Each year for the past several years the IPO has recognized one distinguished IP professional. According to the IPO Award is given to an individual who has demonstrated extraordinary leadership in the IP community and a lifetime commitment to invention and innovation. This year, the recipient of this lifetime achievement award is Judge Linn. I have gotten to know Judge Linn a bit over the past several years, and have admired his decisions for years. In my opinion it is hard to image anyone more qualified or deserving of this recognition than he is.
Judge Linn has seen the industry from a variety of vantage points through his distinguished career, and in so many different ways he is one of us. He started his career at the United States Patent and Trademark Office like so many others have – as a patent examiner. When I spoke with him on Monday, October 27, 2014, regarding the IPO recognizing him with the Distinguished Professional Award, he told me: “first and foremost I consider myself a patent attorney.” This is no doubt what distinguishes him and why so many other patent attorneys have nothing but praise for him.
Cooley LLP recently announced that two top Intellectual Property lawyers have joined the firm, coming over from Chadbourne & Parke. The two IP attorneys stolen away by Cooley are Walter Hanchuk and John Kheit, both who join Cooley as partners in the firm’s New York office. Cooley’s IP group now includes more than 110 lawyers and 50 other professionals and represents many of the world’s leading technology and life sciences companies. Kheit is a long time personal friend of mine.
At Chadbourne & Parke, Hanchuk was chair of the firm’s IP practice and Kheit led the firm’s Mobile Technology practice group. Hanchuk joins Cooley’s national IP group as chair of the firm’s New York IP practice and will be driving the strategic growth of the firm’s IP practice in New York.
“Walter and John have developed one of the premier IP transactional, litigation, and patent asset creation practices in New York,” said Joe Conroy, Cooley’s New York-based CEO. “Their extensive experience in all phases of IP, including a particular expertise in financial services and software technologies, extends the reach of Cooley’s IP practice in New York and creates powerful synergies across our core IP and business technology practices across the firm.”
Stradling Yocca Carlson & Rauth, P.C. (“Stradling”) announced today that Stephen Kong has joined the firm as a Shareholder, where he will be based out of the firm’s Santa Monica office. Mr. Kong will continue to focus his practice on technology transactions and intellectual property licensing.
“Stephen has terrific experience in the digital, entertainment and consumer products spaces, where he was most recently Senior Corporate Counsel for Sony PlayStation,” says David Lafitte, Shareholder and Director at Stradling. “The firm continues to expand its presence in the digital entertainment and media space and Stephen makes a terrific addition to our growing team in Santa Monica.”
Mr. Kong’s specific practice emphasizes patent and trademark licensing and transactions, general technology transactions, content licensing and streaming, IP support for corporate M&A and financing deals, and open source counseling. Mr. Kong has represented clients in various industries including consumer electronics, e-commerce, semiconductor, aerospace, retail and food and beverage.
WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today its proposal to update the USPTO Code of Professional Responsibility to conform to the Model Rules of Professional Conduct of the American Bar Association (ABA), versions of which have been adopted by 49 states and the District of Columbia. The USPTO is seeking public comments on the proposal for a period of 60 days, ending December 17, 2012.
This proposed rule package adopts most ABA provisions wholesale or with minor revisions and codifies many professional responsibility obligations that already apply to the practice of law. Specifically, the proposed rules will streamline practitioners’ professional responsibility obligations, bringing USPTO obligations in line with most practitioners’ state bar requirements. The package also proposes to eliminate the annual practitioner maintenance fee.
Thompson Hine LLP, a business law firm with offices Atlanta, Cincinnati, Cleveland, Columbus, Dayton, New York and Washington, D.C., recently announced Clifton McCann, who practices in the area of intellectual property dispute resolution, has joined the firm.
McCann, who is now a partner in the firm’s Intellectual Property group, joins Thompson Hine in the firm’s Washington, D.C. office, coming over to the firm from Venable LLP. The addition of McCann comes several months after several other recent additions of what the firm refers to as “top tier laterals.”
McCann, a patent attorney with more than 30 years of experience, focuses his practice on the development and defense of patent rights in the chemical, biological, mechanical and software/business method arts. His technical background is in chemistry, biotech and physics, and he is admitted to practice before the United States Patent & Trademark Office, in the District of Columbia and in the Commonwealth of Virginia.
McCann’s practice involves a full range of intellectual property services with an emphasis on litigation, which makes up about two-thirds of his practice.
HAPPY INTERNATIONAL BE KIND TO LAWYERS DAY! (Previously known as National Be Kind To Lawyer’s Day!!) Have you not heard of it? Have you not read my article on this Special Celebration from years past? If your answer to these questions is NO, then you, my friend, are missing out (especially if you are a lawyer)!
So, what is this International Be Kind To Lawyers Day? I am so glad you asked! Steve Hughes, a non-lawyer from St. Louis, has been working with attorneys for many years now through his consulting firm Hit Your Stride, LLC. Whenever Steve merely mentions that he works with lawyers, he is more often than not met with snide comments, jokes and scowls. He hears things like, “Lawyers? I bet that’s a treat.” Or, “Lawyers? You poor thing.” So he asked himself, “Is it too much to ask to be nice to lawyers for just one day?” And in answer to his question, not to mention as a result of his playing defense counsel for an entire profession, the idea for National Be Kind To Lawyers Day was born.
Lately I have received a lot of requests from independent inventors who have drafted their own patent application and want me to review it prior to them filing it with the United States Patent and Trademark Office. The reason for having an attorney review a patent application drafted by an inventor are obvious — they want to make sure that they did everything properly.
The requests I have received lately go something like this: “I have drafted a patent application that is 30+ pages of text, plus claims and 10+ drawings. I would like to have you review the application before I submit it to make sure I haven’t made any mistakes. I also hope this review doesn’t take you more than 1 hour to complete.”One hour to complete? I don’t even believe it is possible to carefully and critically read and absorb an application of that length in 1 hour or less. This is an unrealistic request and one that is sure to turn off an experienced patent attorney who might otherwise be willing to help.
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.
Every so often I hear something about how it is unfair or unjust that patent attorneys charge so much money for the services they provide. When I hear that I always chuckle. It seems that universally people believe that whatever a patent attorney charges goes straight into his or her pocket. If only that were true! On Wednesday I published an article titled Patent Strategy: Discovering Crucial Patent Examiner Data. As the comments to the article progressed on topic for the most part, things started to get a little off topic just a bit, which is what is prompting this article.
In Patent Strategy I explained that a reasonable quote for an office action response is $2,000. Certainly it can be more depending upon the technology, but if you were going to poll patent practitioners from patent attorneys to patent agents I suspect you would come out with something close to a $2,000 average. This prompted one patent examiner to comment: “You said in this article that practitioners make $2,000 per response on average. How much do examiners make per response? Probably a fourth or a third of that. I mean I try to do the best job I can but do you really expect all examiners who get paid a fourth or a third of what you make to perform at the level that you do?”
It is that time of the year when we frantically look for appropriate and interesting holiday gifts to give to friends, family and clients. Christmas comes each year predictably on December 25th, but Hanukkah moves around and this year will start at sundown on December 20th, so time is running short, particularly if you are like me and you are going to be purchasing many (if not most or even all) of your gifts online. Amazon.com has a great deal on shipping too — it’s called Amazon Prime and the annual fee is $79. Amazon Prime gives you free two-day shipping or $3.99 per item on one-day shipping for all eligible purchases. Not every purchase is “eligible,” but those things sold directly from Amazon seem always to be “eligible.” So you won’t spend an arm and a leg in shipping fees even if you wait to the last minute!
With the economy still unsettled, extravagant gifts aren’t likely in many budgets. That means creativity will reign supreme. With a little extra thought you can give a really cool gift to that special someone, whether they are a patent attorney, inventor, law student or computer geek. With that in mind, below are some suggestions in order to help you find some fun, thoughtful and appropriately cool gifts for the geek in your life. The best part is the price means that one or more of these items should fit almost any budget.
The United States Patent Office is now offering the patent bar examination in electronic format, and that means that the way you study for the exam needs to change. In the past test takers were permitted to bring in with them any materials they wanted except for old exam questions. The ability to bring practically anything into the examination lead to people tabbing the Manual of Patent Examining Procedures, creating detailed and easy to use outlines, and bringing easy to follow flow charts and tables. Gone are these days, but when you do take the examination you will be provided with an electronic copy of the Manual of Patent Examining Procedures, so at least a part of your study needs to be centered around familiarizing yourself with search techniques and strategies that have a chance of success come exam day.
I have been teaching the PLI Patent Bar Review Course since March 2000, so I know a thing or two about how to help students pass the exam. Recently I published 5 Tips for Passing the Patent Bar Exam. What follows is a sequel to that article; more specifically an additional 5 tips for passing. If you are inclined to implement these tips and strategies be sure to integrate them into your practice and not for the first time on exam day.