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McCoy Russell has substantial experience in supporting various start-ups spun-out from academic institutions and universities. Our experience and strategic approach considers the full technology life cycle. In this post, we provide valuable insights into intellectual property and shed light on effective IP strategies for those interested in forming a startup based on our experience over the years.

Startups are often born out of groundbreaking research and innovative ideas. To maximize the value of their IP assets, academic researchers-turned-entrepreneurs should consider the following strategies:

Prioritize IP Protection: Startups should proactively identify their core IP assets and seek appropriate protection. This may involve filing patents, trademarks, or copyrights, depending on the nature of their innovation. Adequate IP protection strengthens a startup’s competitive advantage, enhances its market position, and helps to secure funding.

Conduct Thorough IP Due Diligence: Before launching a startup, it is crucial to conduct comprehensive IP due diligence. This involves assessing the IP landscape to identify potential conflicts, infringement risks, or prior art that may impact the startup’s ability to protect its IP and its freedom to operate. Conducting due diligence early on can help avoid costly legal disputes down the road.

Develop a Robust IP Strategy: Startups should develop a comprehensive IP strategy aligned with their business goals. This includes identifying potential licensing opportunities, monitoring competitors’ IP activities, and establishing internal processes to ensure ongoing IP protection and management.

Leveraging the University-Venture Capitalist Relationship: The University-Venture Capitalist relationship is built on the foundation of shared goals and complementary expertise. VC funding may provide the necessary funding to develop and commercialize IP, bridging the gap between academia and the market. Additionally, they bring valuable expertise in business development, marketing, and scaling, ensuring the IP’s successful transition from the lab to the marketplace.

By understanding the value of IP protection and implementing effective IP strategies, researchers can maximize the value of their innovations that can transition to startups that secure a competitive edge in the market. Stay tuned for the next post in this series that will discuss common mistakes start-up teams make with intellectual property.

Transitioning from academic research to entrepreneurship requires careful consideration of intellectual property rights. Seeking guidance from IP professionals and legal experts can provide invaluable support throughout this journey, ensuring a smooth transition and long-term success. Contact McCoy Russell if you think we can be of assistance.

In the midst of this digital revolution, protecting novel innovations and nurturing future technologies have become paramount for companies and inventors alike. The advent of AI-driven algorithms, neural networks, and autonomous systems is re-defining industries ranging from healthcare and finance to transportation and entertainment. However, the journey towards these innovations is not without its challenges, and one of the foremost concerns is protecting the invaluable intellectual property that fuels these innovations.

McCoy Russell has a specialty practice as to protection of AI and machine learning inventions. This specialty practice includes team members who have extensive practice drafting, prosecuting and protecting deep learning inventions. The dynamic nature of AI/ML technologies demands a thorough understanding of how these innovations function and their potential implications across various sectors. The practice leverages the firm’s technical specialists’ backgrounds and experience.

McCoy Russell’s AI and machine learning work extends across a number of broad industries. Drafting and coordinated strategies have been prepared for coverage of developments related to deep learning, neural networks, convolutional networks, network training, adaptive learning, and mapping across a range of fields including image processing, speech processing, automatic controls, diagnostics, machine vision, robotics, virtual reality, blockchain, Internet of Things (IoT), medical data analysis, and other big data analytics, including insurance claim analysis.

Software applications have notoriously faced challenges at the U.S. Patent and Trademark Office due to Alice 101 rejections. McCoy Russell has developed and utilizes a highly successful approach which integrates searching, drafting and prosecution to be successful in overcoming Alice rejections and securing protections for such innovations. Please contact us if we can be of help to you.

In the rapidly evolving technological landscape, academic and research institutions play a crucial role in driving innovation and advancing knowledge. Universities, research institutions, and businesses are at the forefront of this innovation, constantly pushing the boundaries of what’s possible. In anticipation for the upcoming AUTM Regional Meeting, McCoy Russell explores the functions, strengths, and the benefits of collaborative approaches to support technology transfer offices (TTOs) in safeguarding intellectual property.

TTOs serve as the bridge between academia and industry, facilitating the commercialization of innovative research and inventions. Their primary responsibility is to protect and manage the intellectual property generated within academic and research institutions. This involves identifying patentable inventions, filing patent applications, negotiating licensing agreements, securing funding and grants, and supporting the transfer of technology to the marketplace.

The strengths of these offices are their expertise, often consisting of professionals well-versed in IP law, business development, and technology transfer. Their expertise ensures that IP is adequately protected and commercialized.

However, with everything on their plates and limited resources, TTO’s can strategically partner with intellectual property firms and other Professionals to efficiently support innovators and entrepreneurs within the institution. Partnering with an external intellectual property firm can provide TTO’s and their innovators with extended technical expertise, resource management, and strategic planning to enable cost effective patent services to maximize the value and impact for the institution.

Further, collaborating with intellectual property firms and other industry professionals, TTO’s can form strategic partnerships. That is, partnerships that not only address legal protection and enforcement support, but that also provide networking opportunities connecting industry professionals with potential partners, suppliers, and customers within the academic and research ecosystem.

McCoy Russell recognizes that collaboration between TTOs, IP firms, and other industry professionals forms a dynamic ecosystem that fosters innovation, drives economic growth, and protects intellectual property. The firm will be present at the upcoming AUTM (Association of University Technology Managers) Western Region Meeting later this month connecting with new and familiar faces, collaborating with TTO’s and other industry professionals helps ensure that innovative research and inventions are protected and successfully commercialized. Together, we can foster a thriving ecosystem of innovation.

McCoy Russell understands the importance of regularly reviewing and updating a business’s IP portfolio and related strategy. Intellectual property assets are constantly evolving, and it is advantageous to ensure that your portfolio remains aligned with your evolving business goals and technological advancements.

By regularly reviewing your IP portfolio, you can identify any gaps or areas that may need additional protection. This proactive approach allows you to address any potential vulnerabilities before they become a problem. It also ensures that your portfolio provides comprehensive protection for your valuable intellectual property assets.

Technological advancements play a significant role in today’s business landscape. New technologies emerge, and existing ones evolve at a rapid pace. By staying up-to-date with these advancements, you can identify opportunities to enhance your IP portfolio. This may include filing new patent applications to protect innovative products or processes, or modify claims of pending applications to cover improvements or modifications.

Furthermore, reviewing and updating your IP portfolio allows you to align it with your evolving business goals. As your business expands into new markets or introduces new products or services, your IP strategy needs to adapt accordingly. By regularly assessing your portfolio, you can ensure that it supports your business objectives and provides the necessary protection in the areas that matter most to your company.

In addition to protecting your intellectual property assets, regularly reviewing and updating your portfolio and strategy can also have financial benefits. By identifying and addressing any gaps or weaknesses, you can avoid continuing with annuities or maintenance fees of applications no longer core to the business and for which infringement by competitors is unlikely or irrelevant to the business. It also allows you to optimize your IP strategy, ensuring that you are not wasting resources on unnecessary or ineffective protection.

To effectively review and update your IP portfolio, it is advisable to seek the assistance of an experienced intellectual property law firm. They can provide valuable insights and guidance, helping you identify areas that may need attention and suggesting strategies to enhance your portfolio’s protection.

McCoy Russell has the experience and expertise to provide the necessary guidance to ensure that your portfolio remains aligned with your evolving business goals and technological advancements. The firm is dedicated to providing comprehensive and tailored solutions for intellectual property needs. McCoy Russell’s expertise in IP law, combined with the understanding of the ever-changing business landscape, allows the firm to assist business’s in regularly reviewing and updating your IP portfolio effectively.

Focused on the prosecution and development of patent and trademark portfolios, McCoy Russell shares first steps that every business, whether budding or established, can take to secure their intellectual property.

The foundation of robust IP protection lies in the clarity and precision of your ideas. Begin by meticulously documenting your innovations, inventions, and creative expressions. This can range from sketches and prototypes to written descriptions and code snippets. Comprehensive records serve as your armor, should the need for legal validation arise.

Why Documenting Your Ideas Matters
Documentation serves as the first line of defense and validation. When an idea crystallizes in your mind, it is crucial to capture it in its nascent form. Detailed documentation, including sketches, diagrams, design plans, technical specifications, and written descriptions, not only immortalizes your vision but also provides substantial evidence of your innovation’s origin.

The Power of Comprehensive Records
Comprehensive Records serve as a testament to the uniqueness of your invention or creation, which is pivotal in establishing ownership rights. In cases of disputes or challenges, thorough documentation becomes a shield that protects your intellectual property rights by show casing the evolution of your idea.

Creating a Trail of Evidence
Picture this: A few years down the line, your innovation has taken the market by storm. Yet, an unscrupulous entity claims that your creation is, in fact, their brainchild. This is where your meticulously documented journey comes to the rescue. From initial concept sketches to brainstorming sessions, every step is a breadcrumb trail of your creative endeavor.

Documentation and Idea Mapping creates a roadmap for developing your IP portfolio further. McCoy Russell’s portfolio-based approach drives other aspects of portfolio development beyond patent drafting and prosecution, including landscape reviews, targeted brainstorming, and searching.

Request a copy of McCoy Russell’s IP Checklist by emailing [email protected] and start developing your brand’s rights and intellectual property portfolio.

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.

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.

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.

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.