Recently we received a press release announcing that six prominent patent and litigation attorneys had left the international law firm of Dorsey & Whitney LLP to join the growing Intellectual Property team at Winthrop & Weinstine, P.A. The addition of these six attorneys brings the total number of IP lawyers at Winthrop & Weinstineup to 30.
This got us thinking that maybe this move is part of what seems to be a continuing trend in the intellectual property industry. With so many large firms vanishing and small to medium size firms flourishing. So I sat down to talk with Scott Dongoske, president, and Deb Cochran, marketing director, of Winthrop & Weinstine for a conversation.
RENEE QUINN: I know that Dorsey & Whitney is one of the largest law firms in the United States. They have about 600 attorneys internationally. And I understand that currently your firm has 100 attorneys, 30 of which are under patent law. So by adding 6 more, you are basically quadrupling the size of your patent department. Why were you interested in growing that service area within your firm?
As most of you are undoubtedly aware, the United States Patent and Trademark Office has been cranking out proposed rule packages one right after another. The speed at which these rules packages are coming out is impressive, but also makes it virtually impossible to keep pace while you continue to try and represent clients. The USPTO is obviously putting in a lot of time and effort, and by and large it seems that they are doing a good job. But as you start to review proposed rules package after proposed rules package you start to get the sense that the America Invents Act (AIA) is going to change even more than anyone expected.
One of the rules packages that is sure to capture the attention of patent attorneys and litigators alike is the recently released Rules of Practice for Trials Before the Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (hereinafter “Board rules”). What a mouthful! This particular rules package is some 35 pages in the Federal Register 3 column format. If you copy and past into Word with Arial 12 point font this rules package is 86 pages, just to give you some idea of the magnitude.
Much has been said about the fact that the USPTO has struggled for too many years yet fails to keep up with filings. In a message dated January 25, 2012, Professor Harold Wegner pointed out that, currently, 46% of “new” applications are not new at all but are actually RCE’s. USPTO “count reform,” intended to encourage greater efficiency in the examination process, had only reduced the rate of growth of RCE filings to 10.7 percent. At least one response to Prof. Wegner, shared in another posting on January 25, stated the view that doing away with RCE practice would serve only to generate a staggering number of appeals and shift the backlog to the Board of Appeals, make the application process inordinately costly, and discourage inventors from ever applying for a patent at all. As things stand, there is not much doubt about such a result.
Considering the amount of hand-wringing that has occurred over the matter, and the disappointing results thus far, it appears that, as things stand, there is little hope for the PTO to get is work done in any timely manner except by hiring a veritable army of examiners, legions of administrative patent judges, together with innumerable support staff. It is not difficult to foresee how a budget request for such an approach would be received in Congress.
Whenever a newly-minted lobbying group proposes to radically curb a government agency’s enforcement powers, it’s wise to ask, Who will benefit?
Such is the case with the newest lobby in Washington, the self-described “ITC Working Group.” You won’t learn anything about this organization by searching Google — odd, considering that Google is a member — but according to industry sources, its aim is twofold: First, it wants to block the International Trade Commission (ITC) from hearing patent infringement cases brought by “non-practicing entities” — i.e., patent holders like universities, independent inventors, and others who license their patents for manufacturers to commercialize. And second, it wants to weaken the ITC’s power to block the importation of infringing products into the U.S.
Art 4Last week I spoke at the 6th Annual Patent Law Institute hosted by the Practising Law Institute. The topic of my presentation was largely a “dealer’s choice” if you will, with the segment being billed as PLI Authors: Hot Topics in Patent Prosecution. I spoke at the New York City location and Jeffrey Sheldon, author of How to Write a Patent Application. With me being able to pick whatever prosecution topic I wanted, I decided to focus on Track 1 as a strategy to deal with Art Units where patents seem to go to die, which allowed me to discuss what I was finding from PatentCore relative to the Art Units that handle business method patents. See Business Methods by the Numbers and Appealed Patent Allowances.
After my presentation, as you might expect, I was approached by a number of patent attorneys. Story after story it was the same thing I have heard from so many others — depressing tales of not being able to get a patent. One particularly egregious thing I heard was from a patent attorney who told me about a conversation he recently had with a SPE from one of the business method art units. I don’t know which Art Unit, and frankly I didn’t ask, although it is probably easy enough to narrow down the Art Unit. This patent attorney told me that the SPE said: “we just don’t issue patents unless the Board orders us to.” If that is in fact what was said and is in fact what is happening then there is a systematic denial of due process at the United States Patent and Trademark Office, and that is wholly unacceptable.
Lately I have been getting a lot of inquiries again from inventors who are interested in contingency fee representation. There is no such thing as contingency representation for purpose of preparing, filing and ultimately obtaining a patent. Patent attorneys and agents just don’t take contingency clients when the matter is patent procurement.
I write on this topic with some frequency, the last time being the spring of 2011. Please don’t take offense, this is a “tough love” article that may come across as a lecture. I have always believed that the overwhelming majority of inventors want to hear it straight and are looking for a road-map to get from point A to point B. The thing I preach all the time, and the theme of this article, is understanding the industry. The more you understand about what you should do, when you should do it and the economic realities facing the various players you will come in contact with the better off you will be to safely and successfully navigate the difficult waters of going from invention to money.
AIPLA is proud to announce that Executive Director Q. Todd Dickinson will be inducted into the IP Hall of Fame for 2012.
The IP Hall of Fame was created in 2006 by Intellectual Asset Management magazine to identify and honor individuals who have helped to establish intellectual property as one of the key business assets of the 21st century.
“We are thrilled that Todd will receive this recognition,” said William G. Barber, AIPLA President. “Todd has been a great leader at AIPLA since he took over in 2008, and it is wonderful to see his long-time contributions to our industry recognized.”
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