent prosecution perspective.

Another powerful feature of the Patent 300® Dashboard is the ability to analyze law firm performance. Companies can benchmark the performance of law firms working for them, identifying areas of practice where some firms’ stats are higher than others. This can help companies decide who should handle the next case and understand how law firms are practicing.

The Patent 300® Dashboard also provides insights into costs. By customizing costs based on what a company pays for various patent prosecution activities, the dashboard can calculate the actual prosecution history of patents and determine where the costs are. This can help companies benchmark the relative costs of their firms and decide where to allocate their budget more effectively.

The dashboard also offers a portfolio gap analysis feature. This allows companies to compare their patent portfolios side by side from a CPC perspective. This feature can be used for licensing purposes, pre-litigation analysis, and mergers and acquisitions analysis.

The Patent 300® Dashboard additionally provides examiner and art unit statistics, giving a high-level view of examiner and art unit statistics in all prosecution areas. This can be particularly useful for law firms wanting to understand how they are performing in specific technology areas.

Another useful feature of the dashboard is that it provides insights into maintenance fees. Companies can see where the costs are in their patent portfolio and compare their maintenance fee strategies with competitors. This can help companies adjust their maintenance fee strategies and manage their patent portfolio more effectively.

Overall, the Patent 300® Dashboard is a powerful tool for gaining competitive intelligence. It provides a wealth of information that can help companies and law firms make informed decisions and strategic adjustments. Whether you’re looking to understand your patent portfolio, benchmark your performance against the field, analyze law firm performance, manage costs, or gain insights into maintenance fees, the Patent 300® Dashboard has you covered. Check it out now at https://harrityllp.com/patent300!

See a detailed tutorial on using the Patent 300® Dashboard for Competitive Intelligence in the video below:


Sandra Maxey Featured on World of Marketing Podcast

Harrity’s Firm Controller, Sandra Maxey, was featured on Foster Web Marketing’s World of Marketing Podcast! Along with host, Tom Foster, Sandy discusses her snowbird lifestyle, her proudest moments, meditation, and why she regrets jumping out of an airplane!

You can listen to the full interview here!

An infographic image depicting the top 15 companies that obtained patents in 2022

Infographic of the Top 15 Companies Obtaining Patents in 2022

Each year, Harrity Analytics releases the annual Patent 300® List, a ranking of the top 300 companies, organizations, and universities obtaining US utility patents.  Patents reflect a company’s investment in innovation and their commitment to protecting their intellectual property.

This ranking is based on a count of the total number of US utility patent obtained in 2022.

The Top 15 Companies represent 15% of the 323,018 total utility patents issued in 2022.  The total patents issued in 2022 dropped 1% from the prior year.

Click HERE for a larger version of the infographic.

 

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.

Clause 8 Season 3, Episode 6: Ray Millien, a Renaissance Man of IP

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 3, featuring all new exclusive interviews with the intellectual property community’s biggest names.

LISTEN TO EPISODE 6 HERE!

 


 

Raymond Millien likes to compare himself to Forrest Gump. 

As someone who pivoted from a programming job at GE Aerospace to a career in intellectual property law, bounced between inside and outside counsel roles within that space, and even briefly dabbled in public policy, he’s definitely a renaissance man. And he’s fallen into many of those jobs by accident.

He credits his adventurous and successful career — working as Chief IP Counsel for big-name companies like Volvo, founding his own IP boutique, and now serving as the CEO of Harness IP — to intellectual curiosity and openness. 

Appreciating every aspect of the game, Millien says, means you’ll play smarter.

“I never want to take one camp or the other because your client may be a patent troll today, it may be an operating company tomorrow. And all of them are necessary in the ecosystem,” he says.

On this episode of Clause 8, Millien sits down with us to tell all about what it means to have a “renaissance” career in IP law and what it takes to be an inside IP lawyer for major corporations. He even reveals some industry secrets about startup patents along the way.

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. New episodes will drop every Tuesday!

 

Clause 8 Season 3, Episode 5: Professor Tim Hsieh Explains the Benefits of Judge Shopping

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 3, featuring all new exclusive interviews with the intellectual property community’s biggest names.

LISTEN TO EPISODE 5 HERE!

 


Clause 8 - Professor Tim Hsieh

The 2017 TC Heartland LLC v. Kraft Foods Supreme Court decision led to a major shift in where patent litigation cases are filed in the United States. Before TC Heartland, a patent owner could bring a case in almost any district where an alleged infringer conducted business. Because of its predictable rules and streamlined procedures, the Eastern District of Texas became the most popular forum for such cases; nearly 40% of patent infringement actions were filed there in 2016.

When Professor Timothy Hsieh clerked in the Eastern District of Texas, he saw firsthand the benefits – for patent owners and defendants – of experienced judges handling patent cases. TC Heartland changed that by changing the rules regarding where companies can be sued for patent infringement. By 2017, only 15% of patent infringement cases were tried in the Eastern District of Texas. Instead, patent cases became concentrated in Delaware and California.

“If you’re not solving that forum shopping issue and you’re just changing the forum, then you might have a new problem that’s created […] wherever you shift the cases to,” Hsieh says.

But Hsieh’s key point is that forum shopping — or even judge shopping — is not a problem at all. In fact, it’s a good thing. “If anything, the defense are also getting a much fairer, much more balanced adjudication because you have someone who’s very knowledgeable about patent law,” Hsieh says.

Senator Patrick Leahy (D-VT) seemed to recognize these benefits of district court judges who have relevant patent expertise and experience when he included the Patent Pilot Program in the Leahy-Smith American Invents Act. The program allowed federal district court judges in select districts to volunteer to handle patent cases. The goal was for certain judges to have increased expertise – and as a result – do a better job.

However, after the program expired and Judge Alan Albright started attracting patent cases to his Waco court room in the Western District of Texas, Leahy had a change of heart. In an unprecedented letter to Supreme Court Chief Justice John Roberts, Leahy pressured Roberts to do what he could to stop Waco from being a go-to patent venue by suggesting there was something untoward about Albright’s interest in patent cases. The pressure campaign seems to have worked. In his end-of-year report, Roberts highlighted the issue and stressed “the role of district judges as generalists.”

Since Hsieh has become known as an expert on the subject of patent venues, I knew he was the perfect person to talk to about this recent controversy.

I also spoke with Professor Hsieh about whether how courts think about venue is outdated and his fascinating career trajectory of patent litigator turned patent examiner turned law school professor.

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. New episodes will drop every Tuesday!

 

Clause 8 Season 3, Episode 4: Phil Warrick on Working with Senator Coons to Fix the Section 101 Mess

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 3, featuring all new exclusive interviews with the intellectual property community’s biggest names.

LISTEN TO EPISODE 3 HERE!

 


Clause 8 - Warrick

Before Phil Warrick began working for Senator Chris Coons (D-Del.), Capitol Hill wasn’t in his career plans.

But when an opportunity to work with Coons emerged, he decided to take the leap. For two years, he served as the U.S. Patent and Trademark Office’s (USPTO’s) IP counsel detailee to Coons after Coons helped to restart the Senate’s IP Subcommittee, working on bipartisan initiatives like the IDEA Act and legislation to fix the Section 101 patent eligibility mess. Those efforts were a dramatic departure from Congress’s previous fixation on the “patent troll” narrative.

“And for me, as a detailee, it was just a great opportunity to learn more about all these issues that were at play with intellectual property, and having really interesting conversations with folks on and off the hill, who said, I understand why this is your perspective, why you might have this view as a patent litigator, but let me give you this view from a completely different perspective,” Warrick says. “And it really opened my eyes.”

After Coons friend and fellow Delawarean, Joe Biden, was elected as president, the innovation community was hopeful that Coons would use his top role on the Subcommittee to prioritize patent issues within the Biden administration and Congress.

However, Democratic Senator Patrick Leahy (D-VT) had other ideas, and took over as the top Democrat on the Subcommittee.  Since that time, the Subcommittee has moved in a very different, arguably anti-patent direction, and Leahy’s views have won out in seemingly every major administration decision related to patents.

But in yet another twist, Leahy has announced that he is retiring and won’t seek re-election in 2022.  So, Coons is likely to return to his role as the top Democrat on the IP Subcommittee. Warrick’s insights from working for Coons are critical for anyone who wants to impact patent policy in the future.

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. New episodes will drop every Tuesday!

 

Clause 8 Season 3, Episode 3: Louis Carbonneau on Brokering Patents After the Patent Gold Rush

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 3, featuring all new exclusive interviews with the intellectual property community’s biggest names.

LISTEN TO EPISODE 3 HERE!

 


 

 

The golden age for patent brokers has come and gone, but that doesn’t stop Louis Carbonneau.

“There are very, very few patent brokers nowadays,” Carbonneau says. “We’re just one of a handful left. And frankly, we get about four or five portfolios every single day that people want us to broker. We only say yes 1% or 2% of the time.”

As one of the world’s leading patent brokers, the CEO and Founder of Tangible IP has brokered over 4,500 patents and boasts close to 30 years in the intellectual property industry.

With experience as Microsoft’s former General Manager of International IP & Licensing, Carbonneau has sat on many sides of the intellectual property table. He shares his adventures in the industry and lessons learned with Eli Mazour, host of the Clause 8 podcast, including behind-the-scenes stories from his time at Microsoft, the common pitfalls of patent licensing, and why price isn’t always an essential part of the conversation when buying and selling intellectual property.

“Some people will not even want to acquire patents for free if they don’t like the patents because then they have to start paying for maintenance fees and prosecution fees. It’s like a free puppy. It’s only free for a few hours, and after that, you start paying,” Carbonneau explains.

Those that are interested in selling their patents need to understand what brokers — and buyers — are looking for in a deal.

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. New episodes will drop every Tuesday!

 

Clause 8 Season 3, Episode 2: Ryan Abbott on Why Patent Law Should Recognize AI Inventors

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 3, featuring all new exclusive interviews with the intellectual property community’s biggest names.

LISTEN TO EPISODE 2 HERE!

 


 

 

 

Good lawyers effectively deal with the present. Very few have what it takes to create the future. Professor Ryan Abbott is doing just that.

He leads the DABUS project: the first time ever an AI machine has been named as an inventor on a patent application. Most thought that the project was an interesting academic exercise that was unlikely to go anywhere. Some – uncharitably – dismissed it as “a publicity stunt.”

Yet, the DABUS project did get a patent in South Africa. And, an Australian judge ruled that AI machine can be recognized as an inventor. Even more significantly, the DABUS project successfully raised awareness about the issue of AI inventorship among policy makers all over the world.

But what does it mean for an AI system to be named as an inventor in the real world?

In this episode, Abbott makes his case for the skeptics: Identifying AI as the inventor on patents is morally and commercially important. He also explains how to judge whether the human pushing the buttons is as much an inventor as the AI they’re programming.

On this episode, Eli and Prof. Abbott talk about the Artificial Inventor Project, whether everything will be “obvious” in the future, and Prof. Abbott’s fascinating new book “The Reasonable Robot: Artificial Intelligence and the Law.”

 

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. New episodes will drop every Tuesday!

 

Harrity Referenced in Bloomberg Article: Diversity Woes in Patent Field Lead Lawyers to Try New Ideas

Diversity Woes in Patent Field Lead Lawyers to Try New Ideas

Harrity & Harrity, LLP’s research and innovative diversity initiatives are featured in a recent Bloomberg article on diversity in the patent field.

The article references research found in Elaine Spector and LaTia Brand‘s “Diversity in Patent Law: A Data Analysis of Diversity in the Patent Practice by Technology Background and Region” piece for ABA’s Landslide Magazine, including the following excerpt:

More ‘Michaels’ Than Racially Diverse Women

Fewer than 22% of patent attorneys and agents registered with the Patent and Trademark Office are women, a 2020 study led by the Virginia patent law firm Harrity & Harrity LLP found. Patent agents aren’t attorneys but can work on inventors’ patent applications.

The average number of PTO registrants who are racial minorities has been around 6.5% over the past two decades, according to the study.

“Among racially diverse women, the numbers are significantly worse,” the authors wrote in a September 2020 article for Landslide, a magazine published by the ABA’s Section of Intellectual Property Law.

“In fact, there are more patent attorneys and agents named ‘Michael’ in the United States than there are racially diverse women,” the authors wrote.

Managing Partner Paul Harrity is also quoted in the Bloomberg article, specifically with regard to Harrity’s upcoming Patent Pathways program.

“The Harrity & Harrity law firm has plans for a ‘Patent Pathways’ program this summer. It’s a free, 42-week virtual course, with the aim to register 20 underrepresented minorities with the patent bar in the first year.

The program will target engineering and science students, or individuals in those fields looking to change careers. Paul Harrity, a founding partner at the firm, said they’re looking to connect with candidates with presentations at universities and through groups like the National Society of Black Engineers.

Harrity said he stumbled into the patent field after seeing a job advertisement for a patent examiner position at the PTO. It’s not an uncommon experience.

‘A lot of people have the same story—somebody just mentioned it to them,’ Harrity said. ‘We want to be the people to mention it.'”

You can find the full article by Bloomberg Law HERE.

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.

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.

Business Methods Patents Are Alive & Well!

By Rocky Berndsen, Head of Harrity Patent Analytics

Business Method patents are alive and well! Here is a list of the top 25 companies that obtained patents in 2021 in the business method art units at the USPTO.

Surprisingly, this is one of the few areas where we see year over year growth in patenting. This increase in patenting may be due to the sea change that we’ve seen in how the USPTO has handled the prosecution of business method patents.

There is some interesting variation in the patent prosecution metrics for companies obtaining patents in this space. This list is a who’s who of high-technology and fin-tech companies.

I’m surprised to see that significant percentage of patents in this space that are con/div.

What do you think? Find me on Linkedin and let me know your thoughts!

Want to see more interesting patent analytics? Check out our newest Patent 300® list here!

 

About Harrity Patent Analytics

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

 

Comparing Auto Manufacturer’s Patent Data to Sales, Revenues, and R&D

By Rocky Berndsen, Head of Harrity Patent Analytics

 

One of my favorite ways to look at patent data is by comparing the data to sales, revenues, and R&D. Here are the top Auto Manufacturers that obtained patents in the US. I’ve included data from our patent database, and from www.goodcarbadcar.com.

This stat is interesting – Cars Sold to Patents. There could be a couple of insights drawn from this stat.

Here are some of my thoughts:
1. How much does a company value patenting – a higher ratio may indicate that the company places less value on patenting.
2. How much are patents playing in driving sales – a lower ratio may indicate that patents play a bigger role in driving sales
3. Which companies are innovating the most in the space relative to market size – using cars sold to normalize the quantity of patents provides a more direct benchmark.

Connect with me on Linkedin and let me know your thoughts on this statistic and what other kinds of stats you’d find interesting.

You can find more patent data on the top companies by viewing our Patent 300® List HERE.

 

About Harrity Patent Analytics

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

 

Harrity Analytics Announces Top Patent Firms of 2021

HARRITY PATENT ANALYTICS ANNOUNCES THE TOP PATENT FIRMS OF 2021

WASHINGTON (January 20, 2022) –  Harrity Patent Analytics is excited to announce the Top Patent Firms of 2021. The list, published annually, ranks industry-leading patent law firms based on the total number of U.S. utility patents issued in the past year.

The 2021 Top Patent Firms list incorporates multiple categories of prosecution statistics, including 7 new categories, such as rank in US First Filings and rank in Foreign Priority Filings.

Fish & Richardson surpasses Oblon for the first time in list history, taking the #1 spot in both overall and US first filings. Other notable changes on the list include Kilpatrick Townsend dropping from the #7 spot to #11, and Foley & Lardner moving up from #8 to #5.  Some newcomers to the list in 2021 include Kacvinsky Daisak Bluni at #109, and Fig. 1 Patents at #282.

The Top 10 firms of 2021 in overall utility patents are:

  1. Fish & Richardson P.C. (5025)
  2. Oblon McClelland Maier & Neustadt LLP (4620)
  3. Sughrue Mion PLC (4398)
  4. Cantor Colburn LLP (3652)
  5. Foley & Lardner LLP (3416)
  6. Oliff PLC (3297)
  7. Birch Stewart Kolach & Birch LLP (3250)
  8. Knobbe Martens Olson & Bear LLP (3014)
  9. Shwegman Lundberg & Woessner P.A. (2995)
  10. Harness Dickey & Pierce PLC (2963)

 

“The differences on this year’s Top Patent Firm rankings align with what we saw on the Patent 300®, with big companies filing less patents than in previous years, and therefore the law firms doing their work obtaining less patents – likely due to budgetary restraints imposed by the ongoing pandemic. The list demonstrates which patent firms are still big players, while providing insight for both clients and firms to make strategic decisions moving forward,” states Rocky Berndsen, Head of Harrity Patent Analytics.

The Top Patent Firms list is accompanied by an interactive dashboard and includes patent firms that have obtained at least 50 U.S. utility patents where the patent firms are listed on the front of the utility patents. Company legal departments have not been eliminated from the list.  The full list is available here.

About Harrity Patent Analytics

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

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Harrity Analytics Releases 2022 Design Patent 100 List

HARRITY PATENT ANALYTICS RELEASES THE 2022 DESIGN PATENT 100 LIST

List ranks top 100 companies, organizations, and universities in the design patent field

WASHINGTON (January 11, 2022) – Harrity Patent Analytics has released the 2022 publication of its annual Design Patent 100 List.  The list ranks the top 100 companies, organizations and universities in the patent field based on the total number of U.S. design patents issued in the past year.  The top 10 innovators from the 2022 Design Patent 100 List include:

  1. Samsung (615)
  2. Nike (541)
  3. Apple (438)
  4. LG (220)
  5. Ford (210)
  6. Alphabet (209)
  7. MASCO Corporation (194)
  8. Tata Sons (159)
  9. Porsche (152)
  10. P&G (141)

Samsung Electronics surpassed Nike to take the #1 spot, with a 4% increase from last year. Nike dropped to the #2 position with a 22% decrease from last year.  Overall, this year’s Top 10 saw an average 1% decrease from the previous year.  Other notable changes include MASCO Corporation’s debut to the Top 10, ranking 7th with a 59% increase, and Spigen Inc, dropping off the Top 10 to #12, with a 46% decrease. Bissell Homecare had the largest increase in design patents since 2020, at 1500%.

“The Design Patent 100 List identifies the global innovation leaders obtaining design patents in the United States,” said Rocky Berndsen, Head of Analytics for Harrity & Harrity. “The data contained in the Patent 300® Dashboard, such as the Design Patent 100 List, provides invaluable information to companies, in-house counsel, marketing teams, and law firms alike because it identifies the key players in design innovation and summarizes what is happening today in the patent world.”

For detailed analytics on the Design Patent 100, visit Harrity’s Patent 300® Dashboard, the intellectual property industry’s premier resource for patent insights and competitive intelligence on the world’s leaders in technology and design innovation.  The Dashboard contains analytics on more than 6,000,000 patents, including patent portfolio analyses, detailed patent prosecution insights, technology area breakdowns, and portfolio cost and budget analytics.

About Harrity Patent Analytics

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

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A Look at Patent 300® Companies’ Office Actions Per Patent

HARRITY PATENT ANALYTICS: A LOOK AT PATENT 300® COMPANIES’ OFFICE ACTIONS PER PATENT

By Rocky Berndsen, Head of Harrity Analytics

One of the stats I find most interesting in the patent field is the office action per patent statistic. There can be so many reasons why this statistic could vary so greatly from company to company. Here are a few of my ideas on the factors that go into it.

1. Filing strategy / Claim breadth – some filers will fight tooth and nail for every claim, whereas, other filers are just trying to get to allowance as quickly as possible.

2. Technology area – some technology areas may be more difficult to get patents in for a number of reasons (e.g., quality prior art, large numbers of filings, patentability issues).

3. Prosecution quality – the quality of prosecution quality varies from firm to firm, and even from attorney to attorney.

4. Foreign priority – apps with foreign priority tend to have fewer office actions per patent and typically will have fewer claims.

5. Budget/Cost consideration – prosecution strategy may be impacted by budget and therefore applications that reach higher numbers of office actions or RCEs may be abandoned.

6. Continuation strategy – continuation filings will tend to have fewer office actions than original priority filings.

Below, you can see the Patent 300® Companies with the highest and lowest office actions per patent.

I’d love to hear if you have any additional thoughts on the factors that go into these OA statistics.

The official 2022 ranking of the top 300 companies, organizations and universities can be found here. You can find more information regarding prosecution statistics in the interactive Patent 300® Dashboard here.

 

About Harrity Patent Analytics

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

 

Law 360: IBM, Samsung Keep Top Spots On Annual Patent 300® List

Law360 publishes report based on Harrity Analytic’s annual Patent 300® List.

Law360 (January 6, 2022, 7:42 PM EST) — IBM Corp. maintained its long-running status as the top patent owner in 2021 while Samsung clocked in close behind, but patent grants to companies that notched a spot on the list highlighting the top 300 patent owners released Thursday were largely down…

Rocky Berndsen, head of patent analytics at Harrity & Harrity, told Law360 in an interview that the drops in patent grants in 2021 can be partly attributed to budget considerations spurred by the pandemic.

“Anecdotally, what we can see from this year’s list is that some companies have been more strategic with what patent applications they continued to prosecute in light of those budget considerations,” Berndsen said. “Maybe last year, or the year before, they would’ve filed or prosecuted more applications. But they decided to drop some, and so we’re seeing the results of that in this year’s list.”

But there were some companies that landed on the list for the first time, including JPMorgan Chase & Co. at 275. Berndsen said that reflects growth happening in the fintech world.

“There’s a lot of technology development in fintech, and we’re seeing a lot of that with a company like JPMorgan Chase making the list for the first time this year,” he said.

Read the full Law360 report by Britain Eakin here.

 

About Harrity Patent Analytics

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

 

Harrity Analytics Releases 2022 Patent 300® List

HARRITY PATENT ANALYTICS RELEASES THE 2022 PATENT 300® LIST

Top 300 innovators in the patent field ranked by patents obtained

WASHINGTON (January 6, 2022) – Harrity Patent Analytics is excited to announce the release the 2022 Patent 300® List.  The annual list ranks the top 300 companies, organizations and universities in the patent field based on the total number of U.S. utility patents issued in the past twelve months.  The top 20 players from the newly published Patent 300® List include:

  1. IBM (8540)
  2. Samsung Electronics (8517)
  3. LG Corporation (4388)
  4. Canon (3400)
  5. Huawei (2955)
  6. Intel (2835)
  7. TSMC (2807)
  8. Toyota (2753)
  9. Raytheon Technologies (2694)
  10. Sony (2624)
  11. Apple (2591)
  12. Microsoft (2453)
  13. Qualcomm (2165)
  14. BOE Technology (2141)
  15. Amazon (2110)
  16. Dell Technologies (2053)
  17. Alphabet (2015)
  18. Micron (1798)
  19. Panasonic (1715)
  20. Ford (1675)

 

IBM maintains the top spot in the list despite a significant drop in total patents with their spin-off of Kyndryl.  Notably, TSMC, Qualcomm, and Micron moved up the list, whereas Microsoft and Raytheon Technologies moved lower.  The biggest overall change in the list is the fact that total patents obtained by the Patent 300® was 22,358 fewer in 2021 than in 2020.  The list accounts for 54 percent of the more than 340,000 U.S. patents issued in 2021.

“The Patent 300® list, year after year, provides a barometer for the most innovative companies in the world”, says Rocky Berndsen, Head of Patent Analytics at Harrity & Harrity.  “You can really see who is innovating in dozens of different industries and also see who the up-and-coming technology companies are”.

Harrity Patent Analytics additionally offers the Patent 300® Dashboard for more detailed analytics on the Patent 300® List.  The dashboard is the intellectual property industry’s premier resource for patent insights and competitive intelligence on the world’s leaders in technology, containing analytics on more than 6,000,000 patents, including patent portfolio analyses, detailed patent prosecution insights, technology area breakdowns, and portfolio cost and budget analytics.

The Patent 300® Dashboard provides in-house counsel, law firm partners, marketing teams, and c-suite executives with a detailed analysis of the world’s technology leaders, ranging from technology giants such as IBM (ranked #1) and Samsung (ranked #2), to leading universities such as MIT (ranked #108) and Johns Hopkins University (ranked #276), to newcomers including Kyndryl (ranked #117) and Snowflake (ranked #276).

The official 2022 ranking of the top 300 companies, organizations and universities can be found here.

 

About Harrity Patent Analytics

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

 

Harrity & Harrity, LLP Announces Minority Firm Incubator 2.0

Harrity & Harrity, LLP Announces Minority Firm Incubator 2.0
Diversity Initiative Will Train & Launch Exceptional Minority-Owned Patent Firms 

WASHINGTON, DC (October 18, 2021) Harrity & Harrity, LLP, a leading patent preparation and prosecution law firm, is excited to announce the launch of the Minority Firm Incubator (MFI) 2.0 – a spin-off of a program developed to help women and minorities establish their own patent law firms in an effort to address the disparity of minority-owned firms in the patent field.  The MFI 2.0 is an integral part of Harrity’s ongoing diversity initiative to recruit, retain, and advance attorneys who will contribute to the diversity of the patent field. The goal of this initiative is to improve and nurture diversity within firm ownership by helping existing minority-owned firms become remarkable in their practice.

“Our firm’s Diversity Mission is focused on fostering inclusion within the legal community and encouraging the growth and success of individuals from all backgrounds. The Minority Firm Incubator 2.0 is a service-oriented program intended to further this mission by helping underrepresented groups flourish in a field where diversity is lacking,” said John Harrity, Co-Chair of Harrity’s Diversity Committee, who is spearheading the program.

In early 2020, Harrity introduced James Bennin as the inaugural participant of the innovative Minority Firm Incubator 1.0, a four-part program consisting of patent drafting, patent prosecution, client development, and business operations training. James excelled and successfully launched his own minority-owned patent firm, Onyx IP Group, in June of 2021. He has already welcomed several new clients, including a Fortune 50 company, and continues to provide impeccable service and high-quality work using many of the skills he gained as a result of his participation in the Minority Firm Incubator 1.0.

While the Minority Firm Incubator 1.0 was successful, Harrity realized that it would be possible to have an even greater impact by working with many attorneys and firms rather than focusing on a single attorney and newly created firm. The MFI 2.0 will be a 100% virtual, 42-week program intended to help existing women and minority-owned patent law firms grow their business, increase efficiency and quality, and improve their overall operations. The expectation is that 6-8 firms will be selected to participate. One of the most exciting features of the MFI 2.0 is the opportunity for the participants to have face-to-face interactions with in-house attorneys at leading technology companies that have committed to the possibility of engaging with at least one of firms at the completion of the program.

The MFI 2.0 will provide extensive training that includes a variety of scheduled lessons, assignments, mentoring, and strategy classes, and will commence with the participants pitching their firms to a panel of in-house intellectual property counsel at leading technology companies.  MFI 2.0 program partners will have the opportunity to serve as guest speakers and mentors, providing a range of perspectives and insights to help guide the firms in their journeys.

Participants will learn how to implement processes to ensure their firm is consistently producing a high quality, uniform work product; how to provide an outstanding customer experience for clients; how to hire and train high-performing attorneys and support staff; how to maintain their diverse ownership and encourage innovation that promotes diversity; how to implement a culture of belonging and innovation; how to create a distinguished firm brand; and how to pitch prospective clients. Using feedback from an initial pitch to the panel and knowledge gained throughout the program, the participating firms will present a new, refined client pitch to the same panel at the conclusion of the program and may be selected to receive work from one or more of the companies based on the reception of their final pitches.

“We believe the immersive agenda of the MFI 2.0 will revolutionize the manner in which participating firms operate their business and showcase their brand, ultimately helping to create and nurture an exceptional business and land prominent clients, starting with our program partners,” says Harrity.

The firm is currently accepting applications from minority firms who wish to partake in the program, which is set to begin on January 11, 2022.  To learn more about the MFI 2.0, participate as a minority-owned firm, or volunteer as a partner, visit https://harrityllp.com/diversity/mfi2-0/.

 

About Harrity & Harrity, LLP:

Harrity & Harrity, headquartered in Fairfax, Va., is a leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas. The firm has obtained more than 8,600 patents since its founding in 1999. Our clients trust in our high-quality work, experienced people, industry-leading innovation, and outstanding service. Harrity actively promotes diversity and inclusion at the firm and throughout the legal industry, with an additional focus on giving back to the community through Harrity 4 Charity. Visit us online at harrityllp.com.

 

Diversity is Just Good Business

(October 25, 2021) James Bennin, the inaugural participant of Harrity’s Minority Firm Incubator Program and Managing Partner of the Black-owned Onyx IP Group, explains why diversity is good business in a recent opinion piece for IPWatchdog.com.

“When you exclude alternative points of view, you are not getting the full picture of all the available options and the best possible solution to resolve an issue or matter. Additionally, clients and leadership do not just come from one particular group, they come from diverse groups and circumstances. By having legal counsel that is also diverse, you are better able to relate to a client. Diversity makes the firm and the general practice of law that much more resilient, relatable, and successful.

The article can be read in full on IPWatchdog.com

About Onyx IP Group

With combined experience (private practice and in-house) in the electrical, software and mechanical technology areas, the Onyx IP Group provides legal counseling for patent drafting, patent prosecution, trademark, and transactional matters. Visit us online at https://onyxipgroup.com

See more on Harrity’s diversity initiatives: https://harrityllp.com/diversity

Check out our Driving Diversity vlog:  https://harrityllp.com/thediversitychannel

About Harrity & Harrity, LLP:

Harrity & Harrity, headquartered in Fairfax, Va., is a leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas. The firm has obtained more than 8,000 patents since its founding in 1999. Our clients trust in our high-quality work, experienced people, industry-leading innovation, and outstanding service. Harrity actively promotes diversity and inclusion at the firm and throughout the legal industry, with an additional focus on giving back to the community through Harrity 4 Charity. Visit us online at https://harrityllp.com

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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.

 

 

Black-Owned IP Law Firm Emerges in Orlando via Minority Firm Incubator

(July 27, 2021) Dan Roe interviews James Bennin on the launch of the Onyx IP Group for Law.com.

James Bennin’s Onyx IP Group is the first minority-owned firm produced by the Minority Firm Incubator, which Harrity & Harrity launched in 2019 with the aim of increasing diversity in the legal profession.

“There’s a need to increase the amount of diversity in the legal field, especially in the patent field,” said Bennin, who is the first college graduate in his immediate family. “Looking at my career, I guess I’ve been fortunate to have the career I’ve had. I felt it was incumbent on me to give back.”

The article, by Dan Roe, can be read in full on Law.com.

About Onyx IP Group

With combined experience (private practice and in-house) in the electrical, software and mechanical technology areas, the Onyx IP Group provides legal counseling for patent drafting, patent prosecution, trademark, and transactional matters. Visit us online at https://onyxipgroup.com

See more on Harrity’s diversity initiatives: https://harrityllp.com/diversity

Check out our Driving Diversity vlog:  https://harrityllp.com/thediversitychannel

About Harrity & Harrity, LLP:

Harrity & Harrity, headquartered in Fairfax, Va., is a leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas. The firm has obtained more than 8,000 patents since its founding in 1999. Our clients trust in our high-quality work, experienced people, industry-leading innovation, and outstanding service. Harrity actively promotes diversity and inclusion at the firm and throughout the legal industry, with an additional focus on giving back to the community through Harrity 4 Charity. Visit us online at https://harrityllp.com

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“Best Practices for Patent Quality” Webinar Features Patent Expert Elaine Spector

Best Practices for Patent Quality
Webinar Hosted by Patent Bots and Harrity & Harrity, LLP
Join leading patent attorneys from Harrity & Harrity (Elaine Spector), McDermott Will & Emory (Bernie Codd), Holland & Hart (Michael Drapkin), and Patent Bots (Jeff O’Neill) as they explore best practices in the processes, tools, and metrics underlying higher patent quality.
Questions covered in this webinar include:
  1. What are you doing at your firm to ensure that your clients are getting a high-quality work product?
  2. What is the metric that you use to gauge quality?
  3. Are you tracking anything relating to quality on an individual attorney basis?
  4. What tools do you use in relation to quality?
  5. Are your quality processes today the same as they were 5 years ago and if not, how have they changed?
  6. When do you use tools like PatentBots, Patent Draftr, ClaimMaster, and Patent Optimizer?
  7. How are you using examiner analytics in patent prosecution to improve quality?
  8. Whose work is reviewed and who is reviewing it?
  9. Are all clients work reviewed and if not why not?
Watch Now!

To see more tips for achieving patent quality, visit our Practical Patents page.

 

Tech Transfer IP | Prosecuting Patent Applications with Elaine Spector

Prosecuting Patent Applications with Elaine Spector
Lisa L. Mueller
Lisa L. Mueller | June 23 2021

Click here to listen to audio

Welcome to another episode of Tech Transfer IP. Today I am pleased to speak with Elaine Spector. Elaine is a patent attorney with Harrity & Harrity with over twenty year’s experience in intellectual property law. Elaine’s current practice consists primarily of prosecuting patent applications with a focus on electromechanical technologies.

Before joining Harrity & Harrity, Elaine worked in private practice for over fifteen years handling various intellectual property matters, including patent application drafting and prosecution, trademark prosecution and enforcement and litigating complex patent cases in federal courts. Her extensive litigation experience provides her with a unique perspective in prosecuting patent applications.

Listen as Elaine shares some key differences between working in a University Tech Transfer office and working in a law firm. She also talks about the Rooney Rule and how Hannity has improved it by making it Rooney Rule 2.0, and how the Rooney Rule is different from the Mansfield Rule.

Elaine discusses her company’s rigorous hiring process to remove bias, the factors that contribute to the problem of having a small amount of diverse individuals in the legal profession, and the programs her office has launched to help bring more women into her firm, like the Annual Women’s Patent Law Workshop and the Minority Firm Incubator Program to name a few.

Elaine shares some suggestions for small firms that might struggle to develop diversity and inclusion procedures, standards, and programs. She says that reaching out is one action step patent professionals can take to improve diversity for the Patent Bar.

In This Episode:

  • [02:26] Welcome to the show, Elaine!
  • [02:48] Elaine shares her career journey from a University Tech Transfer office to a law firm.
  • [06:16] She worked at John Hopkins Technology Transfer, which later changed its name to Tech Ventures.
  • [06:46] What are some of the key differences between working in a University Tech Transfer office and working in a law firm?
  • [09:18] Elaine discusses the Rooney Rule 2.0 and how Harrity takes the rule even further.
  • [10:28] How is the Rooney Rule different from the Mansfield Rule?
  • [12:39] Elaine doesn’t believe that the “Heavy Stick” approach suggested by some corporations will be effective in helping meet diversity requirements.
  • [15:01] Elaine speaks about her company’s rigorous hiring process and how it removes the likelihood of bias.
  • [17:20] Can you tell us about the factors contributing to the problem of not enough diverse individuals in the legal profession?
  • [20:01] Elaine discusses Harrity’s office’s Annual Women’s Patent Law Workshop.
  • [21:46] Elaine discusses another program Harrity has recently developed which is training women and helping them pass the writing part of their application process.
  • [22:31] Elaine shares some other programs her firm has that focus on diversity and inclusion.
  • [24:28] Elaine speaks about the Minority Firm Incubator Program they are launching.
  • [27:39] Harrity has launched a diversity channel this year with a weekly vlog.
  • [28:58] How does your diversity committee handle these programs?
  • [31:01] Elaine shares some suggestions for small firms that might struggle to develop diversity and inclusion procedures, standards, and programs.
  • [33:04] Elaine believes the changes proposed by USPTO will help with gender diversity, and she shares some other degrees that should be included.
  • [35:05] What is the one action step patent professionals can take today to improve diversity for the Patent Bar?

To learn more about Harrity’s diversity efforts, visit harrityllp.com/diversity. For more diversity resources, including all Driving Diversity episodes, check out The Diversity Channel.

 

Harrity & Harrity Launches Black-Owned Firm Through Minority Incubator Program

Harrity & Harrity Launches Black-Owned Firm Through Minority Incubator Program

Florida-Based Onyx IP Group is the first Minority Owned Firm Specializing in IP Law to Come Out of Diversity-Focused Program

Fairfax, Va. — June 21, 2021 For Immediate Release:  Harrity 4 Charity (H4C), the giving-back initiative of Harrity & Harrity, LLP, one of the country’s preeminent patent law firms, is thrilled to announce the launch of the Onyx IP Group (OIPG), the first minority-owned firm to come out of the Harrity Minority Firm Incubator (MFI), a program initiated in 2019 to address the fact that the practice of law remains one of the least diverse professions in the U.S.

Based in Orlando, Florida, OIPG is a 100% Black-owned, Intellectual Property (IP) law firm launched by the MFI’s first graduate, James Bennin. Bennin has approximately 15 years of experience in the IP field, with an extensive background in counseling clients on various IP matters in the U.S. and other jurisdictions. Prior to joining Harrity’s MFI program, Bennin was an associate general counsel handling transactional matters (including IP matters) for the University of Central Florida, one of the largest universities in the country and formerly served as IP counsel at Caterpillar, a large multi-national company, where he counseled multiple business units on matters related to IP.

Raised by a single mother in a low-income household, Bennin was the first college graduate in his immediate family. With African-Americans making up just 1.94% of all equity partners in the U.S., Bennin’s launch of OIPG is making strides for a severely underrepresented group in the field of law.

“I understand the obstacles someone with my background needs to overcome to be successful in this profession and the importance of improving diversity in the legal field,” Bennin said.  “I want to use this program/platform as a means to give back and to help provide a blueprint or guide to success for members of underrepresented groups, so they can see that success in any professional field, more particularly in the legal field, is a realistic possibility in their future.“

Serving as Of Counsel for OIPG are Keri Sicard, who has more than 20 years of experience in the field of IP law and is experienced in a wide variety of technologies from the simple to the highly complex; and Michael Antone, who has over 20 years of experience in large law firm, corporate, and venture capital environments in the area of IP and business operations counseling.

Added Bennin, “I am tremendously excited about the opportunity to launch the Onyx IP Group and am well prepared to provide exceptional work to clients while also furthering my goal of making a positive impact – particularly for those, like myself, in minority groups.”

 

The Stats …  According to the 2019 Vault/MCCA Law Firm Diversity Survey on overall law firm demographics, 82% of all lawyers and 89% of all partners are Caucasian. Just 2% of all partners are African-American, under 3% are Hispanic and under 4% are Asian. None of the statistics regarding specific minority percentages have changed over the past decade, despite the fact that those populations in the U.S. have increased during the same timeframe.

About the Minority Firm Incubator … Harrity—which has launched a variety of service-driven initiatives under its H4C philanthropic arm—is hoping to help be the change for diversity in the legal field with the MFI program, which supports the recruitment, retention and advancement of attorneys who will contribute to the diversity of the legal field by launching minority-owned patent firms. A year-long, multi-phase program, Harrity’s MFI program works to train minority attorneys in patent law and help them overcome the barriers to launching their own patent law firms. The program encourages minorities to become leaders in the field for both quality and diversity and sets them up for success.

Commented Elaine Spector, a partner at Harrity, who co-chairs the firm’s diversity committee. “Having a diverse workforce leads to a more integrated practice. Women and diverse inventors want to consult capable attorneys who look like them and who understand them and the context of the goals they are working to achieve.”

Adds partner John Harrity, who co-chairs the diversity committee with Spector, “Diversity generates quality legal innovation. The benefits of differential skillsets, outlooks, approaches and ways of processing make a team stronger, bringing varied and valuable insights to cultures, systems and policies, which is what is required to be change leaders.”

More H4C News on ‘Driving Diversty’ … Visit us online to learn more about Harrity’s multi-faceted diversity initiatives, which, in addition to MFI, also include The Diversity Channel, The Harrity Academy and Harrity for Parity: A Women’s Patent Workshop. Visit the firm’s weekly vlog, Driving Diversity, which addresses such issues as hiring practices; how intersectionality relates to underrepresented groups falling into more than one community; implementing the Rooney Rule 2.0; how a firm’s culture affects diversity; flexibility; patents pathways for women of color; mentoring/tutoring programs; and more.

Harrity’s diversity initiatives: https://harrityllp.com/diversity

Driving Diversity vlog:  https://harrityllp.com/thediversitychannel

 

About Onyx IP Group:  

With combined experience (private practice and in-house) in the electrical, software and mechanical technology areas, the Onyx IP Group provides legal counseling for patent drafting, patent prosecution, trademark, and transactional matters. Visit us online at https://onyxipgroup.com

 

About Harrity & Harrity, LLP:

Harrity & Harrity, headquartered in Fairfax, Va., is a leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas. The firm has obtained more than 8,000 patents since its founding in 1999. Our clients trust in our high-quality work, experienced people, industry-leading innovation, and outstanding service. Harrity actively promotes diversity and inclusion at the firm and throughout the legal industry, with an additional focus on giving back to the community through Harrity 4 Charity. Visit us online at https://harrityllp.com

 

Join the Conversation …

Like Us:  https://www.facebook.com/harrityllp

Follow Us:  https://twitter.com/harrityllp

Linked In:  https://www.linkedin.com/company/harrityllp

 

Elaine Spector Presents at 2021 TIGER Innovation Conference: Advancing Equity in Innovation

Harrity’s Elaine Spector, joined by Ayana Marshall, presented on diversity-related issues in the field of IP for Emory Law’s 2021 TIGER Innovation Conference: Advancing Equity in Innovation. The conference explored issues concerning gender and racial gaps in the innovation system such as access to resources for entrepreneurs who are women and people of color and the underrepresentation of diverse inventors in the patent system and included several expert speakers in this area.

Elaine’s presentation focused on Diversity in Patent Law: A Data Analysis of Diversity in the Patent Practice by Technology Background and Region, a topic on which Elaine & data analyst LaTia Brand co-authored an article of the same title. Elaine also discussed several of Harrity’s Diversity Initiatives aimed at addressing the lack of diversity in our field by increasing the pool of diverse candidates and providing resources for those individuals to succeed.

You can watch the full presentation here:
Part 1

Part 2


To learn more about Harrity’s diversity efforts, visit harrityllp.com/diversity. For more diversity resources, check out The Diversity Channel.

 

Harrity to Donate to Charity & Gift Oculus Quests to Winners of This Challenge

Harrity & Harrity, LLP is launching a new challenge to test participants’ ability to draft an overview description and a claim for an electronic invention. Winners of the challenge will receive a free Oculus Quest Virtual Reality Headset!

The Harrity Writing Sample Test is used in our application process to screen candidates based on their patent application writing ability.  All identifying information is removed prior to grading the test in order to remove any unconscious bias and ensure that the test is evaluated solely on the quality of the candidate’s submission.  For this challenge, the Writing Sample Test will be graded based on four areas of criteria: Writing, Technical Proficiency, Instructions, and Claim.  Contestants must earn a minimum passing score of 90 points (out of 100) to win an Oculus.  The test takes, on average, 2 hours to complete. While Harrity receives hundreds of applications every year, less than 10% of applicants pass the Writing Sample Test.

While only the top performers will win an Oculus, Harrity is adding another reason to participate. The firm will donate $100 to its Harrity 4 Charity partner charities for every individual that takes the test. Participants can choose how to divide up the donation between the American Heart Association, ZERO: The End of Prostate Cancer, Inova Children’s Hospital, and No More Stolen Childhoods.

If you would like to partake in the challenge, the deadline to submit your Writing Sample Test is Monday, March 1st, 2021. Winners will be notified by email and announced to our Social Media Pages on Wednesday, March 3rd, 2021Feedback will be provided to all contestants via email whether or not they win the challenge, with the goal of helping each participant improve their writing skills.

There is a limit of one prize per person. You must be a registered patent agent or attorney with the USPTO to enter. 

Visit harrityllp.com/wst to take the challenge today!

 

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.

 

 

Harrity Obtains 8,000 Patents

Harrity is excited to announce that we have obtained our 8,000th patent! Our team of superstars is dedicated to providing our clients with the highest quality patents in the field, and we’re proud to have achieved this milestone. Congratulations to each member of our team for their hard work to make this happen!

Learn more about Harrity’s patent services here.

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.

 

Harrity’s Rocky Berndsen Recognized in IAM Strategy 300: The World’s Leading IP Strategists Annual Listing

Harrity’s Rocky Berndsen has been recognized in the IAM Strategy 300: The World’s Leading IP Strategists, an annual listing of individuals who lead the way in the development and implementation of world-class programs that maximize the value of intellectual property portfolios.

According to IAM Media, the strategists identified in this guide do not see issues from just one perspective; instead, they see value creation in the round. It is this 360-degree perspective, combined with a demonstrable ability to deliver, which makes them stand out from the crowd.

Rocky’s innovation and leadership in the area of patent analytics and IP business strategy development contributed to his nomination on this global listing of the IP elite. Congratulations, Rocky!

About the IAM Strategy 300 Nominations

(Source: IAM Media)

These world-class IP strategists are primarily identified through confidential nominations made online. However, the extensive research process also involves face-to-face and telephone interviews, as well as email exchanges, with senior members of the global IP community.

No individual can qualify for a listing in the IAM Strategy 300 unless he or she is nominated by at least three people from outside of his or her own organization. But even this does not guarantee inclusion; instead, only those individuals who further research shows to have exceptional skill sets, as well as profound insights into the development, creation and management of IP value, are featured in the IAM Strategy 300.

For this latest edition of the guide, IAM started the research process from scratch; so even those who had previously been listed had to meet the same selection criteria as those who are new to the guide this year. Once a person received the minimum three recommendations from outside his or her own organization, IAM undertook their own independent research to assess these claims.

Most nominees did not make it through the vetting process; those who did are listed in the following pages. The selection procedure is always strictly applied because our overarching aim is to ensure that only those individuals who possess exceptional skill sets – as well as profound insights into the development, creation and management of IP value – are featured in the IAM Strategy 300.

“We cannot promise that every IP strategist who deserves to be described as world class has made it into this publication. But we are certain that everyone who is listed deserves to be.”

About Harrity & Harrity, LLP

Harrity & Harrity is a leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas, and is considered a Go-To Firm for the Patent 300™.  Their clients trust in their high-quality work, experienced people, industry leading innovation, and outstanding service.

 

Harrity Ranks as a World Leading Patent Professional on IAM Patent 1000 List

Harrity & Harrity, LLP has been named a “Highly Recommended” firm in the field patent prosecution, according to the newly released 2020 edition of the IAM Patent 1000: The World’s Leading Patent Professionals.

The online publication of the IAM Patent 1000 stated the following in regard to Harrity’s accomplishments in the patent space:

“It is simply amazing what Harrity & Harrity has been able to achieve in the patent space by applying a carefully thought-out lean manufacturing style system to file vast numbers of patents while maintaining quality of the highest order. Clever use of automation and a uniform writing style play into its efficiency, while a rigorous second-attorney review system helps to set the quality bar high.”

The compact boutique has worked other magic, too: its dedicated patent analytics group, headed by Rocky Berndsen, has been delving into all sorts of statistics to bring a unique level of industry insight to clients.

None of this has gone unnoticed by competitors: “It is growing faster than any similarly sized peer and runs an impressive recruiting programme that precisely identifies people who will thrive in its system. The efficiency tools it has invested in are also excellent. Harrity & Harrity just gets prosecution and patents.”

From a client perspective, its “reasonable pricing and outstanding customer service” are major plus points, as is its nimbleness: “When an emergency project needs to be completed quickly and done right, it is the only firm to turn to.”

Another feather in the outfit’s cap is its admirable proactivity with respect to diversity in the IP profession. In 2019 it launched the Harrity Minority Firm Incubator, which trains attorneys from minority backgrounds in prep and pros and law firm management; at the end of the four-year programme, those schooled under it will establish their own patent boutiques. The genius architects of all this success are John HarrityPaul Harrity and Paul Gurzo.”

 

About the IAM Patent 1000
(source: IAM Media)

The IAM Patent 1000 is commonly regarded as the definitive ‘go-to’ resource for those seeking to identify world-class, private practice patent expertise and leading expert witnesses in the US. As with previous editions, to arrive at the 2020 rankings, IAM undertook an exhaustive qualitative research project to identify outstanding firms and individuals across multiple jurisdictions. When identifying the leading firms, factors such as depth of knowledge, market presence and the level of work on which they are typically instructed were all taken into account, as well as positive peer and client feedback.

Over five months, IAM conducted in the region of 1,800 interviews with numerous attorneys at law, patent attorneys and in-house counsel to gather market intelligence on the leading players in the field. Individuals qualify for a listing in the IAM Patent 1000 when they receive sufficient positive feedback from peers and clients with knowledge of their practice and the market within which they operate. In those markets in which practitioners have narrowed the focus of their work, we have presented tables highlighting the leaders in the respective areas of prosecution, transactions and litigation. Only those individuals identified by market sources for their exceptional skill sets and profound insights into patent matters feature in the IAM Patent 1000.

We have also identified the leading firms in the market – similarly listing them, where appropriate, in prosecution, transactions and litigation tables – as it is clear that the depth of expertise that a firm can offer beyond and in support of its star practitioners is an important factor in the decision to instruct. Firms qualify for a listing on the basis of their depth of expertise, market presence and the level of work on which they are typically engaged.

Our aim is to ensure that the IAM Patent 1000 is as accurate as possible. We seek to produce the definitive list of the world’s leading patent experts, on the basis of feedback received from those operating in the market. If you disagree with the opinions we have presented, we would like to hear from you. Our guarantee is that we will further research your input and so improve the list in the future.

All names and individual positions at firms are correct to the best of our knowledge as of 15 April 2020. In instances where a firm has merged or subsequently dissolved, or individuals have moved, these changes will be reflected in the next edition of the IAM Patent 1000.

 

About Harrity & Harrity, LLP

Harrity & Harrity is a leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas, and is considered a Go-To Firm for the Patent 300™.  Their clients trust in their high-quality work, experienced people, industry leading innovation, and outstanding service.

 

Harrity Ranked #2 in Patent Bots Quality Scores

Harrity & Harrity has been listed as a top-ranking firm in Patent Bots’ recently released Quality Scores report.

Overall, Harrity ranked #2 out of 802 firms reviewed for the Patent Bots Quality Scores report, with an average score of 98.93/100 across 528 issued patents, which was also one of the largest sample sizes recorded. Patent Bots Quality Scores are based on the average number of errors found in issued patents. Scores are calculated using automated patent proofreading to process issued patents and included all issued patents for the year ending March 31, 2020.

Harrity ranked #1 in the following technology centers:

  • Computer Architecture and Software (99.38)
  • Networking, Multiplexing, Cable, and Security (99.92)
  • Transportation, Construction, Electronic Commerce, Agriculture, National Security and License and Review (99.41)

Harrity additionally ranked 2nd in Communications (99.91) and 9th in Semiconductors/Memory, Circuits/Measuring and Testing, Optics/Photocopying, Printing/Measuring and Testing (96.28).

To view the full rankings, visit https://www.patentbots.com/firms/.

About Harrity & Harrity, LLP

Harrity & Harrity is a leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas, and is considered a Go-To Firm for the Patent 300™.  Their clients trust in their high-quality work, experienced people, industry leading innovation, and outstanding service.

 

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.

 

Harrity Demos Patent Automation Software at IP Summit

SALT LAKE CITY (February 2020) Shawn Lillemo, Harrity’s Software Product Manager and IP attorney, was featured as a panelist and presenter at the 2020 Utah IP Summit last Friday. Shawn led the discussion on the use of automation to improve speed and quality in patent application drafting. The presentation included a demo of one of the Harrity Tools, an in-house automation software developed by Shawn and his team and currently used by Harrity attorneys to reduce errors and time spent on applications.

“The right automation tools can provide application drafters with extra time that can be spent fleshing out additional details of the invention, exploring alternative embodiments, and telling a good story about how the invention solves a technical problem,” stated Shawn on the significance of automation in the patent & legal fields.

In the short time since its launch, the use of Harrity Tools has substantially improved the efficiency of Harrity’s drafting attorneys and has led to a notable increase in the amount of applications drafted and obtained by the firm. To learn more about application drafting automation and other Harrity Tools, visit https://harrityllp.com/services/patent-automation/.

 

$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.