Posted in PCT |

Firms missing from the design patent toteboard

We now have responses from more than two dozen law firms which between them have obtained about one-seventh of all of the US design patents that were granted in 2014.  Conspicuous by their absence, however, are a few well-known firms that did quite a lot of US design patent work in 2014, including the following:

  • Cantor Colburn
  • Foley & Lardner
  • Morgan Lewis
  • Birch Stewart
  • Sterne Kessler
  • Kilpatrick
  • Nixon Vanderhye
  • Finnegan Henderson
  • Christensen O’Connor
  • Ladas & Parry
  • Wolf Greenfield
  • Oblon Spivak
  • Sheridan Ross

If you know someone at one of these firms, you might drop them a note and let them know they have six days left to respond with their information.  The toteboard will close on January 31 and the rankings will be posted in early February.

What not to do when drafting claims (lime and coconut)

In this blog post I will say a few words about what not to do when drafting claims.  First a metaphor.  Suppose the invention is the one in Harry Nilsson’s song “Coconut“.  The first draft of the proposed patent claim, prepared by your new associate, is:

1.  A method for treating a bellyache, the method carried out with respect to a lime and a coconut, the method comprising the steps of:

  • putting the lime in the coconut, and
  • drinking it all up.

Continue reading

USPTO trademark fee reduction options now available

The USPTO fee reduction options that I blogged about here (December 17, 2014) and here (May 10, 2014) went into effect over the weekend.  I invite you to start with the December 17 article if you are not already familiar with this development.

Free live audio program on design patent enforcement issues

cariniDesign patents are suddenly important — everybody gets that by now.  There are a handful of practitioners who were active in the design patent area long before design patents became fashionable, and Chris Carani is one of that handful.  This next Wednesday Chris will host a free of charge live audio program that you can and should attend if your schedule permits.

Continue reading

Some of the firms that have not yet submitted their design patent numbers

About 23,000 US design patents issued last year.  The firms that have thus far responded to be listed in the Design Patent Tote Board between them filed about 2300 design patents, or about ten percent of that total.

So as may be seen, there are still quite a few patent firms that have not yet reported their design patent totals.  Here are some of the well-known patent firms that have not yet reported their design patent totals:

If you know somebody at one of these firms, I’d be grateful if you can pass along to them a link to this blog post, so that they can complete and submit the questionnaire.  Submissions will close January 31 and the tote board will be published in February of 2015.

Urging USPTO to “drink its own Champagne”

(There is a followup posting.)

Let’s say you filed a PCT application and picked the USPTO to be your International Searching Authority.  Suppose further that ISA/US decided the claims are patentable.  When you enter the US national phase from that PCT application, may you safely assume that the USPTO will allow the application?

Continue reading

Clever associate’s trademark advocacy secret weapon revealed

It’s a few months ago that I looked at one of our trademark cases — a Madrid Protocol case that had come in from foreign counsel on behalf of a foreign applicant — and pronounced to anyone who would listen that the case was never going to be approved for publication.  I was convinced that the Examining Attorney’s grounds for refusal were impossible to overcome.   I figured it was only a matter of time before it would go abandoned.  I figured the sole remaining necessary lawyering skill would be communicating a gentle let-down to foreign counsel — an exercise in expectations management.

One of my associates was handling the case.  The other day I was astonished to learn that my associate had completely overcome the refusal.  I asked her how she accomplished this seemingly impossible result.  She smiled and explained what had happened.

Continue reading

CLE opportunity in Michigan on March 16

2015CK4720Last year the Intellectual Property Law Section of the State Bar of Michigan invited me to speak at their Spring Seminar 2014 in East Lansing, Michigan.  It was a delightful event, well organized and well attended.  From the point of view of a speaker, what’s nice is when an audience has lots of good questions.  This was such an audience.  I am delighted that they have invited me back to speak at this year’s Spring Seminar 2015.

You can see the program and brochure.  It will be Monday, March 16, again in East Lansing.  Fellow intellectual property bloggers Martin Schwimmer (The Trademark Blog) and Eugene Quinn (IPWatchdog) will also be presenting, each of them in a plenary session.

Continue reading