April 2025

McCoy Russell celebrates its Administrative professionals! Yesterday, McCoy Russell took a moment to recognize and thank its staff for their contributions that make the firm thrive. The contributions from team members are what makes the firm stand out in its client support and outcome achievements.

Recently, the U.S. Patent and Trademark Office (USPTO) established a new working group to strengthen its efforts against fraud and misconduct in the patent process. The Patent Fraud Detection and Mitigation Working Group will focus on protecting the integrity of the U.S. patent system and reducing delays in application processing.

This initiative reflects the USPTO’s ongoing commitment to limit improper activity in patent applications and reexamination proceedings at the USPTO and reduce patent pendency. The group’s priorities include:

• Addressing erroneous micro entity and small entity fee certifications and assertions
• Monitoring suspicious filings
• Identifying and reviewing potential misrepresentations to the USPTO, including false signatures, and when appropriate using the administrative sanctions process to address these misrepresentations

Examples of patent-related threats can be found on the USPTO’s website (https://www.uspto.gov/patents/fraud/examples-threats-patent-system).

At McCoy Russell, we are committed to maintaining the highest standards of integrity and professionalism in all interactions with the USPTO. We take seriously our duty of candor and good faith during the filing and prosecution of patent applications, as outlined in 37 CFR 1.56, and understand that honesty is fundamental to the patent process. Our team upholds a duty of reasonable inquiry and ensures that submissions to the USPTO are accurate, truthful, and made in good faith, in line with 37 CFR 11.18. We also recognize the importance of these responsibilities.  McCoy Russell remains dedicated to ethical practice and the trust our clients place in us.

Most practitioners have experienced it at some point: a filing is made, everything is in order, and then… silence. No update. No progress. Whether it’s a certificate of correction, a petition, or another post-issuance request, stalled matters at the USPTO can be frustrating—not just for attorneys, but for clients who expect clarity and action.

In one recent case, we filed a certificate of correction to address a PTO error on a priority claim in an issued patent. The priority claim was filed correctly in the ADS, and also appeared correctly on the publication. The error in the priority claim on the issued patent, then, clearly originated at the USPTO. Despite clear grounds and proper filing of the certificate of correction, months passed without action. Our follow-ups went unanswered. Our client was understandably frustrated, and we had limited tools to show that we were actively working toward a resolution. Through that experience, we picked up a few strategies that may help others navigating similar delays:

1. Use the Ombuds Office Strategically

The USPTO Ombuds Office can be a helpful resource when normal channels aren’t yielding results, and it is designed to address precisely these situations where progress is stalled. But don’t just reach out and hope for the best—track who you speak with, when, and what was discussed. If they say they’ll look into it, ask for specifics: What steps will you be taking? Will you be reaching out to a particular person or office? Can I be copied or updated when that happens? These questions not only clarify the process, but also give you a basis for meaningful follow-up. When you check in later, you can ask directly about the actions they committed to—putting more pressure on them to move things forward.

2. Follow Up Regularly and Keep a Paper Trail

Persistence is essential. A single unanswered email can disappear into the void—but a pattern of follow-ups establishes a record of your diligence. Maintain a timeline that includes dates of attempted contact and each follow-up attempt (email, phone, etc.), and any responses received (even if vague). This timeline not only helps you stay organized internally, but also gives you something concrete to point to if someone at the USPTO suggests taking a step you’ve already taken. You’ll be able to say, for example, “I’ve called this person three times since November and haven’t received a response,” which can help shift the conversation toward next steps instead of being stuck in a cycle.

3. Call Direct Lines

General office lines or email boxes often go unanswered, even when the voicemail message indicates to expect a return call within 24 hours. If possible, identify a specific person connected to your matter and call them directly. The Ombuds Office may be able to help you identify the relevant person and their contact information, if you ask.

Final Thought:

Delays at the USPTO can feel opaque and uncontrollable, but consistent, organized advocacy can make a difference. And perhaps just as importantly, it shows your client that you’re doing everything within your power to get things moving—even when the process is far from transparent.

McCoy Russell had the opportunity to host INTA’s North America Roundtable at its office in Portland’s Pearl District.  The topic was Green Branding and Sustainability Claims: Navigating Trademarks in an Eco-Conscious World this past week. It was a pleasure to get together with other trademark professionals at all levels of experience within the Pacific Northwest and discuss topics of green branding.  We also discussed experiences with brands that make sustainability claims, and examined past and on-going court cases related to these issues.

One takeaway that came from the roundtable discussion is for brands to be clear about what these green claims mean and to ensure that such statements are actionable versus aspirational.

McCoy Russell appreciates all those who came out to participate in INTA’s Roundtable – it was great to see such a fantastic turn-out within our trademark community. The firm is grateful for the opportunity to host these roundtables and looks forward to participating in future INTA functions.

John Russell is listed within the Top 25 patent prosecution attorneys in Patexia’s Patent Intelligence 2025 report. According to Patexia, this places John among the top 1% in the field. Patexia’s rankings are based on a comprehensive, data-driven analysis of activity and performance.

As one of the firm’s Founding Partners, John’s inclusion showcases the depth of experience and technical knowledge McCoy Russell LLP brings to its patent prosecution and strategy for developing intellectual portfolios.

McCoy Russell congratulates John on his recognition and appreciates his active leadership and guidance at the firm.

While strolling through Ninenzaka in Kyoto, I stumbled upon a wall adorned with intricate “Noh” masks. Traditionally used in classical Japanese performance art, these masks often represent supernatural beings transformed into human heroes who recount stories drawn from ancient literature. On stage, emotions are conveyed through stylized and deliberate gestures—but here, it seemed the artist had captured the spirit of Noh theater in the masks themselves, capturing the same expressive and hyper-stylized energy.

What particularly caught my attention was a small sign next to the artwork: “Pay 100 yen for copyright fee if you take pictures or movies,” accompanied by a slot in one of the masks for depositing coins. It was a clever approach to protecting and monetizing creative expression.

Working in intellectual property law, I appreciated the artist’s initiative. Intellectual property can be monetized in a variety of ways—through licensing agreements, joint ventures, or outright transfers of rights. This was a simple yet effective reminder of the value of creative work and the many forms that IP monetization can take. I was glad to contribute the 100 yen and support their art, while also taking a moment to continue supporting IP systems.

The largest companies in the world are spending hundreds of billions of dollars on AI research.  And while the focus is on jobs and industries that will be replace by AI, many other industries will see huge growth and development.  These industries may be adjacently related to AI either via AI’s support or AI’s dependence on these fields.  Energy, data centers, and room designs are all fields that may be less obvious when considering AI advancement, but could be the crux to its success.

In order for AI to operate, large data centers are needed.  These data centers consume enormous amounts of power to operate AI.  It is currently estimated that AI will consume 20% of global energy demand by 2030.  Thus, advancements in energy, such as wind, solar, and nuclear, could see a big rise in the years to come.  Additionally, the design and/or layout of a room to optimize a layout of a data center may be paramount to increasing functionality and safety while reducing costs.  On a smaller scale, room designs in a home or work place for AI to operate more efficiently, accurately, and safely while meeting aesthetic benchmarks may be desired.  Cybersecurity, energy consumption, and cooling are all fields that will advance with data centers during this AI boom as data has become the lifeblood of our modern economy.

Patent law plays a critical role in protecting inventive solutions and ensuring fair competition across diverse fields.  It serves as both a shield and a catalyst in these transformative industries. For room designs, it preserves the uniqueness of creative visions; for data storage centers, it fortifies the backbone of our digital world; and for new power, it underpins the safe and sustainable development of energy solutions.  At McCoy Russell, we have embraced the AI boom and are here to help innovators protect their technologies so they can continue to explore this new frontier. Contact us at [email protected].