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.