News

The U.S. Patent and Trademark Office (USPTO) recently announced that it will be terminating the After Final Consideration Pilot Program 2.0 (AFCP 2.0). This decision follows public feedback expressing hesitancy toward the proposed fee for participation in the program. Consequently, the program will end on December 15, 2024, with the Office no longer accepting requests after December 14, 2024.

As some background, AFCP 2.0 was introduced as a means of fostering better communication between the USPTO and patent applicants while streamlining the patent prosecution process. It allowed patent examiners extra time, at no cost to applicants, to review and consider responses following a final rejection. This time could also be used to schedule and conduct interviews with applicants if their response did not place the application in condition for allowance.

As AFCP 2.0 nears its expiration, it is essential to consider its potential impact on patent applicants and the broader patent prosecution process, which includes the following considerations:

• Increased Formality After Final Rejection: Without the additional review time provided by AFCP 2.0, patent applicants may encounter a more formalized and potentially rigid prosecution process after a final rejection. This could lead to a rise in Requests for Continued Examination (RCE) filings, which would increase both the time and cost of the prosecution process.
• More Strategic Responses Required: In the absence of the additional review time under AFCP 2.0, applicants may need to adopt more strategic approaches when responding to non-final rejections. This could involve introducing additional claim amendments or arguments earlier in the process to reduce final rejections.
• Potential Backlog Increase: A rise in RCE filings could contribute to an existing backlog of patent applications at the USPTO, further delaying the processing time for applicants seeking patent protection for their innovations.

The expiration of AFCP 2.0 signals a subtle shift in the patent prosecution process, particularly when dealing with final rejections. Applicant may wish to re-evaluate their prosecution processes before the program closes at the end of day on December 14, 2024.

Hosted in Phoenix, Arizona September 23-25, AUTM’s Western Region Meeting brought together leaders and experts from both academia and industry to explore the latest advancements, challenges, and opportunities in technology transfer.

McCoy Russell Partner Justin Wagner had the opportunity to attend informative panels such as a presentation regarding the latest double patenting updates by Rivka Monheit and Donna Cyr and a panel about evaluating IP disclosures using AI, as well as panels discussing the ever-increasing prevalence of AI in patent procurement.

The AI-centered themes at the Western Region Meeting align with IronCrow AI, a technology spinoff from McCoy Russell, which incorporates the use of AI in its toolkit.  IronCrow AI serves to empower patent professionals with cutting-edge solutions, enhancing their ability to innovate and excel in the rapidly evolving field of intellectual property.

The AUTM Western Region Meeting provides a unique platform for professionals to come together, collaborate, and share knowledge. Justin, along with many esteemed peers in AUTM’s Western Region Meeting Planning Committee, have contributed to shaping an engaging, informative, and entertaining experience for all attendees.

In the world of e-commerce, platforms like Amazon and eBay provide a global stage for small businesses and individual sellers to offer innovative products to an increased number of potential consumers. However, the issue of intellectual property infringement—where sellers may unknowingly or deliberately sell counterfeit or unauthorized items—has become a major concern.

On the surface, e-commerce platforms have established policies and systems to tackle intellectual property violations, such as Amazon’s Brand Registry and eBay’s Verified Rights Owner (VeRO) Program, designed to protect brands from counterfeit goods and unauthorized sales. These programs allow rights holders to report infringements, leading to the removal of offending listings after review.

However, the reality is that these platforms do not enforce the full scope of activities that constitute infringement. The law prohibits making, using, selling, or importing a patented product. Each listed activity is sufficient, on its own, to constitute infringement. Nevertheless, most platforms focus only on selling, while tolerating other forms of infringement.

Consider an example. Barry invented a new product and patented it in the United States and China. At some point, Barry notices an unexpected sudden drop in sales, and discovers that an unaffiliated manufacturer based in China is selling the same product on eBay at a price 10% cheaper than Barry.

In theory, either the United States patent or the Chinese patent should be able to prevent sale of the infringing products to customers in the United States. The United States patent prevents it because the manufacturer is importing and selling the products in the United States, and the Chinese patent prevents it assuming the manufacturer is making the products in China. However, when Barry submits a request to eBay to remove the listing based on the Chinese patent, his request is denied on the basis that the seller has set up the listing so that the product can only be sold outside of China. In our example, Barry should still be able to remove the listing based on the United States patent. But what happens if Barry had not pursued a US patent, or it has not yet issued? Even though making the product in China is infringement of Barry’s Chinese patent, e-commerce platforms like eBay will generally not take action unless the infringing product is also sold in China.

E-commerce platforms understandably prefer to have a straightforward rule, where a listing is only taken down if it is patented in a country where it is being offered for sale. But such a rule does not always accurately reflect the law. By having standard practices like this, e-commerce platforms prioritize simplicity over getting the right result.

At McCoy Russell, we have experience in working with e-commerce platforms to achieve the right result, even when it is counter to the standard practices of the e-commerce platforms. We have a proven track record of navigating the complexities of e-commerce platforms, ensuring that our clients’ intellectual property rights are enforced effectively, even when the platform’s standard practices fall short.

McCoy Russell’s partner, Justin Wagner, is headed to AUTM’s Western Regional Meeting, a premier conference dedicated to Technology Transfer Offices (TTOs) and their professionals. Hosted by AUTM, the conference gathers leaders and experts from both academia and industry to explore the latest advancements, challenges, and opportunities in technology transfer.

Justin looks forward to expand his insights, forge new connections, and strengthen existing relationships within the tech transfer community. His commitment to supporting Technology Transfer extends beyond attendance—he has taken an active role in the planning process. Justin, along with many esteemed peers in AUTM’s Western Region Meeting Planning Committee, have contributed to shaping an engaging, informative, and entertaining experience for all attendees.

The AUTM Western Regional Meeting provides a unique platform for professionals to come together, collaborate, and share knowledge. It fosters networking among academic institutions and industry stakeholders, enhancing the transfer of technology innovations from research to market. With its focus on learning and networking, the conference promises to be a valuable experience for participants aiming to stay at the forefront of technology transfer.

Justin Wagner and McCoy Russell continue their active involvement in industry developments and supporting the broader technology transfer ecosystem.

With years of experience and a deep understanding of the unique challenges faced by universities, research centers, and other Technology Transfer Offices (TTOs), McCoy Russell offers tailored solutions designed to ensure the successful transfer of innovative technologies from the lab to the marketplace. The firm continues its support and active role in the Technology Transfer community by supporting its TTO clients, volunteering with AUTM, participating in their events, and discussing with other TTO professionals their experience in the patent and trademark system.

McCoy Russell’s experience and strategic approach consider the full technology life cycle, from the evaluation stage to portfolio creation and development to licensing and post-grant proceedings.

At the forefront of thought leadership, McCoy Russell also assists technology transfer offices by providing training programs for students, faculty, and staff to improve the efficiency and quality of patent filings. In addition to educational programs, we have 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 (https://www.mccrus.com/2021/12/07/focusing-on-technology-innovation/).

While technology transfer work requires expertise in navigating complex rules and regulations, we take special care to ensure regulatory compliance as to government-funded work and work subject to government contracts. Requirements of the Bayh-Dole Act are front and center to effectively advise technology transfer offices.

Businesses and individuals who invest in obtaining a patent are often understandably frustrated when others begin selling knock-off products. After all, they’ve already gone through the time and expense of developing their product and pursuing a patent. But an issued patent does not automatically stop all infringement, but rather represents an enforceable right that must be enforced by the patent owner.

Of course, filing a lawsuit against the infringer is an option. But patent litigation is extremely expensive, with some estimates suggesting an average cost of $3.5 million. Even with a strong case and relatively simple issues, the cost of litigating can vastly outweigh any potential recovery from the other party.

Regrettably, these economic realities discourage many small businesses and individuals from adequately enforcing their intellectual property. At McCoy Russell LLP, we believe patent owners should not have to tolerate infringement, regardless of whether they can spend millions on a patent infringement lawsuit. Our attorneys are experienced with assisting clients with alternative enforcement mechanisms, such as submitting take-down requests through Amazon or other sites, which may be far less expensive than filing a lawsuit while still making a big impact toward curbing infringement.

McCoy Russell is pleased to have its Attorneys recognized in Best Lawyers for 2025 for their work in patents and trademarks. This peer reviewed publication recognizes the top 6% of attorneys nationwide.  Among those professionals recognized are McCoy Russell’s Anna McCoy, John Russell, and Justin Wagner.

The firm is pleased to see its Attorneys being recognized for their experience and expertise in the field of intellectual property law.

Recognition by Best Lawyers is determined through a rigorous peer review process. This approach is meticulously designed to accurately capture the consensus of distinguished attorneys regarding the professional qualifications and capabilities of their peers within the same geographic region and legal practice area.

Since 2019, McCoy Russell continues to be certified as a Woman Business Enterprise (WBE) in Oregon. The Certification Office for Business Inclusion and Diversity (COBID) confirms that our firm consistently meets the state’s eligibility requirements, as specified in OAR 123-200-1000 through 2300, with a thorough review of our eligibility conducted every three years.

This certification highlights our firm’s unwavering commitment to high standards and demonstrates our dedication to fostering diversity and inclusion in the field of intellectual property law.

A proud supporter of AUTM and its programming for technology transfer professionals, McCoy Russell will be attending AUTM’s Western Region Meeting next month in Phoenix, Arizona. Partner Justin Wagner takes an active role with AUTM’s Western Region Meeting Planning Committee to help make the regional meeting engaging, fulfilling, and entertaining for all the attendees.

The upcoming AUTM Western Region Meeting in Phoenix will be the premier technology transfer conference of the year in the region. Attending offers a unique opportunity for academic and industry professionals to come together and learn and network. Justin looks forward to expanding insights, forging new connections, and strengthening existing relationships.