Monthly Archives

August 2023

Turning Challenges into Opportunities: Strategic Approaches to Cost-Reducing Patent Prosecution

Patent prosecution strategy is a critical part of managing a patent portfolio. The United States patent system, while offering invaluable safeguards to innovative companies, can sometimes pose financial hurdles through intricate processes like Requests for Continued Examination (RCEs) and Restriction Requirements (RRs). McCoy Russell recognizes that challenges are merely opportunities in disguise, through meticulous strategy and a nuanced approach, we have transformed these patent prosecution burdens into potential advantages, allowing us to not only safeguard our clients’ inventions but also optimize their financial investment.

It is no secret that RCEs and RRs can significantly escalate patent prosecution costs. The firm has honed a set of strategies that flip the script and turn these potential financial drawbacks into avenues for cost savings.

One of our key tactics involves strategic RR traversals. By skillfully navigating restriction requirements, we can actually use RRs as a tool to substantially minimize RCEs across a portfolio. The firm has seen a string of successive executions of these strategies (which include strategic petitions), where improper restriction requirements can be successfully petitioned as not only leverage in prosecution, but to avoid RCEs while still providing the applicant amendment opportunities. Specifically, this can be accomplished precisely at the juncture where an RCE would otherwise be deemed necessary.

To understand the significant impact of our strategies, imagine a typical portfolio, where around 30% of cases encounter a restriction. By strategically traversing these restriction requirements, we can effectively reduce cases with withdrawn claims (or said another way, divisional filings) by nearly 30%. This reduction arises due to the examiner’s voluntary withdrawal of the restriction and through the examiner being compelled to withdraw it based on a successful petition.

Now, assume that approximately 20% of cases will face a final rejection where an RCE for continued examination is desired (rather than appeal). Among these cases, assuming roughly 30% involve a restriction requirement, those restrictions can actually be used to reduce RCEs, and this is precisely where our approach truly shines: through our precise traversal and strategic petition, we enable close to half of the cases with both an RCE and a restriction to sidestep the RCE requirement entirely and provide the applicant with the ability to have further amendments or evidence entered nonetheless.

McCoy Russell leverages its cost-sensitive, strategic approach to traversal and petitions to the benefit of its clients. The firm continues to demonstrate that success is attainable, and costs can be significantly mitigated across a patent portfolio. Our team possesses the expertise and insights required to maneuver through the intricate landscape of patent prosecution, delivering results that matter and savings that count.

If you think your portfolio could benefit, we offer complimentary training sessions for in-house counsel to learn how they can take advantage of these tactics in their portfolio. Please contact us to schedule your training session.

Protecting Innovation: McCoy Russell Super Lawyers

McCoy Russell is delighted to announce the recognition of its founding Partners by Super Lawyers for intellectual property law in Oregon.

The firm’s founding partners, Anna McCoy and John Russell, continue to receive recognition for their expertise in intellectual property law. Their commitment to generating integrated strategies for elegant, high-quality patent and trademark solutions, along with a client-centric approach have solidified their reputation in the legal community. As Super Lawyers, they continue to set the bar high, leading the way in intellectual property.

McCoy Russell believes in providing personalized and strategic guidance to protect and maximize the value of our clients’ intellectual property assets. Over the years, the firm has protected and advocated for our clients’ intellectual property rights, from startups to established corporations, with the same level of dedication and expertise that has earned McCoy Russell its recognition. The firm’s inclusion into Super Lawyers reaffirms our commitment to delivering top-tier legal services and innovative solutions to our clients’ most intricate IP challenges.

Congratulations again to Anna McCoy and John Russell for their well-deserved recognition in Super Lawyers.

9 Resources for Examiner Statistics: Pros and Cons

Examining examiner statistics is crucial for patent law professionals seeking insights into prosecution trends. Various online resources provide comprehensive data on examiner behavior and performance. In this article, we will explore 9 resources for examiner statistics, including the new but highly regarded IroncrowAI, while also considering the limitations or cons associated with each resource.

  1. United States Patent and Trademark Office (USPTO):
    Pros: The USPTO’s website is the primary authority for accessing examiner statistics, offering detailed reports and reliable data.
    Cons: However, the information can be complex and overwhelming for inexperienced users. Interpretation of the data may require expertise in patent prosecution.
  2. Patent Trial and Appeal Board (PTAB) Data Visualization Center:
    Pros: The PTAB Data Visualization Center offers interactive and insightful analytics on examiner statistics related to post-grant proceedings, including institution rates and decision outcomes.
    Cons: This resource focuses primarily on PTAB trials, limiting its coverage of examiner statistics in other patent prosecution areas.
  3. LexisNexis PatentAdvisor:
    Pros: LexisNexis PatentAdvisor offers examiner statistics such as allowance rates, average time to allowance, and examiner-specific analysis, facilitating data-driven strategies.
    Cons: Access to comprehensive features and data requires a subscription, limiting free access to its resources.
  4. IPVision:
    Pros: IPVision utilizes artificial intelligence to analyze examiner behaviors and predict outcomes, providing valuable insights for optimizing prosecution strategies.
    Cons: The predictive nature of the tool may not always guarantee accurate results, and some users may require a deeper understanding of AI-based analytics to leverage its potential effectively.
  5. IPWatchdog:
    Pros: IPWatchdog, a reputable IP law blog, covers examiner statistics, allowing readers to stay informed about allowance rates, trends, and examiner interviews.
    Cons: While informative, IPWatchdog may not provide the same level of granular data and analysis as dedicated analytics platforms.
  6. PatentBuddy:
    Pros: PatentBuddy enables users to search and analyze examiner statistics, including allowance rates, classifications, and technical expertise, aiding informed decision-making.
    Cons: The platform’s user interface may not be as intuitive as other resources, requiring some time to navigate and extract relevant information.
  7. Juristat:
    Pros: Juristat offers examiner statistics, rejection rates, and predictive analytics to gauge success probabilities during prosecution, helping users make informed decisions.
    Cons: Juristat’s advanced features and comprehensive data require a subscription, limiting access to its full potential for those without a paid account.
  8. Google Patents:
    Pros: Google Patents is a free resource that allows users to explore examiner-specific data, serving as a convenient starting point for initial research.
    Cons: While accessible, the data available on Google Patents may be less granular and detailed compared to specialized analytics platforms.
  9. IroncrowAI:
    Pros: IroncrowAI combines advanced analytics and machine learning to provide deep insights into examiner behaviors, allowance rates, and application pendency, with a user-friendly interface.  Substantial access for free is currently still provided.
    Cons: As a relatively new resource, IroncrowAI is still adding features.

Examining examiner statistics is essential for patent practitioners, and the resources listed above offer valuable insights. While each resource has its pros and cons, they collectively contribute to a better understanding of prosecution trends. Special recognition goes to IroncrowAI for its intuitive user interface, advanced analytics and the cost, which is free.

John Russell Recognized Notable Practioner

McCoy Russell congratulates Co-Founding Partner John Russell on his continued recognition in Chambers USA for his excellence in the field of Intellectual Property in Oregon. “John Russell is a patent attorney with a wealth of experience in patent prosecution and portfolio management”, notes Chambers.

Chambers USA rankings utilize in-depth market analysis and independent research, working with firms of all sizes. You may read more about their methodology at their site linked here.

John leverages over 20 years of hands-on experience in developing patent prosecution strategies, assisting McCoy Russell’s clients in developing a diverse patent portfolio. Alongside his practice at McCoy Russell, John takes an active role in the start up, innovation, and patent law community locally and nationally helping those participating in the patent system better navigate the USPTO.

John continues to shape McCoy Russell’s internal systems and patent practice. His vision helps take McCoy Russell’s practice to new heights.

Navigating Cross-Border Patent Challenges: Lessons from Dwango v. FC2

In a recent case in Japan, Dwango v. FC2, the IP High Court, En Banc, delivered a verdict with far-reaching implications for intellectual property (IP) protection in cross-border scenarios. The court’s decision clarified the boundaries of Japanese patent infringement and shed light on strategies for both domestic and international businesses operating in the global marketplace.

Dwango, a prominent Japanese company, took legal action against FC2, a US-based firm, alleging that FC2’s streaming media services with real-time user comments infringed upon a Japanese patent. The crux of the dispute centered around whether a Japanese patent could extend its coverage to an overseas server, operated by FC2 in the United States.

Key Points from the Court’s Analysis:
The system was “made” when the terminal accessed the server:
When a user terminal accessed the server, establishing a connection and enabling the overlay of comments on video content in the user’s browser, a new system satisfying all the claim requirements was deemed “made.” This crucial point reinforced the importance of the server-user terminal interaction in determining the scope of patent infringement.

Extraterritorial reach of Japanese patents:
The court provided Domestic Acts Guidelines to help determine whether an act, such as “making,” occurs within Japan when the server is located overseas. These guidelines considered several factors, including the specific manner of the act, the functions and roles played by the elements within Japan, the location where the effect of the invention is provided, and the impact on the patentee’s business.

It is worth noting that the IP High Court rendered a previous decision involving the same parties (No. (ne) 10077 of 2008, July 20, 2022) regarding program distribution and terminal claims. This decision serves as a reference point for understanding the evolution of court interpretations and the En Banc decision’s more assertive stance.

The Dwango v. FC2 case has highlighted the complexities and risks involved in cross-border patent infringement. International businesses must proactively consider the specific manner of their acts, the functions fulfilled by elements in different jurisdictions, the location of the invention’s effects, and the impact on patentees’ businesses. Seeking expert legal counsel from a seasoned IP firm is crucial to navigate these intricate matters effectively and ensure compliance with global IP regulations. Contact McCoy Russell at [email protected] if we can be of assistance.

Anna McCoy Recognized Notable Practioner

McCoy Russell congratulates Co-Founding Partner Anna McCoy on her continued recognition in Chambers USA for her excellence in the field of Intellectual Property in Oregon. Anna’s continued inclusion is a testament to her technical legal ability, client service, commercial astuteness, and diligence in her intellectual property practice.

Chambers USA rankings utilize in-depth market analysis and independent research, working with firms of all sizes. You may read more about their methodology at their site linked here.

Anna leverages over 20 years of hands-on experience helping iconic brands to emerging businesses secure intellectual property rights in trademarks, patents, copyrights, and trade secrets. Alongside her practice at McCoy Russell, Anna takes an active role in shaping Trademark best practice on a global scale through her participation in International Trademark Association (INTA) committees.

Anna continues to develop and nurture McCoy Russell’s collaborative structure, practice, and strategies to the benefit of its clients. Her vision continues to take McCoy Russell’s legal practice to new heights.

McCoy Russell heading to AUTM’s West Coast Regional Meeting

McCoy Russell continues to support the relationship between Technology Transfer Offices and the intellectual property system. Our attorneys’ participation in AUTM’s Regional Meeting underscores our commitment in providing specific support tailored to the unique challenges presented in academic and research environments pursuing technology commercialization.

AUTM, the Association of University Technology Managers, is a renowned organization driving intellectual property and technology transfer initiatives. The AUTM Regional Meeting in Newport Beach, California is an event aimed at bringing together industry experts and innovators.

Justin Wagner, representing McCoy Russell, will participate in sessions, sharing his knowledge on intellectual property law, patent strategies, licensing agreements, and technology commercialization. He looks forward to connecting with technology transfer offices, research institutions, startups, and industry leaders to exchange updates on the latest developments and further relationships with these offices.

McCoy Russell has substantial experience with academic and research institutions and their technology transfer offices, providing specific support tailored to the unique challenges presented in academic and research environments pursuing technology commercialization. Our experience and strategic approach considers the full technology life cycle, from the evaluation stage to portfolio creation and development to licensing and post-grant proceedings.

The McCoy Russell Band Debut

Thursday, August 3rd The McCoy Russell Band will be taking the stage at Multnomah Bar Association’s fundraising, “Battle of the Lawyer Bands 2023.” This event is dedicated to raising funds for Multnomah Bar Foundation CourtCare, CourtSupport, and CourtConnect, essential legal aid programs that serve our community’s most vulnerable members.

McCoy Russell is excited to not only participate in this charitable event that brings together legal professionals from various firms to showcase their musical talents, but contribute to a cause that makes a significant impact on access to justice for those in need.

So mark your calendars Thursday August 3rd 7-9pm, gather your friends and family, and join us at the “Battle of the Lawyer Bands 2023.