Monthly Archives

January 2024

Reassessing Software Patent Law

McCoy Russell attorney Wes Nicholson recently presented on patent law as it relates to software inventions to the audience of the OSB IP Section. Wes explored the history of patent law through to the current state of software patent law as practiced today. He addressed special challenges related to patenting software and offered novel ways patent policy might be applied more appropriately to software inventions.

While this topic is an ongoing discussion in the ever evolving practice of patent law and the abstract nature of software, McCoy Russell continues to keep track of rulings and refining its patent prosecution practice as it relates to software inventions including navigating the state of AI at the USPTO.

Meet with McCoy Russell during AUTM

Hoping to further develop and deepen relationships with Technology Transfer offices, McCoy Russell will be present at the 2024 AUTM Annual Meeting. Partners John Russell and Justin Wagner hope to connect with technology transfer professionals to discuss new ideas and approaches for developing strategic intellectual property portfolios.

Schedule a meeting via AUTM Connect or email us at [email protected].

McCoy Russell focuses on innovation life-cycle support, from initial inventor disclosure meetings and review of the technology disclosure to commercial viability searching, patent drafting, patent prosecution, and portfolio development, as well as licensing negotiations and education. McCoy Russell’s experience with technology transfer includes direct support of academic faculty and students, both undergraduate and graduate, from initial concept development to follow-on innovations.

McCoy Russell attorneys also have experience in supporting various start-ups that have spun-out of the academic institutions and universities. McCoy Russell works closely with technology transfer managers to ensure strategic alignment with the inventors and the output of commercially viable patent filings and resulting portfolios.

McCoy Russell’s Technology Transfer Practice

McCoy Russell continues to strengthen its relationships with technology transfer offices. The firm provides 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.

McCoy Russell focuses on innovation life-cycle support, collaborating with inventors, technology transfer offices, academic faculty, and students to assess the commercial potential of their discoveries. This can involve conducting thorough and comprehensive searches, evaluating existing patents, inventor disclosure meetings, patent drafting, patent prosecution, portfolio development, as well as licensing negotiations and education.

In addition to educational programs, the firm has developed proprietary software allowing us to perform detailed landscape searches to identify potential collaborators and licensing partners, and to highlight insights into the marketplace and commercial viability of their research.

McCoy Russell recognizes the innovation cycle doesn’t end with commercialization. Continuous feedback and iteration are essential components when developing an intellectual property portfolio. The firm is available to support technology transfer offices in understanding and further optimizing this cycle and leveraging the potential of intellectual property, fostering innovation, and driving economic progress. Contact us at [email protected] if you think we can be of assistance.

Ironcrow AI’s LLM Sandbox

Ironcrow AI was recently featured in the Washington State Bar Association’s Side Bar publication. The publication features a Q&A discussing Ironcrow AI’s achievement of a score above the 70% threshold required to pass the patent bar exam. The article explores the meaning of this achievement, what legal professionals should takeaway from it, and Ironcrow AI’s LLM Sandbox can improve patent drafting and prosecution quality and efficiency.

Find the Full article here: https://nwsidebar.wsba.org/2023/12/18/top-marks-achieved-by-patent-ai-tool-qa-with-john-russell-about-ironcrow-ai/

As an innovative firm, McCoy Russell has been at the forefront of patent law with its development and use of proprietary AI software via its software arm Ironcrow AI. In 2023, Ironcrow has invested substantial efforts to create a specialized AI LLM Sandbox as a key tool for patent professionals.

The remarkable feat showcases the innovation by the Ironcrow and McCoy Russell partnership and the ability of the LLM Sandbox’s “Interrogate” feature to answer questions based on the knowledge of the patent procedure. The Sandbox can provide well-cited answers along with relevant excerpts from the MPEP, etc., to its users. This unique feature sets Ironcrow AI’s LLM Sandbox apart from other systems in the market.

Ironcrow AI’s LLM Sandbox’s success in achieving a passing score for the Patent Bar Exam signifies a major milestone in the development of AI systems ability to assist patent professionals. Its ability to provide accurate answers with proper citations and excerpts from the MPEP sets a new standard in the field.

If you want to learn more about Ironcrow AI’s LLM Sandbox or the performance study email [email protected].

McCoy Russell Continued Support of AUTM

McCoy Russell proudly continues its support of AUTM. Firm members look forward to attending the 2024 AUTM Annual Meeting in February and aim to connect and strengthen the firm’s connection to the Technology Transfer community.

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. The firm’s 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.

McCoy Russell attorneys also have experience in supporting various start-ups that have spun-out of the academic institutions and universities. McCoy Russell works closely with technology transfer managers to ensure strategic alignment with the inventors and the output of commercially viable patent filings and resulting portfolios.

Learn more about our experience with Technology Transfer Offices and email [email protected] for assistance.

China’s Patent Landscape Shifts: Restoration of Priority Claims Now Accepted

China is set to revolutionize its patent landscape with the forthcoming implementation of the Detailed Implementing Regulation of the Chinese Patent Law. Scheduled for January 20, 2024, this move signifies a major stride in the evolution of China’s patent application process.

A key feature of the new regulations is the acceptance of the restoration of priority claims. Applicants for Chinese invention patents or utility models will now have the opportunity to restore their claims if filed between 12 and 14 months from the priority date, contingent upon providing a valid reason for the delay.

The flexibility extends to Chinese national applications based on PCT international applications, introducing conditions for restoration after entering the Chinese national phase. The term “sound reason” is employed for justification, with initial indications suggesting a lenient approach by CNIPA, potentially aligning with instances where a simple payment of restoration fees has sufficed.

Notably, the guidelines do not explicitly outline whether CNIPA will favor a “due care” or “unintentionality” criterion for priority claim restoration, setting a more flexible tone compared to European or Japanese standards and bringing it closer to the U.S. approach. As we approach this transformative effective date, McCoy Russell makes note of these changes is hopeful these changes mark a significant step toward fostering innovation and streamlining the patent application process in China.

McCoy Russell Welcomes Justin Wagner as Partner

McCoy Russell is pleased to welcome new partner Justin Wagner in recognition of his exceptional legal skills and service to our clients. Justin’s addition will support and strengthen the firm’s growing national and international intellectual property practice supporting entrepreneurs, growing technology companies, and established national leaders. Justin has demonstrated not only his technical experience and legal expertise, but also his leadership. While making efforts to foster community here at the firm, Justin takes an active role in the Technology Transfer community via AUTM, serving on its committees and locally as President of the Oregon Patent Law Association.

With over 20 years of experience, Justin represents clients in various capacities in patent matters, including the preparation and prosecution of patent applications before the USPTO, portfolio strategy development, patent appeals, patentability studies, validity evaluations, and infringement analysis.
Justin has drafted and prosecuted patent applications in a wide range of fields, including electrical systems, electronic components, medical devices, and enterprise software. He leverages his prior experience as a software developer at a global management consulting company and an electrical engineer at a leading document scanner company. Justin is a proud member of Institute of Electrical and Electronics Engineers (IEEE).

Congratulations Justin Wagner, we welcome you as a McCoy Russell Partner.

Top Patent Law Firms in Oregon for 2023

PORTLAND, OR, Jan. 2, 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 2023 where the patent firms were listed on the front of the patent. Included firms have over 50 patents with an Oregon inventor.

As one of the few women-owned intellectual property firms with a national practice, McCoy Russell continues to be a major player. McCoy Russell LLP continues to innovate and refine how we practice intellectual property law, leveraging the most from our highly-skilled administrative and technical staff to the benefit of our clients. The firm provides integrated strategies for elegant, high-quality patent and trademark solutions and intellectual portfolio development.

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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. www.mccrus.com