News

McCoy Russell continues to receive recognition from Best Lawyers in Best Law Firms 2024 for Patent Law in Oregon. This recognition as a Tier 1 law firm underscores the firm’s unwavering dedication to providing elegant patent and trademark solutions for its clients and recognition among its peers in Oregon.

With a team of highly skilled staff, McCoy Russell is renowned for its holistic approach to patent law. From conducting patent searches to providing strategic guidance on international regulations, the firm offers tailored solutions to safeguard clients’ intellectual property rights and maximize the value of their inventions and develop their intellectual property portfolios.

As a part of McCoy Russell’s continued support of INTA, the firm is proud to announce its attendance to INTA’s Annual Meeting in Georgia in May. With its membership across 181 countries, INTA’s Annual Meeting is the largest gathering of its kind. Featured programming, business development, discussion on brand rights and IP innovation INTA is a unique opportunity to develop and deepen relationships and collaborate in developing ways to protect and promote the rights of Trademark owners.

An active member in Oregon’s Patent Law community, McCoy Russell is pleased to have Justin Wagner attend Oregon Patent Law Association’s (OPLA) Salishan Conference in April. This one of a kind event hosted at Salishan Costal Lodge is focused on continuing education on topics relating to Patent Law and fostering community among patent professionals in the Pacific Northwest.

McCoy Russell is proud to support OPLA and its continued efforts in bringing unique topics in Patent Law to the local community.

Recognized for his work in patent law, Wes Nicholson joins the top 6% of practicing attorneys nationwide recognized in the 2024 edition of Best Lawyer’s The Best Lawyers in America. Best Lawyers is entirely based on peer review to capture the consensus opinion of leading lawyers about the professional abilities of their colleagues within the same geographical area and legal practice area.

McCoy Russell congratulates Wes on his inclusion and recognition by Best Lawyers.

With over 15 years of experience, Wes currently supports some of McCoy Russell’s larger clients in developing their patent portfolios. Outside of the firm, he has been an active member in the Patent Law Community, serving as OPLA’s president in 2020/2021 and past president 2021/2022 bringing advanced topics in patent law and fostering community. Wes continues to partner with local organizations in presenting topics relating to patent law.

As progress in software-based innovations continues, so do legal debates surrounding the patenting of software. Following various historical twists and turns, patents have come to be granted to “processes, machines, manufactures, or compositions of matter” that are inventive—meaning novel and non-obvious—and which the inventor enables the public to practice after the patent expires. However, software abstract in ways that tangible inventions are not, and as a result software inventions have been subjected to significant additional criteria. Moreover, the line between patentable software innovation and unpatentable software innovations can be difficult to discern, which in turn complicates the patenting of software.

One of the fundamental challenges in patenting software lies in navigating the boundary of patentable subject matter. Currently, patentable subject matter doctrine revolves around the presence of language in the claims related to “judicial exceptions,” which primarily encompasses things like “abstract ideas,” “natural phenomena,” and “laws of nature.” Due to the abstract nature of software (as well as its complex relationship to mathematical algorithms), judicial exceptions have proven to be a source of contention among patent professionals, as well as in the software industry. It can be difficult to distinguish between software that avoids issues related judicial exceptions in a patentable manner, and software that includes abstract ideas or mathematical concepts in a way that will prohibit patent protection.

Additionally, some critics believe that granting patents for software innovations can inappropriately stifle competition and hinder progress. One contention is that the rapid pace of technological advancements in the software domain, and the increasingly collaborative and iterative nature of software development, the traditional patenting process—which is often time-consuming and resource-intensive—may hinder rather than foster innovation. Another contention is that granting patents for software innovations can lead to the creation of patent thickets, where a multitude of overlapping patents cover a particular technology, creating legal complexities and impeding further development.

Finally, the high number of patent infringement lawsuits in the software industry may be attributable at least in part to ambiguities surrounding the patentability of software. The lack of clear guidelines for determining the patentability of software inventions has contributed to lengthy legal battles and an environment where patent trolls exploit the system for financial gain.

In the next post, McCoy Russell will explore approaches to patenting software inventions taking these challenges into account.

McCoy Russell Partners John Russell and Justin Wagner are back from AUTM’s Annual Meeting. With over 2,000 attendees, the Annual Meeting programming was a great opportunity to learn from Technology Transfer industry professionals and experts on topics such as innovation harvesting and monetizing ChatGPT and Generative AI. John and Justin enjoyed meeting in-person with several clients and establishing new relationships as well.

The evolution of patent law pertaining to software has been a complex and dynamic process, shaped by historical roots, statutory patent law, and legal doctrines of both the Supreme Court and the Court of Appeals for the Federal Circuit. From the early days of English “letters patent” to the modern-day Mayo/Alice test, various key concepts and judicial doctrines have impacted the development of patent law relevant to software inventions.

Judicial doctrines related to patent eligibility are particularly significant to software patenting. Historically, courts have grappled with determining what types of subject matter deserve patent protection. Such determinations have been applied to software, which has rapidly advanced (following its emergence) to become a fundamental context of technological innovation.

The state of software patenting today is heavily influenced by key judicial doctrines related to Subject Matter Eligibility, Written Description, Enablement, and Best Mode, as well as (to a lesser extent) judicial doctrines related to Obviousness, Means-Plus-Function Language, and Claim Interpretation in the context of Functional Language. These doctrines provide a framework for determining the eligibility and patentability of software inventions, attempting to take into account the unique characteristics and challenges associated with software-related innovations.

As technology continues to advance, the impact of these key doctrines on software patenting will remain a focal point for patent practitioners and innovators. At McCoy Russell, we understand that navigating these doctrines is critical to effectively securing and enforcing software patents in the modern era.

In the next post, McCoy Russell explores software patents and the challenges they present in greater detail.

Supporting start-ups, iconic brands, world-renowned academic institutions, and government agencies, McCoy Russell pioneers novel solutions for data driven and streamlined patent prosecution to support its clients in securing their intellectual property needs.

In 2023 McCoy Russell filed over 1,500 patent applications and received 810 issued patents. How does McCoy Russell keep pace with substantially larger and more traditionally-run firms?

Integrated in the foundation of the firm’s collaborative structure, McCoy Russell’s “360 Review” process engages patent practitioners in the firm at all levels of experience to review every patent application drafted by the firm. Every patent application undergoes at least two, and usually three, levels of review – even if drafted by a senior patent attorney with more than 20 years of experience. This process is ever-adapting in order to keep up with the latest challenges and opportunities of the patent prosecution landscape.

McCoy Russell’s patent drafting and prosecution leverages the firm’s software arm, IronCrow IP (https://ironcrowai.com/). IronCrow AI was developed in-house to bring modern advancements in machine learning (ML) to support patent professionals in the form of time saving tools and insightful analytics. By leveraging ML and AI-tools to automate tedious tasks and provide predictive insight, patent professionals can spend more time on, and be better equipped for, the high-level strategy and lateral thinking at which they excel.

In further support of the firm’s intellectual property practice, McCoy Russell continues to enable, support, and refine its hybrid-remote work while maintaining a collaborative approach. McCoy Russell cultivates a firm culture that utilizes interactive cross-team training programs and staff wellness initiatives.

The firm’s unique collaborative structure and dedication to innovating the practice of intellectual property keeps McCoy Russell filing with quality and frequency. McCoy Russell continues to innovate and provide its clients with the quality and value they’ve come to expect.

A woman-owned firm that often flies under the radar, McCoy Russell garners recognition for its high quality patent application drafting and filing volume. The firm is proud to support some of the top 50 patent filing companies (within the USPTO) in securing their intellectual property and developing their patent portfolio.