Joseph Root Image

Joseph Root

Founder, QualiPat

Joseph Root has served as both IP and General Counsel, in-house and out, for corporations and law firms, in a career spanning three decades. In 2008 he founded QualiPat, a company performing IP services and training. There, he built, trained, and managed an IP team in India that performed patent drafting and analytics, including preparing and filing over 300 US patent applications. He is also the author of Rules of Patent Drafting: Guidelines from Federal Circuit Case Law.

Over the course of his career, Joe has assumed both management and hands-on responsibilities for the identification, protection, and enforcement of both patents and trademarks. His expertise was recently recognized by London-based Intellectual Asset Management magazine, which named him to the “IAM Strategy 250 – The World’s Leading IP Strategists.” Joe received his JD (magna cum laude) at Wake Forest University School of Law, and a BS in engineering from the United States Military Academy at West Point. Prior to law school, he worked as an engineer, production supervisor, and soldier, including a tour commanding an infantry company in Vietnam. He is now a country patent lawyer in the hills of North Carolina, with his wife Natalie and bearded collie Claymore.

Joe can be reached at jroot@qualipat.com.

Recent Articles by Joseph Root

Definiteness and Patent Drafting: The Nautilus Surfaces

Two seminal cases illustrate the techniques of analyzing definiteness in a post-Nautilus world. One case followed Nautilus and the other preceded it, but that case demonstrates what stands of the old rationale. The first decision, Ethicon Endo-Surgery, Inc. v. Covidien, Inc., dealt with ultrasonicshears for cutting and sealing a blood vessel… A clear difference between the new “reasonable clarity” standard and the Federal Circuit’s “insolubly ambiguous” formulation is that the latter calls for considerable effort in seeking out a claim construction that comports with the inventor’s manifest intent. The new standard may require the same effort, but that result does not appear guaranteed by the language itself. The entire direction of patent law toward Disclosure World suggests that definiteness will continue to be governed in large part by the meaning drawn from the patent as a whole, not the claim language standing alone.

The Disclosure Revolution – A Report from the Front, 2014

The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the invention,” decision after decision rewrites broad claim terms to conform to the scope of disclosure. A single embodiment once served as an example supporting enabled claims bounded only by the prior art; now, a single embodiment signals the inventor’s intend to limit the invention to the embodiment itself, rather than to claim terms… Overall, 2014 will likely be remembered primarily for Alice and its eventual progeny. In addition to its impact on the law per se, the economic effects may prove enormous. An entire segment of the patent community stands vulnerable to a slowdown, or shutdown, of patenting activity in the business methods and software fields. Other areas, including definiteness, will feel the effects of 2014, but in a far more incremental fashion.