March 2023

McCoy Russell congratulates the National Institute of Allergy and Infectious Diseases (NIAID) for being one of the few recipients for the USPTO’s Patents for Humanity Award in the category of COVID-19. Winners receive an acceleration certificate to expedite select proceedings at the USPTO, along with public recognition of their work.

As one of NIH’s contracted law firms, McCoy Russell was invited to participate in the information session held March 23 covering the details of the acceleration certificate. McCoy Russell has substantial experience in biotechnology and medical devices, as well as with these special USPTO procedures, and looks forward to continuing to support the NIH in developing and securing its intellectual property.

Continuing to take an active role the startup community in Portland, McCoy Russell is pleased to support Doug Wells as he continues his involvement with SCORE as a Subject Matter Expert. Doug will be ad-hoc counseling SCORE Mentors and helping with outreach to improve awareness of SCORE resources to help people in northwestern Oregon start and grow business.

Doug will be presenting at SCORE’s March Mentorship meeting on Intellectual Property.

McCoy Russell congratulates Marina Chong on passing the Patent Bar Exam. Marina Chong is now a Patent Agent with the firm providing technical expertise over a wide range of scientific and chemistry fields.

She is looking forward to gaining more experience with patent prosecution, communication with Examiners, and helping clients developing their intellectual property portfolios. Outside of the firm, she is “further looking forward to the looks of confusion she will receive from those not familiar with the intellectual property world”, when she explains that she is now a patent agent.

McCoy Russell congratulates Co-founding Partner Anna McCoy on her inclusion in WTR1000 – The World’s Leading Trademark Professionals 2023. Anna is recommended as an expert, being a “hands-on partner who tailor makes her solutions and never gives cookie-cutter advice” notes the publication.

Anna spearheads McCoy Russell’s active trademark specialty practice and is active in developing patent prosecution strategies at the firm including a specialty in design patents.

McCoy Russell is a boutique women-owned intellectual property firm focused on the prosecution and development of patent and trademark portfolios. The practice spans all areas of IP law, including helping clients build strong patent and trademark portfolios, and helping them obtain value through licensing and enforcement of portfolio assets.

Free Patent Examiner and Art Unit statistics are officially live at ironcrowai.com/prosecution-statistics.

IronCrow AI, the software arm of McCoy Russell, has compiled prosecution statistics for all 10,000+ patent Examiners and 500+ Art Units in the USPTO. These Art Unit and Examiner statistics include:

Allowance Rate: The percentage of all applications under a given Examiner or Art Unit which are eventually allowed.

Allowance Rate Comparison: A bar chart showing the allowance rate of a given Examiner/Art Unit relative to other organizational units within the USPTO.

Prosecution Timeline: A timeline showing how the population of pending applications under a given Examiner or Art Unit evolves over time (e.g., by being allowed or abandoned).

Prosecution Speed: Estimates the amount of time between filing an application and reaching final disposition under a particular Examiner or Art Unit. Equivalent to the half-life of a pending application.

Office Actions: The total number of Office Actions issued by an Examiner or Art Unit divided by the total number of applications processed by that Examiner/Art Unit, can be thought of as the likely number of Office Actions issued for an application before a final disposition is reached.

Restrictions: The total number of restriction requirements issued by an Examiner or Art Unit divided by the total number of applications processed by that Examiner/Art Unit. Equivalent to the probability of receiving a restriction requirement.

Interview Benefit: The allowance rate for applications in which at least one Examiner interview is conducted minus the allowance rate for applications in which no Examiner interview is conducted.

Appeal Success Rate: The percentage of appeals in which the Examiner or Art Unit is reversed.

Examiner Contact Info: The email address and phone number for all active patent Examiners.

High-priced firms have been taking advantage of paid examiner statistics for a long time because they know that the data helps. With free, up-to-date prosecution data, every patent practitioner can now be on a level playing field. Make patent examiner statistics a part of your practice today by accessing this free resource at ironcrowai.com/prosecution-statistics.

Encountering failures during the innovation process is inevitable. As discussed in Part 1 (link here), these failures along with the identified solutions can and should be part of an overall integrated strategy for building an intellectual portfolio that maximizes valuation. However, inventors are often so focused on protecting what went right, that they forget to protect what went wrong. Additional prompts may be needed to pull out all protectable aspects around a new technology and ensure that the coverage includes both the successes and the failures.

Below are some sample questions you might use when working with inventors to ensure that a comprehensive IP strategy is developed that protects the full scope of the invention.

What problems were encountered when developing the invention, and what were the successful and unsuccessful ways you tried to solve them?

Conception to successful implementation almost never occurs without encountering some problems and failures along the way. As discussed in Part I, not only are the successful approaches valuable, but the less than optimal solutions can also be valuable valuable intellectual property.

What goes wrong if you substitute a material or if process parameters go outside of disclosed ranges?

Often, inventing a new product or process can also include figuring out how to break the product or process by pushing operating parameters too far or trying common substitutions for certain materials. Inventors may be able to share insights as to interesting outcomes that occurred and how the invention failed.

Are there differences between how the invention was originally conceived and how it has been put into practice?

Similar to problems encountered during development, this question may prompt inventors to discuss any unexpected outcomes that resulted in a design or strategy pivot during development.

We hope these questions will help you pursue IP protection that considers the full scope of an invention, whether in patent filings or as a negative trade secret.

McCoy Russell recognizes and celebrates the contributions of women to the world of intellectual property. From inventors and scientists to lawyers and business leaders, women have played a vital role in shaping the landscape of innovation and creativity. To celebrate, the firm created a short video to share with its staff highlights the stores of four innovators whose impact in their day may have been overlooked but overtime gained recognition, and the lessons we can take away.

McCoy Russell is a women-owned technology-focused law firm that often flies under the radar. Our commitment to inclusion extends to the top levels of our management structure. A majority of our senior staff and supervisors are women, as well as half of our Technology Specialist staff. We advocate for approaches that encourage company support, women’s actions, and investor awareness to enhance women participation at all levels.

McCoy Russell developed a special training and awareness programs to help companies encourage and support women innovators and is available to consult company management on such issues. Please contact us if you think we can provide assistance.

Failure is an inevitable and often necessary part of the technology innovation process. Without the ability to experiment and take risks, there can be no true progress. When a new technology is being developed, it is common for there to be setbacks and obstacles along the way. This can range from a product not functioning as intended, to a company failing to gain traction in the market. But it is important to remember that these failures are not the end of the road, but rather a learning experience that can be used to improve and drive the development process forward. In fact, some of the greatest technological advancements have come from individuals and companies who were not discouraged by initial failures, but instead took them as opportunities to reassess and re-strategize. So, instead of viewing failure as a negative outcome, it is essential to embrace it as a natural and essential aspect of the innovation process.

However, not only should Inventors know that most successful inventions occur after first figuring out how not do something, but also that these failures can be a hidden source of value. Some might just think that failures are a forgone part of inventing and researching so as to overlook them when considering protecting their intellectual property. However, savvy entrepreneurs instead know that protecting the hard won knowledge from failures is an important part of an IP strategy. The failures can be disclosed and protected as claims in a patent application to help form a fence around important technology. Or, the failures can be excluded from patent filings so as to keep them as a trade secret, sometimes referred to as a negative trade secret.

In other words, depending on the business strategy, these valuable failures can be included in patent filings to create a fence around the most successful solution, or be excluded from disclosure and held as a negative trade secret.

Stay tuned for our next post that provides some questions to help the IP professional first identify valuable failures along the technology development path, and second to determine a protection strategy .

McCoy Russell Attorney Justin Wagner returns from the 2023 AUTM Annual Meeting, the largest gathering of Tech Transfer Professionals, which was held last week in Austin, Texas.

Connecting with new professionals and reconnecting with familiar faces, Justin continues the conversation with Technology Transfer Offices to help develop intellectual property strategy.

Justin is grateful for his experience at the AUTM Annual Meeting, which “was an incredible experience highlighted by many excellent panels receptions, keynotes, and a fireside chat with Kathi Vidal, Under Secretary of Commerce for IP and USPTO Director.”

Among the many topics covered at the event was the continuing evolution of intellectual property practice outside the United States, such as the implementation of the Unitary Patent at the European Patent Office. Justin and the other McCoy Russell attorneys can help clients navigate new, uncertain, and changing areas.

The professionals at McCoy Russell have extensive experience working with a significant number of U.S. and international universities, including state and private universities. Our attorneys also have experience in supporting various start-ups that have spun-out of the academic institutions and universities.

McCoy Russell works closely with technology transfer managers to ensure strategic alignment with the inventors and the output of commercially viable patent filings and resulting portfolios, please contact us If you would like to learn more about the firm’s experience with Technology Transfer Offices and email [email protected] for assistance.