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.”
Founded in 1897, AIPLA is a national bar association of over 14,000 members in private and corporate practice, in government service, and in the academic community involved directly or indirectly in the practice of patent, trademark, copyright, trade secret, and unfair competition law, as well as other fields of law affecting intellectual property. As AIPLA President, Mr. Lewis will be responsible for representing U.S. intellectual property interests throughout the world and guiding AIPLA’s domestic intellectual property policy.
“I am honored to have been elected President of an outstanding organization that plays a pivotal role in the global IP landscape,” Mr. Lewis said. “The coming year promises to be one of continuing change as the evolving global economy and ongoing advances in technology raise new challenges for the IP industry. I am excited to have the opportunity to work with AIPLA and its membership to address these issues and help to ensure that our intellectual property system remains strong and serves the best interests of its participants.”
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.
April was Autism Awareness Month. The Center for Disease Control (CDC) defines autism disorders as a group of developmental disabilities, which can cause social, communication and behavioral challenges. According to CDC estimates, 1 in 88 children are identified with an autism disorder.
The social, communication, and behavioral challenges associated with autism disorders often make it difficult for persons diagnosed with an autism disorder to find and maintain a job. Indeed, parents of children diagnosed with autism are often told that their child will not likely be able to sustain an independent life.
This, however, is not always the case. In 2008, the Fairfax Virginia based law firm of Muncy, Geissler, Olds & Lowe, PLLC (MG-IP) hired Kevin Gibson, a Fairfax resident who was diagnosed with autism at the age of 18 months. Like many others diagnosed with autism, Kevin was told he would never live independently. Kevin, now 26 years old, continues to work full-time at MG-IP managing the firm’s file room. Kevin organizes and manages thousands of patent files and is able to immediately locate any file in the office.
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 appears that “top 5” or “top 10” lists are quite popular here on IP Watchdog. Allow me this opportunity to jump in with a list of my own. Please enjoy, in no particular order, seven of the most common misconceptions about intellectual property. Yes-seven.
1. Intellectual property is boring. My super grown up intellectual property attorney response to that is “NU-UH!” But seriously. Boring? Really? How could the Yoda patent, the Playboy Bunny, zombie video games, and the Coca Cola recipe be boring? OK, the MPEP is a little dry, the TMEP isn’t exactly a page turner, and Title 17 reads like…well…a statute. And maybe there won’t be a “Law and Order: Patent Transactions” this season on NBC, but the subject of IP is actually pretty interesting and we have some really fun case law. Think about it- intellectual property rights surround some of the most important aspects of our daily lives- from Apple’s patents to Coca-Cola’s trade secret to McDonald’s trademark to Michael Jackson’s copyrights. I think the “boring” accusation stems from a tendency to focus on the underlying documentation that creates the right, as opposed to what the right is granted for. This is like looking at the legal description in the deed to a house and relying only on that to make a decision whether to buy or not. It’s the same with IP- the documentation may be highly technical, wordy, and confusing at times but look at what the document is for as opposed to what it says. To prove my point, take a look at this patent. Have a little listen to this trademark and try not beam from ear to ear. And behold one of the coolest copyrighted works of all time. (Sorry- you’ll have sit through an advertisement before the video starts. But you’ll be glad you did.) Fun, innit? If you want boring study Tax Law next time you’re waiting you’re in line at the DMV.
Louis Foreman, the producer of the Emmy Award winning PBS television show Everyday Edisons and the publisher of Inventors Digest, announced in April 2011 that he was launching of a $25 million Innovation Fund. Phase 1 of the search for inventions for the Fund to invest in was completed in mid-June 2011. Phase 2 of the search for inventions and ideas has just begun and will run through Monday, September 12th, 2011.
“The Fund is off to a great start and we have received some very innovative technologies as part of the first wave,” Foreman said. “I am amazed at the creativity and ingenuity. It just reinforces our original premise that everyone has a great idea, but most people don’t follow through. The Fund has become a catalyst to submit these ideas and see if they have commercial viability.” The proceeds of the Fund which will be invested by Edison Nation to bring innovations to market. Inventors who have their inventions or ideas selected will share in any profits with Edison Nation.
It is important for inventors to understand that there is reluctance among some patent attorneys to take on “independent inventors” as clients. Part of the problem is that some independent inventors take up an extraordinary amount of time and rarely convert into clients. Even if they do convert into clients many want to pay a low rate for certain agreed representation and are upset when more is not done by the attorney. I have even heard inventors openly complain that their patent attorney wants to charge them every time they call. It is important to remember, however, that the only thing an attorney has to sell is time; whether that be to perform legal services or give advice. Giving time away for free on a routine basis is a recipe for business disaster for an attorney.
With all this in mind, how does a serious inventor find the help they need and a reputable, experienced patent attorney? Inventors who want a reputable and experienced patent attorney will do themselves a great favor if they try and understand the business realities facing the patent attorney. There are only so many hours in a day to work, and spending a lot of with those who are not likely to turn into clients, or good clients, is not typically a winning business strategy. Therefore, you want to present from the outset as someone who is serious. Keeping this in mind will pay dividends as you seek out a patent attorney you are comfortable with, who you trust and is able to collaborate with you to form a good and prosperous working relationship.
Unfortunately for small businesses and start-up companies, some patent owners are becoming far more litigious. Once upon a time small businesses might be able to fly under the radar screen even if they were infringing because the cost associated with going after such folks was prohibitive. But welcome to the brave new world of the patent troll, where certain nefarious bad-acting patent owners seek to enforce dubious patent rights against those who are engaged in a business vaguely related, but who are almost certainly not infringing. These bad actors, who seek to extract licensing payments with threatening letters or lawsuits if necessary, know that because it can be expensive to fight most will simply fold and pay what amounts to extortion. See Extortion Patent Style.
Despite the gathering storm, some businesses would prefer to pretend that patent infringement is not a problem for them and they won’t be sued. The graph below shows that since 1980 the number of patent lawsuits filed has only gone up, with a record number (3,301) being filed in 2010. Add the frequency of the “dime a dozen” threatening letters sent by those seeking to extract licensing payments to the number of lawsuits filed and you can readily see that patent infringement litigation, and the associated threats thereof, are a growth industry.
Louis Foreman at Inventors HOF Induction May 4, 2011
Louis Foreman, the producer of the Emmy Award winning PBS television show Everyday Edisons, as well as the CEO of the design firm Enventys and publisher of Inventors Digest, recently announced the launching of a $25 million Innovation Fund, the proceeds of which will be used to bring innovations to market. In an interview with Foreman (see below) he explained to me that he is looking for inventions and ideas for all kinds of products, and not just the consumer products that Everyday Edisons has become known for. Foreman explains that medical devices, military and law enforcement technology, social networking innovations and even software are all desirable ideas/innovations for the Innovation Fund.
To help what might be the best ideas and inventions percolate to the top Foreman has created what he refers to as a “Patent Attorney Referral Program.” This program is designed to benefit patent attorneys and patent agents whose clients submit innovative ideas and concepts. This isn’t one of those unethical referral programs though, so no worries there. If a client of a patent attorney or patent agent is selected and accepts the offer of assistance from the Innovation Fund then the patent attorney or patent agent representing that inventor will be retained by the Innovation Fund to provide the legal services required to pursue patent rights.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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