November 2022

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.

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.

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.

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 tool that has provided substantial advantages to McCoy Russell’s clients is a proprietary ML analytical software application to provide predictive insight as to 101 rejections. The 101 rejection predictor determines the probability of each independent claim receiving an initial abstract idea rejection, identifies similar claims in the patent literature, and whether those similar claims were rejected as being abstract. The predictor also automatically identifies the most similar example from the 2019 Revised Patent Subject Matter Eligibility Guidance so help provide the drafting profession with insight as to how rejections may be applied by an examiner.

McCoy Russell never stops innovating new ways to bring modern advancements in machine learning (ML) to patent professionals in the form of time saving tools and insightful analytics.

Our tools can help minimize rejections, increase patent specification robustness, and enable effective and efficient prosecution. Learn more about Ironcrow AI’s 101 Rejection Predictor (https://www.ironcrowai.com/drafting/).