Monthly Archives

January 2023

Tech Transfer Gotchas

Working in a university or research institute’s technology transfer/commercialization office is an exciting option for many intellectual property (IP) professionals.  Cutting edge research, out-of-the box thinking, and industry-recognized experts lead to a steady stream of innovations that have a real world impact on our lives.  They also have their own unique IP challenges that can catch IP professionals off guard.

Here we review some of the top-line issues for which IP professionals should be on the lookout:

  • Know the contractual obligations of all of the team participants in the lab, from the Principle Investigators down to the lab assistants and volunteers. Professors often have multiple posts and are brought in as visiting professors or even guest lecturers.  Graduate students can have different employment relationships in different labs.  Student volunteers might have no obligations at all.  All of these parties might be a contributor to an important invention for the institution, and things can get messy if there is not a clear understand and documentation of who owns what in terms of intellectual property.
  • Understand the institution’s strategy for spin-offs, including how IP is handled before, during, and after the spin-off. For example, there should be a clear policy, in writing, as to how a university employee, who is going to be part of a spin-off, is to handle their innovations as part of that process.
  • Understand what documents potential inventors have signed in the course of the work at the institution, including NDAs signed with potential industry partners or sponsors of research. Sometimes NDAs include assignment of intellectual property and can derail a licensing program before it event starts.
  • Be thorough in fully understanding any joint invention between your institution and another party. If the other party is also an institution with a technology transfer department, you may have to put in extra effort to navigate the situation. Addressing such issues earlier rather than later can reduce problems and deadline.

There are many more areas requiring special attention, which is why it is important to have IP counsel well versed in the technology transfer environment and life-cycle.  McCoy Russell has several members with extensive experience in and working with technology transfer departments, from world-renowned research universities to regional research institutes.  Please reach out to [email protected] for assistance.

Design Patents: Protections For Architectural Projects

Although many people use design patents for covering products or parts of products, design patents are also used to cover the exterior of a building. Design patents offer architects another tool for protecting their craft as seen in Design Patent D955,603 BUILDING which includes non planar quadrilateral sections forming a building exterior.
Design Patent D995603
Many times architects and building engineers are not considering that they are creating patentable inventions. In addition to, considering building designs as sculptural works, additional use of design patents may protect the architectural design for 15 years.

Restriction Requirements

One common first action from the US Patent Office is a restriction requirement alleging that the patent application includes multiple inventions and requires the applicant to make an election.  This generally results in increased costs and aggravation for the applicant, as well as delays in prosecution. While divisional applications can always be filed for the unelected claims, other strategies may be considered depending on a client’s goals.

At McCoy Russell LLP, we have developed numerous potential strategies.  One strategy may include drafting applications to decrease the likelihood of being subject to a restriction in the first place.  Another strategy that may be applied when a restriction is issued includes considering traversals against the restriction as well as amendments to obviate the restriction.  For example, merely traversing restrictions, when done properly and without creating admissions that can be used against the application with regard to obviousness, can provide strategic benefits.

McCoy Russell, being a data driven firm, tracks its performance in traversing and on average as many as one-third of the restrictions are withdrawn.  Further, the data shows that even if not withdrawn, having traversal remarks on the record both expedite prosecution and increase the likelihood of securing an allowance of claims from a statistical point of view. Finally, the traverse allows for the option of filing a petition against the restriction, which can create further leverage for the applicant.

In our experience, petitions can be a strong tool if done properly.  And in our data, we have been successful with petitions against restrictions at a rate of approximately 90% over numerous years of tracking.  We help clients select the right strategy to meet their objectives, and can present an array of options including ways to strategically fight against restrictions – and win.

Defining Functionality Of A System

Rock Island Armory is debuting a new pistol design at SHOT Show called the RIA 5.0. Advertising for the RIA 5.0 highlights a patented Ram Valve System that is intended to reduce recoil.

The patent cited for protecting the RIA 5.0 is US patent US 10,018,433 (Patent ‘433), assigned to Armscor Precision International which owns Rock Island Armory. Patent ‘433 is titled LINEAR LOCKING BARREL SYSTEM FOR FIREARM.

Pistols conventionally use a barrel which cams at an upward angle relative to the front of the pistol during rearward movement of the slide. The angle of the barrel assists with unlocking the barrel from the slide and the slide continues rearward movement to eject the spent casing. The barrel receives a fresh round. The upward angle of the barrel can be seen in slow motion videos of a pistol firing.

The premise behind the RIA 5.0 pistol is that a system with linear movement of the barrel will reduce the recoil felt by a user by keeping the forces in line with the user’s arm. Patent ‘430 was filed with claim language directed to the linear movement of the barrel. For example, claims 1 and 24 of Patent ‘430 capture the function of the barrel with claim limitations which recite “the barrel being confined to move between the forward and rearward positions along a linear path.”

The Examiner of Patent ‘430 did not find the movement of the barrel being constrained to a linear axis to be patentable and issued a non-final rejection. The Applicant then amended the claims to further define the function of the system and the patent was granted. For example, claim 1 incorporated “a locking member connected to the slide to reciprocate therewith over the entire range between the slide” and the locking member having a position engaged with barrel and a position disengaged with the barrel.

Patent ‘430 illustrates that a thorough disclosure for a patent application is important even when a concept appears to be novel. If the Applicant of Patent ‘430 had not included description of the functionality of the system such as the locking member, the Applicant may not have received a patent or would have faced increased costs and delays.

At McCoy Russell, we use our expertise in firearms and patent law to prepare through applications for our clients which provide many provide many methods to respond to potential rejections. Thorough disclosures also provide our clients possibilities for continuation patent applications to further protect their intellectual property. Please contact us if we can be of help to you.

Integration Of A General Concept

Sig Sauer was recently granted US Patent 11,402,175 (“Patent ‘175”) which is titled OPTICAL SYSTEM WITH CANT INDICATION and was prosecuted by fellow Oregon attorneys at Miller Nash. This Sig Sauer patent demonstrates that in the firearm and related accessory arts, what may at first appear to be merely an incremental system improvement can ultimately provide a path toward patent protection when claimed in context with other components in the system.

US Patent 11,402,175 is directed to a telescopic sight which provides an indication of an angle of cant relative to an optical axis of the sight. Figure 11A of the patent provides an example of a canted firearm sight and the indication provided by the telescopic sight.

A potential inventor or intellectual property department might question whether a telescopic sight that indicates cant is patentable. An argument could be made that the USPTO would likely reject a telescopic sight that indicates cant as obvious in view of a combination of a firearm sight and a level, as just an example.

However, by using a strategic approach that integrates the improved sight into the firearm context with additional features that provide synergy, it is possible to provide valuable protection in the marketplace. For example, the claims of Patent ‘175 recite “an electronic indicator […] structured to provide an indicator signal to a user related to the relative amount of cant” in combination with lights having different intensities or flashing at different speeds to indicate the amount of cant and the indicator [of cant] located proximate the rear focal plane of the telescopic sighting device.

The integration of a general concept into a specific application can be a method to obtain protection for new features in the marketplace if your patent counsel is well-versed in the technical field. It can also be difficult to predict which specific combination of features will be successful at the patent office, which is why it can be important to have a full disclosure of the implementation of new features in the system. A thorough disclosure including various combinations allows for adaptability of the claims in response to changing circumstances. In this way, specific details of an embodiment (such as the location of an indicator) may not seem crucial to patentability when initially considering a patent application but can often be decisive in overcoming prior art.

At McCoy Russell, we use our expertise in firearms and patent law to help our clients determine patentability of inventions and prepare high quality patent applications that protect their intellectual property. Please contact us if we can be of help to you.

Changes to USPTO Small and Micro Entities

Most small and micro entity USPTO fees have decreased with the enactment of the Consolidated Appropriations Act, 2023—which included the Unleashing American Innovators Act of 2022—signed into law on December 29, 2022. The law increased small entity discounts from 50 percent to 60 percent and micro entity discounts from 75 percent to 80 percent.

For patent issue fees, the fee due is the amount appearing on the Notice of Allowance and Fees Due letter (form PTOL-85).

McCoy Russell assists small and start-up companies in protecting their innovations and has had substantial success in supporting these companies through growth stages, mergers, and acquisitions. Small and start-up companies should invest the time to determine whether they can take advantage of the reduced USPTO fees.

Top Patent Law Firms in Oregon for 2022

PORTLAND, OR, Jan. 3, 2023/ — McCoy Russell compiled a list of the top patent law firms based in Oregon. They are ranked by the total number of U.S. design, utility, and plant patents issued in 2022 where the patent firms were listed on the front of the patent. Included firms have over 50 patents with an Oregon inventor.

As a smaller women-owned intellectual property firm, McCoy Russell demonstrates its quality and efficiency through utilizing the firm’s unique collaborative model. McCoy Russell LLP continues to innovate and refine how we practice intellectual property law, leveraging the most from our highly-skilled staff to the benefit of our clients. Providing integrated strategies for elegant, high-quality patent and trademark solutions.


McCoy Russell LLP is a nationally ranked boutique, woman-owned, intellectual property law firm headquartered in Portland, Oregon and focused on the prosecution and development of patent and trademark portfolios.