http://www.ipwatchdog.com Patents, Software Patents, Patent Applications & Patent Law Tue, 21 May 2013 20:52:32 +0000 en-US hourly 1 http://wordpress.org/?v=3.5.1 http://www.ipwatchdog.com/2013/03/25/patent-attorney-services-after-first-to-file-what-to-file/id=37406/ http://www.ipwatchdog.com/2013/03/25/patent-attorney-services-after-first-to-file-what-to-file/id=37406/#comments Mon, 25 Mar 2013 17:25:30 +0000 Andy Gibb http://www.ipwatchdog.com/?p=37406 Related posts:

1. Patent Strategy: Laying the Foundation for Business SuccessIt is also critical for inventors and entrepreneurs to have a strategy to succeed, which seems simple enough, but is typically anything but simple for the creative types that are so good at inventing. The goal is not to create an invention that is cool, the goal is not to get a patent, the goal is almost universally to make money. The cool invention and patent are a means to the end, not the end in and of themselves. If you approach your patent activities appropriately you can lay the foundation of a business plan, at least insofar as the...
2. Why Patent Attorneys Don’t Work on ContingencyHaving spent time as a litigator I know exactly what goes into taking a case on a contingency basis and you only take cases on a contingency when you know beyond a shadow of a doubt that there WILL be money ACTUALLY recovered. That is why it is perfect for personal injury attorneys. They can tell with great certainty, if they are being honest, if money will be recovered. So you need to be 100% sure when you take the case that money will be obtained because as it turns out cases can and do take on a life of...
3. Need Patent Help? How to Present as a Serious InventorA representation relationship is just that, a relationship. Who you work with is an important decision and patent attorneys operate differently. At the end of the day what you should be looking for is someone who is competent and who you connect with on some level. In my opinion, when representation is most successful there is a good working relationship between the attorney and inventor, and that requires a certain comfort level and familiarity. Try and work with someone in a symbiotic way. No matter how good the inventor, the invention or the patent attorney, an “oil and water” characteristic...

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1. U.S. News Ranks Top Patent, Copryight & Trademark Law FirmsOf course, these lists never give any love to the small or mid-size firms that provide high quality legal work at a reasonable cost to clients. But that is only one of the things that will raise some eyebrows. U.S. News included Howrey LLP in the top tier for intellectual property litigation and the firm dissolved on March 15, 2011, hardly 10 weeks into 2011. So how exactly does that qualify Howrey, a firm that no longer exists, for top tier ranking? That alone will cause some to scratch their heads and wonder exactly what U.S. New was thinking....
2. Clifton McCann Joins DC Offices of Thompson HineMcCann, 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 on the heels of other recent additions of what the firm refers to as "top tier laterals." McCann is 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. ...
3. Womble Carlyle Expands IP and Life Science Litigation TeamsIn October, Life Science litigators Mary Bourke, Mark Pino, Kristen Cramer, Dana Severance and Daniel Attaway joined the firm from Connolly Bove Lodge & Hutz LLP, an intellectual property law firm located in Delaware, which not lists 52 attorneys on their firm website. These laterals include three partners and two associates. Veteran IP litigators Barry Herman and Behrooz Shariati also joined the firm in June and July, respectively. According to the firm's website Womble Carlyle now has 547 attorneys and 89 attorneys operating within a broadly defined Intellectual Property practice group....

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1. USPTO Administrator for Policy and External Affairs – Albert Tramposch – Rejoins AIPLA as Deputy Executive DirectorThe American Intellectual Property Law Association (AIPLA) is pleased to announce that Albert Tramposch, Administrator for Policy and External Affairs at the United States Patent and Trademark Office (USPTO), willresume his former post as AIPLA Deputy Executive Director for International and Regulatory Affairs, beginning January 16, 2012....
2. AIPLA Applauds Approval of Patent Reform in House CommitteeAt an all-day session on April 14, members of the Committee gave serious consideration to a variety of amendments to the bill and concluded with an overwhelming, bi-partisan vote of 32-3 in support of the long-overdue improvements to the patent law. The Committee proceeding demonstrated the careful balancing of interests and the compromises necessary to address the concerns of the diverse stakeholders. While more work is yet to be done, the Committee's effort represents encouraging progress....
3. Exclusive with the AIPLA Presidents: Bill Barber & Jeff LewisJust ahead of the 2012 AIPLA Annual Meeting I had an opportunity to go on the record with Bill Barber, then President and now Immediate Past President of AIPLA. Also joining the discussion was Jeff Lewis, who was then President-elect and is now President of AIPLA. In part 1 of this 2 part interview we talk about the organization and how it operates, as well as the time commitment they invest.  We also discuss getting "buy-in" from their law partners and their families....

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1. USPTO Updates Registration Examination for New Patent PractitionersAs part of a wider effort aimed at stakeholders fully benefitting from the sweeping reforms of the America Invents Act (AIA), the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it has updated a critical examination for applicants seeking to practice in patent cases before the Office. The USPTO anticipates making another update to the examination when the first-inventor-to-file provisions of the AIA become effective in March 2013....
2. USPTO Expands Trademark Law School Pilot ProgramThe U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the selection of nine additional law schools to join the Trademark Law School Clinic Certification Pilot Program this fall. The program allows law students to practice trademark law before the USPTO under the guidance of a faculty clinic supervisor....
3. USPTO Adopts New Ethics Rules Based on ABA Model RulesThe Federal Register Notice explains that currently there are approximately 41,000 registered patent practitioners, with at least 75% of the roster of patent practitioners being attorneys who are admitted in one or more States. Given that the ABA Model Rules have been adopted by 49 states and the District of Columbia, nearly all of the attorneys registered to practice at the USPTO are already professionally governed by ethics rules modeled from the ABA Model Rules of Professional Conduct. Thus, this change should not be considered to be a substantive change to the rules that apply to patent attorneys.Indeed, the Federal...

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1. Senior Sony PlayStation Attorney Stephen Kong Joins Stradling YoccaPrior to joining Stradling, Mr. Kong was Senior Corporate Counsel for Sony Computer Entertainment America LLC. While at Sony PlayStation, he was the lead attorney for the US R&D and Strategic Business Development Groups for the Sony entity responsible for Sony PlayStation matters in North and Latin America....
2. Cooley Lands Chadbourne & Parke’s Top IP & Litigation PartnersI don't know what is going on at Chadbourne & Parke, but I do know I know that Walt and John were both at Morgan & Finnegan and left for Chadbourne over 7 years ago. Morgan & Finnegan subsequently filed for bankruptcy ?several years later. Over time the best attorneys were slowly bled from Morgan & Finnegan, and virtually all of the rainmakers left. There were obviously internal problems of one kind or another, likely of a structural nature compounded by top earners and rainmakers leaving. Now I see top level attorneys leaving Chadbourne & Parke, one of them my...
3. 3 New Intellectual Property Members for McDonald HopkinsMcDonald Hopkins LLC, a law firm with offices in Chicago, Cleveland, Columbus, Detroit, Miami, and West Palm Beach, just announced the election of three new intellectual property attorneys to the firm's membership. The intellectual property attorneys being elevated to Member at McDonald Hopkins are: Todd A. Benni, Joseph J. Crimaldi and Scott M. Slaby. ...

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1. Clifton McCann Joins DC Offices of Thompson HineMcCann, 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 on the heels of other recent additions of what the firm refers to as "top tier laterals." McCann is 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. ...
2. Senior Sony PlayStation Attorney Stephen Kong Joins Stradling YoccaPrior to joining Stradling, Mr. Kong was Senior Corporate Counsel for Sony Computer Entertainment America LLC. While at Sony PlayStation, he was the lead attorney for the US R&D and Strategic Business Development Groups for the Sony entity responsible for Sony PlayStation matters in North and Latin America....
3. Cooley Lands Chadbourne & Parke’s Top IP & Litigation PartnersI don't know what is going on at Chadbourne & Parke, but I do know I know that Walt and John were both at Morgan & Finnegan and left for Chadbourne over 7 years ago. Morgan & Finnegan subsequently filed for bankruptcy ?several years later. Over time the best attorneys were slowly bled from Morgan & Finnegan, and virtually all of the rainmakers left. There were obviously internal problems of one kind or another, likely of a structural nature compounded by top earners and rainmakers leaving. Now I see top level attorneys leaving Chadbourne & Parke, one of them my...

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1. Celebration! April 13th is National Be Kind To Lawyers DayHappy National Be Kind To Lawyers Day!  What, you’ve not heard of it before?  Is it too much to ask to be nice to lawyers for just one day???  That was the question Steve Hughes, Creator of NATIONAL BE KIND TO LAWYERS DAY and the author of  bekindtolawyers.com asked himself one day.  Steve, a non-lawyer from St. [...]...
2. PTO Expands Pro Bono Patent Assistance to Nation’s InventorsThe U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the start of two new regional pro bono patent programs in California and the District of Columbia—the result of the USPTO’s cooperative efforts with the California Lawyers for the Arts and the Federal Circuit Bar Association (FCBA)....
3. Bridging the Innovation Gap: Pro Bono Opportunities for Intellectual Property AttorneysI ended my three-part article by recommending that members of the IP Bar should strive to volunteer more pro bono hours in order to help bridge the innovation gap. Encouragingly, I received some emails from IPWatchdog.com readers asking, “how can I help?” Well, after some research, here is a list of some organizations around the country seeking patent, trademark and copyright pro bono attorney volunteers....

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1. When Should a Do It Yourself Inventor Seek Patent Assistance?It is certainly true that once you file a nonprovisional patent application your ability to make additions to the application has largely ceased. Even if you are filing a provisional patent application, while you could always file another provisional patent application to correct mistakes, the first filing is only as good as what is disclosed. Taking the first filed patent application seriously and making sure it has all the necessary disclosure is absolutely critical. Therefore, having a professional review your patent application before you file is definitely wise. The question, however, is when do you seek the assistance? Frequently many...
2. Beware Background Pitfalls When Preparing a Patent ApplicationThe best thing to do is explain why your invention solves problems and/or is important for the relevant consumer audience. In order to accomplish this you do not explain what else available to consumers and why it is inferior, missing functionality or missing parts. Remember, the focus of the application MUST be on your invention. It can be extremely helpful to create a comparison chart or write text comparing the prior art you know about with your invention, but this should be used by you or provided to your patent attorney or agent. It will be exceptionally helpful to have...
3. Patent Drafting Lessons: Learning from the Grappling DummySuch a long, detailed and narrow feature set may have been require to get a patent issued, but is the patent effort (i.e., time and cost) worth such a narrow set of claims? The answer can be a resounding YES, or a definite NO! It all depends upon what you want to do with the patent. One this is for certain though, if you add enough qualifiers and sufficiently narrow a claim you can get a patent on virtually anything, which is unfortunately a truth that invention promotion companies know all to well! In almost all circumstances the goal is...

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1. Lessons: 5 Odd Things Inventors Tell Patent AttorneysOne of the problems created by true newbies, particularly those who have not done any reading or tried to at least bring themselves up to speed to some extent, is that they present in a way that makes established patent attorneys and law firms want to run and hide. Whether it is unrealistic expectations, wanting a confidentiality agreement signed because they want to be able to sue you if things go bad, or wanting representation on a contingency basis, these things scream PROBLEM to most patent attorneys, thereby foreclosing a possible representation relationship in many cases....
2. A Better Mouse Trap: Patents and the Road to RichesTo paraphrase the famous quote of Ralph Waldo Emerson, if you build a better mouse-trap the world will make a path to your door. Inventors and entrepreneurs frequently take this quote all too literally, thinking that if they make a better product theirs will sell and make them rich beyond their wildest dreams. There are, [...]...
3. Need Patent Help? How to Present as a Serious InventorA representation relationship is just that, a relationship. Who you work with is an important decision and patent attorneys operate differently. At the end of the day what you should be looking for is someone who is competent and who you connect with on some level. In my opinion, when representation is most successful there is a good working relationship between the attorney and inventor, and that requires a certain comfort level and familiarity. Try and work with someone in a symbiotic way. No matter how good the inventor, the invention or the patent attorney, an “oil and water” characteristic...

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1. Why Patent Attorneys Don’t Work on ContingencyHaving spent time as a litigator I know exactly what goes into taking a case on a contingency basis and you only take cases on a contingency when you know beyond a shadow of a doubt that there WILL be money ACTUALLY recovered. That is why it is perfect for personal injury attorneys. They can tell with great certainty, if they are being honest, if money will be recovered. So you need to be 100% sure when you take the case that money will be obtained because as it turns out cases can and do take on a life of...
2. Patent Application Costs: You Get What You Pay ForIt takes time to prepare a detailed written disclosure that will support any number of claims, and there is just no way to rush it. Inventors and entrepreneurs intuitively know this, but they get lured into believing that what they get for $1,400 is just as good as what they would get if they paid $8,000, which is unrealistic of course. You cannot fall for what you want to hear when you deep down know it makes no sense. If you aren't convinced ask yourself this: when you were in school and you had to write a paper for a...
3. Job Opening: Patent Agent (Electrical / Computer / Physics)The intellectual property group of Buchanan Ingersoll & Rooney, PC is actively seeking an Electrical Patent Agent with a minimum of 3 years of experience to join the firm in its Alexandria, Virginia office. Candidates for this position should possess a degree in Electrical Engineering, Computer Science or Computer Engineering....

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1. Protecting Your Intellectual Property in ChinaThe China Road Show is a series of two-day China IP events that the USPTO is hosting across the country to help educate businesses about the realities of piracy and counterfeiting—which cost the American economy approximately $250 billion annually. Day 1 is largely devoted to understanding the patent, trademark and copyright laws in China, as well as enforcement of those rights. Day 2 of the seminar will address § 337 Infringement Investigations by the International Trade Commission (ITC), the challenges presented by counterfeiting and piracy on the Internet and the development of global IP strategies even for small businesses....
2. The Top 5 IP Mistakes Tech Startups MakeOne of the costliest mistakes a startup can make is mismanaging intellectual property rights. A company needs to not only manage its own IP rights, but also avoid those of third parties, including competitors. To be on the safe side, therefore, intellectual property management should include efficiently protecting the startup’s IP rights while also avoiding the IP rights of others....
3. Understanding Intellectual Property BasicsIntellectual property is probably best thought of (at least in general terms) as creations of the mind that are given the legal rights often associated with real or personal property. The rights that are given are a function of statutory law (i.e., law created by the legislature). These statutes may be federal or state laws, [...]...

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1. Attention Patent Attorneys, $25 Million Available for InventorsTo 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...
2. Everyday Edisons Producer & Inventors Digest Publisher, Louis Foreman, Supports Patent ReformLouis Foreman sent the letter reproduced below to Senator Patrick Leahy (D-VT), who is Chair of the Senate Judiciary Committee. As his letter explains, Foreman supports patent reform because "leaving the current system alone is not an opinion, nor does it benefit anyone." Foreman believes the patent reform pending is a "significant improvement" because, among other things, it will lower fees for micro-entities and lead to because it will "ultimately result in a stronger patent making it easier for independent inventors and small businesses to attract start-up capital. ...
3. Inventors Digest Publisher, Louis Foreman, Cited in Patent Reform Debate in US SenateAs the debate in the Senate starts to wind down and moves to the House of Representatives, whether you are pro-reform or against reform, get involved and participate. Taking the time to be engaged can go a long way. In listening to the debate in the Senate over the past 4 days it is clear to me that Senators are listening to those on both sides who engage in thoughtful debate. While I am often cynical about government, it has been refreshing to watch. Painful at times, but nice to see that ordinary citizens can make a difference....

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1. Attention Patent Attorneys, $25 Million Available for InventorsTo 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...
2. Why Patent Attorneys Don’t Work on ContingencyHaving spent time as a litigator I know exactly what goes into taking a case on a contingency basis and you only take cases on a contingency when you know beyond a shadow of a doubt that there WILL be money ACTUALLY recovered. That is why it is perfect for personal injury attorneys. They can tell with great certainty, if they are being honest, if money will be recovered. So you need to be 100% sure when you take the case that money will be obtained because as it turns out cases can and do take on a life of...
3. Edison Nation Launches Phase 2 of $25 Million Innovation FundLouis 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. He tells me that the Fund is off to a great start and has received some very innovative technologies as part of the first wave....

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1. Extortion Patent Style: Small Business in the Troll CrosshairsBetween 1995 and 2009 the overall median patent litigation damage award was $5.2 million, but between 2002-2009 there was a huge discrepancy between the average damage award for practicing entities versus non-practicing entities. The median award for non-practicing entities was $12.9 million, while the median award for practicing entities lagged far behind at $3.9 million. No wonder there is ever increasing activities by those the Federal Trade Commission refers to as "patent assertion entities," which seems to be yet another sanitized name for patent troll....
2. The Problem with Patent TrollsTo me a patent troll is not just someone who has acquired a patent for purpose of licensing or bringing a lawsuit, but rather one who is engaging in some kind of unfair business practice. The telltale sign of a patent troll is one who is abusing the patent right in order to shake down a defendant for payment. This type of behavior is typically exhibited by non-practicing entities who are not innovators, but rather acquire patent rights. However, the act of bringing specious claims to provoke a settlement would, in my opinion, be just as bad if brought by...
3. In Search Of a Definition for the term “Patent Troll”The reality is that the term patent troll seems to be more in the eye of the beholder than anything else. So a patent troll is whoever is suing you because you must be correct and some evil wrong-doer is holding you hostage. Never mind that you are actually infringing and you are the real wrong-doer (i.e., tortfeasor). What is needed is a working definition for the term patent troll so that this nonsense can stop once and for all, and so the uninformed in the media can be spared the embarrassment of their own cluelessness. So lets take a...

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1. Edison Nation Launches Phase 2 of $25 Million Innovation FundLouis 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. He tells me that the Fund is off to a great start and has received some very innovative technologies as part of the first wave....
2. Inventors Digest Publisher, Louis Foreman, Cited in Patent Reform Debate in US SenateAs the debate in the Senate starts to wind down and moves to the House of Representatives, whether you are pro-reform or against reform, get involved and participate. Taking the time to be engaged can go a long way. In listening to the debate in the Senate over the past 4 days it is clear to me that Senators are listening to those on both sides who engage in thoughtful debate. While I am often cynical about government, it has been refreshing to watch. Painful at times, but nice to see that ordinary citizens can make a difference....
3. Need Patent Help? How to Present as a Serious InventorA representation relationship is just that, a relationship. Who you work with is an important decision and patent attorneys operate differently. At the end of the day what you should be looking for is someone who is competent and who you connect with on some level. In my opinion, when representation is most successful there is a good working relationship between the attorney and inventor, and that requires a certain comfort level and familiarity. Try and work with someone in a symbiotic way. No matter how good the inventor, the invention or the patent attorney, an “oil and water” characteristic...

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