Author: Carl

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Followup to “Four Consecutive Fridays”

(There is a followup posting.)

On January 26 I blogged here about the earthquake that happened on January 15, in which the Swiss Franc jumped some 30% in value.  I talked about how this earthquake affected the World Intellectual Property Organization in Geneva.  I mentioned that the legacy approach to currency exchange rate shifts entailed a time lag of as much as three or four months, a time lag that would cost WIPO some millions of dollars.  I mentioned that the various patent offices around the world, in their role as PCT Receiving Offices, might or might not choose to accommodate WIPO by implementing new fee amounts sooner.  I wrote to USPTO and to EPO to urge them to accommodate WIPO in this way.  Here’s what I heard back from those patent offices …

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Glass ¾ full — many firms have handed in their design patent numbers

Here are some of the firms which by now have sent in their US design patent numbers at this questionnaire.

  • Pearne & Gordon LLP
  • Warner Norcross & Judd LLP
  • Sughrue Mion, PLLC
  • Design IP
  • QuickPatents
  • G. White Patents
  • Babcock IP, PLLC
  • Muncy, Geissler, Olds & Lowe, P.C.
  • Banner & Witcoff
  • Jacobson Holman PLLC
  • Knobbe Martens
  • Novak Druce Connolly Bove + Quigg
  • Michael J Brown Law Office
  • RatnerPrestia
  • Brown & Michaels
  • Leason Ellis LLC
  • Saidman DesignLaw Group
  • McAndrews, Held & Malloy, Ltd.
  • Leydig, Voit & Mayer
  • Westerman, Hattori, Daniels & Adrian, LLP
  • Andrus Intellectual Property Law, LLP
  • Rader Fishman & Grauer PLLC
  • Harness Dickey
  • Crowell & Morning LLP
  • Osha Liang LLP
  • Cantor Colburn LLP

These firms between them obtained about one-sixth of all of the US design patents that were granted in 2014.

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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.

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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.

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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.

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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:

  • Cantor Colburn
  • Foley & Lardner
  • Morgan Lewis
  • Birch Stewart
  • Sterne Kessler
  • Kilpatrick
  • Nixon Vanderhye
  • Crowell & Moring
  • Rader Fishman
  • Westerman Hattori
  • Finnegan Henderson
  • Christensen O’Connor
  • Harness Dickey
  • Ladas & Parry
  • Wolf Greenfield
  • Leydig Voit
  • Oblon Spivak
  • Sheridan Ross
  • McAndrews Held & Malloy

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.

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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.

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