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Celebrating 15 Years of

On October 10, 1999, first went live on the Internet. It has been an honor and privilege to get to know so many wonderful people in our industry over the last 15 years, to talk to many industry leaders on the record, and to in some small way continue to push the debate forward. Thanks to our readers and contributors we have been recognized as as one of the top 100 legal blogs by the American Bar Association for 5 years in a row. For 3 of the last 4 years (2010, 2012, 2013) we were recognized as the top intellectual property law blog according to the ABA. In January 2014 we were also honored to be inducted into the ABA Blawg Hall of Fame. CLICK HERE to read more.

Most Recent Articles on

AIPLA Expresses Deep Concern Over USPTO Funding in CR

Posted: Tuesday, Apr 12, 2011 @ 6:46 pm | Written by AIPLA | Comments Off

ARLINGTON, VA — In April 12, 2011 letters to House and Senate leaders, the American Intellectual Property Law Association (AIPLA) expressed deep concern about the serious shortfall in the current legislation to fund the U.S. Patent and Trademark Office.

H.R. 1473, the Full-Year Continuing Appropriations Act, 2011, is the legislation reflecting the compromise on the Continuing Resolution to fund the government for fiscal 2011. The letters point out that the provisions of the bill related to the USPTO appropriate $100 million less than the projected user fee revenues to be collected, essentially diverting that money to other government programs. In addition, the bill lacks the appropriations “buffer” language included in previous bills to ensure that the Office may utilize the fee revenue that exceeds the original projected collections for the fiscal year.

USPTO to Host Clean Technology Partnership Meeting

Posted: Tuesday, Apr 12, 2011 @ 2:38 pm | Written by U.S.P.T.O. | Comments Off

The United States Patent and Trademark Office (USPTO) will host its first Clean Technology Partnership Meeting on Wednesday, April 27th to bring clean technology stakeholders together to share ideas, experiences and insights and provide a forum for discussion on how the USPTO can improve and expand on its clean technology programs. The meeting will be held at USPTO Headquarters in Alexandria, Va., from 1:00-5:00 p.m.

“Green technology innovations can help us protect our environment and improve our planet, and every day that an important new clean tech innovation is held back from the market represents a lost opportunity to create 21st century jobs and businesses,” Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said. “The feedback clean tech stakeholders provide is essential in our efforts to continuously improve the quality of our programs and services.”

Non Sequitur: We Need to Go Back to the Clinton Tax Rates

Posted: Tuesday, Apr 12, 2011 @ 10:18 am | Written by Gene Quinn | 24 comments

By now many have undoubtedly heard something about the ongoing budget battles on Capitol Hill. As a government shutdown was averted at the 11th hour on Friday evening, just as I predicted, attention has already started to turn to the much larger economic battles that loom, namely the vote to raise the debt ceiling and the fiscal year 2012 budget. In fact, Congressman Paul Ryan (R-WI) released the House Republican’s budget proposal for fiscal year 2012 early last week. The plan dubbed The Path to Prosperity already has a multitude of supporters and a multitude of critics. As this has started to unfold we will undoubtedly hear some ridiculous, half-baked comments from those who think they know better. The one that probably bothers me the most is one we hear so frequently: All we need to do is go back to the Clinton tax rates. It is amazing to me that there are those who can say this with a straight face.

USPTO Updates Registration Exam for Patent Practitioners

Posted: Monday, Apr 11, 2011 @ 1:37 pm | Written by Gene Quinn | 6 comments

The United States Patent and Trademark Office (USPTO) will update its registration examination and provide new reference materials effective April 12, 2011. The changes will help ensure that newly registered patent attorneys and agents are fully qualified in the most current patent laws, rules and procedures.  This change marks the first change to the exam in approximately 5 years, and will bring the patent bar exam current with law, rules and regulations through the Winter of 2011. Those who are interested in taking the patent bar exam should consider this update a major revision, indeed such a major revision to the test that old patent bar exams circulating the Internet will be an insufficient means to study for the new exam.

An Interview with Sharon Barner, Former PTO Deputy Director

Posted: Sunday, Apr 10, 2011 @ 11:47 am | Written by John White | 1 Comment »

Sharon Barner

Sharon Barner served as the Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the United States Patent and Trademark Office for approximately 15 months, being appointed on October 2, 2009 and resigning effective January 14, 2011.

While at the USPTO Barner commuted back to Chicago on weekends to visit her family, choosing not to uproot her children from their schools. Since leaving the Patent and Trademark Office she has returned to Chicago and to Foley & Lardner. Barner was the keynote speaker at the 5th Annual Patent Law Institute sponsored by the Practising Law Instituted. I caught up with her in San Francisco at the Patent Law Institute on March 21, 2011. What follows is the transcript of my interview with her.

Learning from Apple Patent’s Newsreader for Mobile Devices

Posted: Friday, Apr 8, 2011 @ 6:10 pm | Written by Gene Quinn | 15 comments

Earlier this week, on April 5, 2011, Apple, Inc. was awarded U.S. Patent No. 7,921,187, titled “Newsreader for mobile device.”  The patent application was originally filed June 28, 2007, and as a result of delay by the Patent and Trademark Office Apple will be entitled to a patent term that is extended by 830 days.  While patent term extension seems to be a growing problem due to the backlog of applications, let’s not focus on the patent term, but rather look at the core of what is being protected and how this patent was obtained.  I’m not going to defend the patentability of this invention, but rather try use this as an illustration of how to read a patent and search for clues in the file history regarding how and why claims are awarded.  It should also adequately demonstrate how easy it can be to distinguish prior art references and overcome rejections if you know what you are doing or are represented by someone who does.

When reading a patent I never jump first to the claims, preferring to start to get an understanding of what the invention is and taking everything in before trying to tackle the claims.  This is typically helpful, I find, because the specification is the omnibus disclosure of the invention and works to support the language and terminology presented in the claims, which are nearly universally a subset of the overall invention disclosed in the specification.

USPTO to Remain Open Even if U.S. Government Shuts Down

Posted: Thursday, Apr 7, 2011 @ 8:16 pm | Written by Gene Quinn | 6 comments

Because of sufficient funding not linked to the current fiscal year, the United States Patent and Trademark Office will remain open for business and will continue to operate as usual through the close of business on Monday, April 18, 2011 even in the event of a government shutdown. The USPTO has enough reserves to operate for 6 business days even in the event of a government shutdown, and should a shutdown occur and continue longer than 6 days the USPTO anticipates that limited staff would still be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.  Thus, USPTO employees are not in any immediate risk of a furlough due to the ongoing fiscal year 2011 budget battle being waged between Speaker of the House John Boehner, Senate Majority Leader Harry Reid and President Barack Obama.

Lessons: 5 Odd Things Inventors Tell Patent Attorneys

Posted: Thursday, Apr 7, 2011 @ 8:39 am | Written by Gene Quinn | 6 comments

As you might be able to imagine, I get quite a bit of e-mail.  Much of the e-mail I get is from inventors and small businesses who are looking for representation, or from those who are seeking to ask some questions to help point them in the right direction.  Over the years the one thing that has probably amazed me most is that those who contact me for assistance or advice frequently ask the same questions and present with the same stories, although not the same inventions or technologies.  So I thought it might be worthwhile to write about the most common misconceptions in the inventor community.

First, I don’t want this article to come off as suggesting that I don’t get good business from the Internet.  At this point nearly all of the legal work I do comes as a result, in one shape or form, from my activities by and through  But in addition to writing about the inside baseball of the patent world I also write various informational articles and tutorials aimed at an audience with a variety of levels of understanding.  So some of those who present for assistance of one kind or another are best described as “newbies.”

Increasing Patent Allowance Rates by Selectively Targeting a More Technological Patent Class

Posted: Wednesday, Apr 6, 2011 @ 2:46 pm | Written by Nowotarski, Zank & Bowman | 8 comments

Class matters.  Technology class, that is.  In some of the more rapidly growing areas of our economy, like Social Networking and Mobile Phone Apps, it looks like you can almost double patent allowance rate by making sure your patent application is classified in the more technological patent office art units.  For entrepreneurs, a faster allowance rate and earlier acquisition of patents can directly translate into better fund raising, more secure commercialization and more profitable licensing.  For large corporations, it means substantially reduced patent costs.  And with some forethought you can probably influence which class your application is placed in while at the same time creating a more comprehensive patent application.

The Problem with Software Patents? Uninformed Critics!

Posted: Tuesday, Apr 5, 2011 @ 3:50 pm | Written by Gene Quinn | 42 comments

The problem with software patents isn’t that they are granted on obvious innovations, but rather that those who spend so much time complaining about them are just about completely clueless, at least with respect to patent law. It borders on the comical to observe some of the apoplectic rants against software patents, which almost universally conclusively prove that the person writing (or ranting) has not read past the title of the software patent in question. That is, of course, assuming they have even looked at the patent and are not merely mimicking what they have read from some other equally clueless and irresponsible critic.