Category

News

Changes to USPTO Small and Micro Entities

Most small and micro entity USPTO fees have decreased with the enactment of the Consolidated Appropriations Act, 2023—which included the Unleashing American Innovators Act of 2022—signed into law on December 29, 2022. The law increased small entity discounts from 50 percent to 60 percent and micro entity discounts from 75 percent to 80 percent.

For patent issue fees, the fee due is the amount appearing on the Notice of Allowance and Fees Due letter (form PTOL-85).

McCoy Russell assists small and start-up companies in protecting their innovations and has had substantial success in supporting these companies through growth stages, mergers, and acquisitions. Small and start-up companies should invest the time to determine whether they can take advantage of the reduced USPTO fees.

Top Patent Law Firms in Oregon for 2022

PORTLAND, OR, Jan. 3, 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 2022 where the patent firms were listed on the front of the patent. Included firms have over 50 patents with an Oregon inventor.

As a smaller women-owned intellectual property firm, McCoy Russell demonstrates its quality and efficiency through utilizing the firm’s unique collaborative model. McCoy Russell LLP continues to innovate and refine how we practice intellectual property law, leveraging the most from our highly-skilled staff to the benefit of our clients. Providing integrated strategies for elegant, high-quality patent and trademark solutions.

###

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

McCoy Russell’s Year In Review

A small women-owned firm that often flies under the radar, McCoy Russell continues to solidify its standing among intellectual law firms in Oregon.

McCoy Russell saw significant successes in 2022, below are the firm’s notable highlights:

  • McCoy Russell topped the charts on national patent prosecution quality and efficiency in both Technology Centers 3600 and 3700 for a second year in a row– something no other firm has been able to achieve.
  • Further demonstrating the firm’s strength in intellectual property, McCoy Russell received an award to provide patent legal services to the Naval Surface Warfare Center under a five-year contract. The firm’s quality and unique prosecution strategies previously helped secure on-going contacts with US Environmental Protection Agency, Naval Sea Warfare Center, National Institutes of Health, and U.S. Department of Health and Human Services.
  • McCoy Russell was pleased to receive federal recognition by the U.S. Women’s Chamber of Commerce (USWCC) as a certified Women-Owned Small Business. After the firm’s review with Business Oregon Certification Office for Business Inclusion and Diversity (COBID), the firm continues its certification as a Women-Owned Small Business at the local level.
  • As part of McCoy Russell’s commitment to diversity through access, the firm volunteered to assist financially under-resourced inventors and small businesses in a new program specifically directed to appeals at the USPTO.
  • McCoy Russell continues to leverage the USPTO’s LEAP Program, allowing developing attorneys and agents to gain experience before PTAB alongside a supervising attorney.
  • McCoy Russell continued its recognition in Chambers USA 2022 as one of the leading intellectual property firms in the USA, with its Attorneys Anna McCoy, John Russell, and Justin Wagner individually ranked. Further, Attorney Anna McCoy, John Russell, and Dan Evans were recognized by Super Lawyers for their practice in Oregon. The firm continues its recognition in as U.S. News – Best Lawyers “Best Law Firms” in the practice area of Patent and Trademark Law in Oregon.

The McCoy Russell team worked incredibly hard, embracing our collaborative process and creating opportunities to surprise and delight our clients in the year ahead. Our teams remained available to clients, but also to each other, working together and achieving more than if we stood alone. We hold a deep appreciation for our clients and staff, as the support of both have taken us far.

McCoy Russell looks forward to the upcoming year, with a focus on striving for simple innovations that make impactful differences in our communities’ experiences and lives. We will continue to innovate how our firm practices intellectual property law, pioneering solutions and structures to maximize the potential of our highly-skilled team to the benefit of our clients.

Dan Evans Presents for Oregon State Bar IP Section

Dan Evans recently presented “Back to Kindergarten: Prepositions in Patent Claims for Oregon State Bar’s IP Section. This presentation focused on how interpretation of a simple preposition can be the decisive question for patentability, validity, or infringement.

Dan Evans is an intellectual property attorney at McCoy Russell. His work focuses on patent prosecution and portfolio management. He serves as the treasurer for the Intellectual Property Section for the Oregon State Bar. Prior to his legal work, Dan served in the United States Army, earned a Master’s degree in Material Science Engineering and a Bachelor’s degree in Mechanical Engineering.

Full presentation

McCoy Russell Best Law Firms in Oregon 2022

McCoy Russell is once again recognized as one of the Best Law Firms in Oregon according to U.S News and Report. The firm was ranked in both Patent Law and Trademark Law, including the top tier for Patent law. Firms included in the 2022 “Best Law Firms” list are recognized professional excellence with consistently impressive ratings from clients and peers. Achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise.

High Quality Automated Drafting

As an innovative firm, McCoy Russell blends technology and law in it skunkworks software group (Ironcrow). Ironcrow has internally developed various state of the art machine learning (ML) algorithms to aid in patent drafting, prosecution, and overall portfolio management and evaluation.

One Ironcrow tool, N’spec, is a proprietary ML analytical software application that performs an automatic review of draft patent applications. The tool has provided substantial advantages to McCoy Russell’s clients in terms of enabling high quality, yet cost-effective, patent drafting.

N’spec automates tedious tasks which enables our patent professionals to spend more time focused on generating integrated strategies for elegant, high-quality patent applications. N’spec automatically checks for numbering errors, figure inconsistencies, part name conflicts, unsupported claim elements, and much more.

Ensure consistent quality, file confidently, and reduce prosecution time and expense. Learn more about Ironcrow AI’s N’spec here (https://www.ironcrowai.com/drafting/).

The results speak for themselves. For two years running, McCoy Russell, using Ironcrow’s tools, has topped the charts as a Top Patent firm in both Technology Centers 3600 and 3700. According to Juristat, “Fish & Richardson may have made the shortlist for each of the eight technology center rankings, but McCoy Russell was the only firm to rank #1 in two different technology centers. The firm earned a #1 ranking in both TC 3600 and TC 3700. A further testament to their expertise in those areas? McCoy Russell ranked #1 in those same technology centers in the 2020 rankings as well.”

Empowering Women Entrepreneurship at All Levels

Recently, the USPTO and Department of Commerce launched Women’s Entrepreneurship (WE), a community-focused, collaborative, and creative initiative to inspire women and tap their potential to meaningfully increase equity, job creation, and economic prosperity.

As one of the few women-owned technology law firms focused on intellectual property, McCoy Russell has researched the participation of women in inventorship and entrepreneurship and its connection to securing funding. The ability to protect innovation through IP is a key driver to obtaining funding, and statistics show that a significant gender gap still exists in both inventorship and funding even though Venture Capital (VC) funding continues to rise.

While introducing women to the IP System, providing resources for women entrepreneurs to make informed decisions to help secure funding, and connecting women with mentors to expand their network are a good start, additional participation from all levels is needed to shift the systems that serve as roadblocks for women entrepreneurs.

For example, navigating the complex process to receive women-owned business certifications to earn eligibility for women entrepreneur programs may make access to entry a difficult first step.  McCoy Russell knows first-hand that merely obtaining certification can be a discouraging and cumbersome process that requires tenacity and a will to persist.

To help remedy the gap, McCoy Russell has developed a multi-tier approach that involves the participation of individuals, companies, and investors in understanding the importance of fostering cultures to further bolster women at all levels of entrepreneurship (inventorship, ownership, investing, etc.) and further drive innovation revenue.  McCoy Russell attorneys have utilized this approach in partnership with some of the most innovative companies in the world to produce measurable differences.

If your organization would like to hear more about McCoy Russell’s approach for increasing women participation in intellectual property, please reach out to us.

Justin Wagner Attends AUTM Western Region Meeting

McCoy Russell attorney Justin Wagner attended the AUTM (Association of University Technology Managers) Western Region Meeting earlier this week in Portland, Oregon. AUTM is a non-profit organization with more than 3,000 members that work in over 800 universities, research centers, hospitals, businesses and government organizations around the globe. The meeting was held at the Portland Downtown Waterfront Marriott hotel.

The two-day meeting included various panels, speakers, and networking opportunities. Among the many topics discussed were the licensing of health-related data, protecting and leveraging software innovations, the culture of commercialization at academic institutions, and how to avoid certain pitfalls when navigating complex IP agreements. There was a well-attended reception at the end of the first day and several networking breaks.

This was the first large in-person meeting for AUTM since before the COVID pandemic. In fact, the AUTM annual meeting that was scheduled for March 2020 was cancelled at the last minute due to the onset of the pandemic. At this week’s region meeting, Justin enjoyed making new connections and re-connecting in person with several colleagues and clients for the first time since before the pandemic.

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. 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.

Invention Disclosures & Technology Transfer Offices

Tech Transfer offices have a wide range of responsibilities, but everything starts with receiving an invention disclosure. The quality of the invention disclosure can have a significant impact on the chances for developing a successful licensing program. As such, this post combines our direct experience with and in a tech transfer office and as outside counsel to provide guidance, particularly for those in research and academia.

While writing a research article may be second nature, writing a high quality invention disclosure requires a different skill set, and includes vastly different information. While writing an invention disclosure may sound tedious, it is anything but.

Before getting to some tips to make the process as painless as possible, it first helps to understand what a high quality disclosure is not. First, it is not a published peer-reviewed article or a finished grant application. While including such documents as an appendix can be helpful, they are not needed, and perhaps might come too late in any event. The invention disclosure is not merely a marked up version of an article. Rather, the audience and purpose of an invention disclosure requires a dedicated document, and might come even before all of the data and experiments or tests have been completed.

What a quality disclosure does need is a description of the background (state of the art), a description of the concept of the invention and how it solves technical challenges.

In other words: what is the invention? how is it made? and how is it used? In addition to a few sentences, any type pictures from a photo to a 3D rendering to a rough sketch in a lab notebook are all very helpful here. It’s okay if the invention hasn’t been made or used yet, just describe how it could be done.
The description should also include how the invention solves a technical challenge. For example, why was the invention invented? It may be a large problem or a small specific problem. Describe why the already available solutions couldn’t solve the problem, thus necessitating the invention.
Finally, a quick review of the market and potential applications for the invention can help guide a review of the disclosure so that the Tech transfer office can consider the commercial applicability (and licensing potential) of an invention.

That’s all! A tech transfer office can take the invention disclosure and start the work of evaluating, drafting, licensing, among other tasks associated with managing intellectual property.

McCoy Russell has substantial experience in assisting tech transfer offices in any and all of the steps from training sessions regarding invention disclosures to drafting and prosecution and licensing.