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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.

McCoy Russell is proud to support founding Partner Anna McCoy in her volunteer efforts supporting the Virtual EntreprenuHERship program. Anna is committed to helping small businesses protect their intellectual property rights. Her expertise has been recognized by the International Trademark Association (INTA), the primary global organization for trademark professionals. Anna will user her trademark expertise to consult with pre-qualified applicants in trademark clearance and prosecution matters through the program. Designed like a walk-in legal clinic, volunteers help answer questions, explain the trademark registration process and direct applicants to local services that may be able to further assist them.

The program serves low-income individuals, small- to medium-enterprises, and not-for-profit, and nonprofit or charitable organizations with low operating budgets that might not otherwise have affordable access to legal assistance.

The one hour clinic takes place March 8, 11 – 12 PM EST.

As an innovative boutique women-owned intellectual property firm McCoy Russell remains an active INTA member participating its various programs. The firm aligns with INTA’s mission of supporting trademarks and complementary intellectual property (IP) to foster consumer trust, economic growth, and innovation.

As an innovative firm, McCoy Russell’s software arm (Ironcrow) blends technology and law developing state of the art machine learning algorithms to make patent prosecution smarter. IronCrow exists to bring modern advancements in machine learning (ML) to patent professionals in the form of time saving tools and insightful analytics.

McCoy Russell leverages Ironcrow’s OA-Shell to automate the tedious task of generating a first draft Office Action response, and allows patent professionals to spend more time crafting the substantive arguments and amendments which ultimately determine the prosecution outcome.

OA-Shell works by:
• Extracting and intelligently reformatting all allowances, objections, and rejections present in the Office Action
• Generating a clean version of the claims ready for amendments
• Adding appropriate status indicators to the claims
• Identifying all cover page info, including inventor, filing date, OA date, etc., and
• Filling out a customizable OA response template with all content described above

Increase consistency and save time and money, learn more about Ironcrow AI’s OA-Shell (https://www.ironcrowai.com/prosecution/).

The results speak for themselves. In 2021, McCoy Russell issued over 800 U.S. patents, the most of any women-owned boutique patent prosecution firm. The firm has an over 90% allowance rate over the past 10 years, an appeal win rate of over 75% (over 300 appeals before PTAB) and a petition win rate of over 85%. We further file 99% of responses to the USPTO on time without an extension due to our firm’s delay. McCoy Russell shows its dedication to innovation, applying pioneering solutions and technologies to maximize the potential of our highly-skilled staff to the benefit of our clients.

Coming soon to ironcrowai.com, McCoy Russell’s software arm, free prosecution statistics for every Art Unit and Examiner in the USPTO.

Do you use prosecution statistics in your practice? If so, what Art Unit or Examiner metrics do you find useful? Are there any metrics you would like to see which aren’t available?

McCoy Russell, represented by Justin Wagner, is pleased to continue its support of AUTM. Justin will be attending AUTM’s Annual Meeting February 19 – 22 in Austin, TX to learn from industry leaders, connect with technology transfer professionals, and continue the conversation with Technology Transfer Offices to strategically develop intellectual property strategy.

As McCoy Russell provides specific support tailored to the unique challenges presented in academic and research environments in pursuing technology commercialization, Justin particularly looks forward to the Fireside Chat with the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, as well as the “Reimagining the TTO” panel that features leaders from more than half a dozen universities.

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.

Learn more about our experience with Technology Transfer Offices and email [email protected] for assistance.

McCoy Russell LLP is a women-owned and operated intellectual property law firm based in the Pacific Northwest serving a global client based. The firm has been widely recognized for its consistency in quality patent application drafting and strategic prosecution practice. In 2022, the firm is pleased to have obtained 826 issued US patents for its clients, more than any other women-owned and operated firm in the Pacific Northwest.

How does McCoy Russell keep pace with substantially larger and more traditionally run firms?

Integrated in the foundation of the firm’s collaborative structure, McCoy Russell’s “360 Review” process engages patent practitioners in the firm at all levels of experience to review every patent application drafted by the firm. The process requires that every patent application undergoes at least two, and usually three, levels of review – even if drafted by a senior patent attorney with more than 20 years of experience. This process is ever-adapting in order to keep up with the latest challenges and opportunities of the patent prosecution landscape.

McCoy Russell’s patent drafting and prosecution leverages the firm’s software arm, IronCrow IP (https://ironcrowai.com/). IronCrow IP develops AI-based software that aims to streamline the application drafting and review process, efficiently and effectively improve patent quality, and provide insight and analytics valuable to help patent prosecution strategy.

The core of our firm’s consistency in quality is our firm culture that continues to enable, support, and improve hybrid-remote work while maintaining collaboration in the intellectual property realm. McCoy Russell cultivates a firm culture that utilizes interactive cross-team training programs and staff wellness initiatives.

The firm’s unique collaborative structure and dedication to innovating the practice of intellectual property keeps McCoy Russell filing with quality and frequency. McCoy Russell continues to innovate and provide its clients with the quality and value they’ve come to expect.

McCoy Russell congratulates the top US patent filers for 2022. The firm is pleased to have several of its clients within the top 50 organizations that file patents.

McCoy Russell is a nationally ranked women-owned intellectual property firm focused on the prosecution and development of patent and trademark portfolios.

The Bayh-Dole Act, also known as the Patent and Trademark Law Amendments Act, is a federal law that was enacted in 1980 and deals with intellectual property arising from federally funded research programs.  The Bayh-Dole Act permits universities that receive federal funding, non-profit organizations, or certain businesses to elect to pursue ownership of an invention rather than obligating the inventors of the invention to assign rights in the invention to the federal government.  Most practitioners are familiar with the Bayh-Dole Act; however, many are unaware of some significant revisions to the Act that went into effect in 2018.

One of the most important revisions that went into effect includes a deadline that is set ten months from the priority date of a provisional patent application to provide notice to convert the provisional patent application to a non-provisional patent application.  The purpose of this revision is to give the government a 60-day notice prior to expiration of the provisional patent application.  Many universities treat this ten-month requirement as the time to decide whether or not to convert the provisional patent application; that is, action is only required if the decision is to not convert the provisional patent application and, in such case, notice must be provided to the sponsoring agency at least two months prior to the loss of rights by virtue of expiration of the provisional patent application.

Interagency Edison (widely known as iEdison and accessible at iedison.gov) is the online portal that is primarily used by government grantees and contractors to report federally funded inventions and subsequent patent and licensing activities.  iEdison is the online mechanism by which universities can report inventions to federal agencies, and most of the iEdison users are university technology transfer offices.

According to the NIH, in order to request an extension of one year after filing a provisional patent application, a party can do the following: elect title to the invention in the appropriate iEdison invention record and send an email to [email protected] any time before ten months after filing the initial provisional patent application to request a one year extension to file a non-provisional application.  The NIH will typically respond with “Granted” so long as these steps are completed correctly.  The one-year extension is thus from the filing date the provisional application.

The professionals at McCoy Russell have extensive experience working with a significant number of U.S. and international universities, including state and private universities.  Special care is taken by McCoy Russell to ensure regulatory compliance as to government-funded work and work subject to government contracts.

Learn more about our experience on our technology transfer page, linked here. Please reach out to [email protected] for assistance.