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China’s Patent Landscape Shifts: Restoration of Priority Claims Now Accepted

China is set to revolutionize its patent landscape with the forthcoming implementation of the Detailed Implementing Regulation of the Chinese Patent Law. Scheduled for January 20, 2024, this move signifies a major stride in the evolution of China’s patent application process.

A key feature of the new regulations is the acceptance of the restoration of priority claims. Applicants for Chinese invention patents or utility models will now have the opportunity to restore their claims if filed between 12 and 14 months from the priority date, contingent upon providing a valid reason for the delay.

The flexibility extends to Chinese national applications based on PCT international applications, introducing conditions for restoration after entering the Chinese national phase. The term “sound reason” is employed for justification, with initial indications suggesting a lenient approach by CNIPA, potentially aligning with instances where a simple payment of restoration fees has sufficed.

Notably, the guidelines do not explicitly outline whether CNIPA will favor a “due care” or “unintentionality” criterion for priority claim restoration, setting a more flexible tone compared to European or Japanese standards and bringing it closer to the U.S. approach. As we approach this transformative effective date, McCoy Russell makes note of these changes is hopeful these changes mark a significant step toward fostering innovation and streamlining the patent application process in China.

McCoy Russell Welcomes Justin Wagner as Partner

McCoy Russell is pleased to welcome new partner Justin Wagner in recognition of his exceptional legal skills and service to our clients. Justin’s addition will support and strengthen the firm’s growing national and international intellectual property practice supporting entrepreneurs, growing technology companies, and established national leaders. Justin has demonstrated not only his technical experience and legal expertise, but also his leadership. While making efforts to foster community here at the firm, Justin takes an active role in the Technology Transfer community via AUTM, serving on its committees and locally as President of the Oregon Patent Law Association.

With over 20 years of experience, Justin represents clients in various capacities in patent matters, including the preparation and prosecution of patent applications before the USPTO, portfolio strategy development, patent appeals, patentability studies, validity evaluations, and infringement analysis.
Justin has drafted and prosecuted patent applications in a wide range of fields, including electrical systems, electronic components, medical devices, and enterprise software. He leverages his prior experience as a software developer at a global management consulting company and an electrical engineer at a leading document scanner company. Justin is a proud member of Institute of Electrical and Electronics Engineers (IEEE).

Congratulations Justin Wagner, we welcome you as a McCoy Russell Partner.

Top Patent Law Firms in Oregon for 2023

PORTLAND, OR, Jan. 2, 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 2023 where the patent firms were listed on the front of the patent. Included firms have over 50 patents with an Oregon inventor.

As one of the few women-owned intellectual property firms with a national practice, McCoy Russell continues to be a major player. McCoy Russell LLP continues to innovate and refine how we practice intellectual property law, leveraging the most from our highly-skilled administrative and technical staff to the benefit of our clients. The firm provides integrated strategies for elegant, high-quality patent and trademark solutions and intellectual portfolio development.

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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 2023 in Review

McCoy Russell continues to solidify its standing as an elite boutique among intellectual property law firms in the US.

McCoy Russell saw significant successes in 2023 – below are some of the firm’s notable highlights:

McCoy Russell’s software arm, IroncrowAI, released its specialized AI LLM Sandbox that has achieved a score above the 70% threshold required to pass the patent bar exam.  While other researchers have developed tools to pass a state bar exam, none have developed a model that successfully passed the specialized patent bar exam administered by the USPTO.This remarkable feat showcases the innovative approach taken by McCoy Russell.

McCoy Russell also continues to top the charts on national patent prosecution quality and efficiency in both Technology Centers (TCs) 3600 and 3700 with recognition as the top performing patent firm in TC 3700 for a third year running by Juristat.

The firm continues its 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 state level.

McCoy Russell provide more experiences to developing attorneys and agents before the PTAB by leverage the USPTO’s LEAP Program.

Chambers USA 2023 again recognized McCoy Russell 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 and John Russell were recognized by Super Lawyers for their practice in Oregon. The firm continues its recognition in U.S. News – Best Lawyers “Best Law Firms” in the practice area of Patent and Trademark Law in Oregon.

McCoy Russell strengthened its deep relationships with its network of trusted foreign associates in numerous jurisdictions including China, Europe, Japan, and South Korea through various international conferences including most recent INTA Annual Meeting in Singapore.

The McCoy Russell team worked incredibly hard, embracing its collaborative process and creating opportunities.  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 to be active listeners to create strategic 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.

McCoy Russell LLP Celebrates Trademark Milestone

McCoy Russell LLP is thrilled to announce that the United States Patent and Trademark Office (USPTO) has issued a Notice of Acceptance and Acknowledgement for the Declaration of Use and Affidavit of Incontestability for the trademark “MCCOY RUSSELL LLP” (Reg. No. 5,473,241).

This latest development underscores the firm’s commitment to excellence in the field of intellectual property law. The registration covers Class 45 services, specifically legal services involving the representation of clients in matters related to intellectual property law.

Trademark Registration Particulars:
Mark: MCCOY RUSSELL LLP
Registration Number: 5,473,241
Class: Class 45
Services: Legal services, namely, representation of clients in intellectual property law matters

The Notice of Acceptance signifies not only the successful registration of McCoy Russell LLP’s trademark but also the recognition of the firm’s unwavering dedication to providing top-notch legal services in the realm of intellectual property. This milestone is a testament to the expertise and professionalism of McCoy Russell LLP’s trademark and branding specialty practice.

As McCoy Russell LLP continues to grow and excel, this trademark registration serves as a symbol of the firm’s dedication to providing exceptional legal services. The Notice of Acceptance is not just a legal formality; it is a reflection of McCoy Russell LLP’s ongoing commitment to diligence in serving clients in the realm of intellectual property law.

The firm looks forward to continuing its tradition of legal diligence and innovation in the field of intellectual property, and this latest achievement further solidifies McCoy Russell LLP’s position as a trusted legal partner for clients seeking expertise in intellectual property law matters.

USPTO Launches Semiconductor Technology Pilot Program

In a strategic move to support semiconductor innovation, the U.S. Patent and Trademark Office (USPTO) has unveiled the Semiconductor Technology Pilot Program. Developed in support of the CHIPS for America program, this initiative aims to expedite the examination of qualifying utility patent applications, fostering research, development, and innovation in semiconductor manufacturing.
The Semiconductor Technology Pilot Program is specifically tailored to expedite the examination of patent applications focused on certain processes and apparatuses for manufacturing semiconductor devices. Qualifying non-provisional utility patent applications will be accorded special status, advancing out of turn for examination until a first action is taken. Notably, applicants are not required to meet the current criteria of either the accelerated examination program or the prioritized examination program to qualify for this unique initiative.

By expediting the process, the program aims to facilitate the swift introduction of key innovations to the market, thereby fortifying the nation’s supply chain. Vidal emphasized that the initiative is geared towards reducing dependence on foreign supplies of semiconductor chips, a critical component in various industries ranging from phones to automobiles.

The USPTO will commence accepting petitions to participate in the Semiconductor Technology Pilot Program on December 1, 2023. The program is slated to run until December 2, 2024, or until the USPTO accepts 1,000 grantable petitions, whichever milestone is reached first. This timeline reflects a commitment to efficiency and expeditious processing, aligning with the overarching objectives of the CHIPS for America program.

McCoy Russell has seen significant success in the area of semi-conductor technologies with its prosecution staff having backgrounds across chemistry, electrical engineering, material sciences, and mechanical engineering. Contact us if you think we can be of assistance.

McCoy Russell End of Year

Recently, the firm held its Annual End of Year meeting. McCoy Russell’s firm-wide meeting is an opportunity to showcase the culmination of everyone’s efforts at firm, align goals for the next year, and thank the technical and legal administrative teams.

Following the Annual End of Year Meeting, McCoy Russell hosted a Karaoke Holiday event to celebrate a strong year! It was great to gather, cheer, and sing out the night.

McCoy Russell 2024 Best Law Firm

McCoy Russell continues to receive recognition from Best Lawyers, Best Law Firms in 2024 for the firm’s practice in Patent and Trademark Law in Oregon.

As a woman-owned firm that often flies under the radar, McCoy Russell remains at the forefront of intellectual property with its award winning trainings, elegant patent and trademark strategies, and focus in developing diverse intellectual property portfolios for its clients. Further, the firm takes an active role in developing technologies to support patent professionals in navigating and adapting to the USPTO procedure through its skunkworks project, Ironcrow AI.

Anna McCoy “Trademark Star” 2023

McCoy Russell congratulates Anna McCoy on her continued inclusion as a Trademark Star for 2023 by IP Stars. As a responsive and progressive portfolio development firm, Anna spearheads McCoy Russell’s specialty practice on branding development for its clients. The firm has established itself as a partner with its clients in developing strong branding rights.

Well-known mark protection, trade dress and product configuration, and world-wide portfolio development and management comprise the cornerstones of McCoy Russell’s branding practice.

McCoy Russell’s trademark practice includes trademark searches, brand analysis, trademark filings, preparation of tiered strategic worldwide filing recommendations, brand due diligence, IP audits, review of branding agreements, assignments, renewals as well as in-house trademark training and customs registrations. McCoy Russel pursues filings and enforcement in over 130 countries coordinating with a team of trusted IP colleagues.

McCoy Russell has an active conflict practice with over 250 currently active worldwide conflict matters (opposition and cancellation proceedings).

Congratulations to Anna McCoy on her recognition as a Trademark Star in 2023.

Navigating Design Patent Claims for Computer-Generated Images: USPTO Issues Guidance

In a move to address the evolving landscape of digital designs and emerging technologies, the United States Patent and Trademark Office (USPTO) has recently issued supplemental guidance for its personnel in evaluating design patent claims involving computer-generated electronic images (https://www.federalregister.gov/documents/2023/11/17/2023-25473/supplemental-guidance-for-examination-of-design-patent-applications-related-to-computer-generated). This guidance, effective as of November 17, 2023, aims to provide clarity on the eligibility criteria for design patent protection in the realm of computer-generated images.

The genesis of this guidance can be traced back to the USPTO’s request for public input in December 2020, seeking opinions on the interpretation of the article of manufacture requirement in the United States Code. Acknowledging the rapidly advancing digital era, the USPTO has recognized the need for nuanced guidance to ensure robust and reliable patents for designs that encompass new technologies.

The guidance emphasizes adherence to the article of manufacture requirement outlined in 35 U.S.C. 171, encompassing designs for surface indicia, the shape or configuration of an article, or a combination thereof. A pivotal focus lies on computer-generated icons (commonly referred to as “computer icons”) and graphical user interfaces (GUIs), with the condition that they must be integral and active components in the operation of a programmed computer.

Crucial Takeaways for Patent Applicants:

Functional Integration: Design patent claims for computer-generated images should highlight their role as integral and active components in a computer’s operation, going beyond mere display.

Claim Language: Titles and claims should not solely focus on the computer icon or GUI but should explicitly mention the article of manufacture, such as a “display panel with computer icon.”

Review Criteria: USPTO personnel are instructed to thoroughly review titles, claim language, and drawings to ascertain compliance with the article of manufacture requirement.

Examples for Clarity: The guidance provides practical examples illustrating compliant and non-compliant design claims, offering patent applicants a clearer understanding of the USPTO’s expectations.

Public Engagement and Feedback: Recognizing the significance of public input, the USPTO actively invites comments on the supplemental guidance. This inclusive approach reflects the agency’s commitment to ensuring a fair, efficient, and effective intellectual property ecosystem.

As a firm with a substantial cutting-edge design practice, McCoy Russell has the experience and technical expertise to ensure adherence to the USPTO’s shifting policies as the digital landscape continues to shape the future of innovation. Patent applicants and practitioners at the firm are encouraged to engage with this guidance to enhance their understanding of the evolving standards in intellectual property law.