Archive for the ‘About SLW’ Category

Submission of Copyrighted Articles to the PTO “Fair Use”, D. Minn. Magistrate Rules

Thursday, August 1st, 2013

Federal Magistrate Jeffrey Keyes ruled that it is fair use for law firms to use copyrighted journal articles when preparing patent applications, and recommended that an infringement suit against Schwegman Lundberg & Woessner PA (SLW) by two academic publishers be dismissed.

Brad Forrest, SLW shareholder and chairman said:

“We are pleased with the result.  The decision supports the long standing practice of providing patent offices with non-patent literature to help improve patent quality.  It benefits every inventor and company involved in innovation, without harming established markets for copyrighted works.”

More information about the ruling can be found on Law360’s site.

Happy Birthday Patents4Life – We Are 2!

Thursday, March 3rd, 2011

Well almost. The first posts on Patents4Life were dated March 24, 2009. One was on a fairly obscure decision, SRI International (the prior art effect of internet postings), but the other two were on the Fed. Cir.’s summary affirmance of the district court’s finding of invalidity in Classen (applying Bilski as they saw it) and on the Board’s decision ex parte Kubin (that went on to invalidate a DNA patent as obvious to try in the wake of KSR). These decisions were just the first ripples of the tidal wave of judicial decisions at all levels that have limited the scope of patent protection. While the Supreme Court in Festo facially rejected the absolute bar to the application of the doctrine of equivalents endorsed by the Fed. Cir., no one would have picked it as the high water mark of pro-patent case law in our time. The presumptive surrender of access to the DOE has proven daunting to the use of the DOE in practice. But compared to most of the later decisions on central issues of patent law, Festo looks like a beacon of hope.  If you have been reading this blog (or any number of others) over the last two years, the number of “anti-patent” decisions that have been handed down is simply overwhelming.

Now some of them are not yet carved in judicial stone, being at various stages of appeal, but the sum of KSR,  Bilski (well, I guess it was more pro-patent than the strict M or T test it replaced with a test yet-to-be-determined), Ariad v. Lilly (WDR grows up), Lilly v. Sun,(broadened base for obviousness-type double patenting), Centocor v. Abbott (WDR rules),  Microsoft v. i4i (lower evidentiary bar to patent invalidation), Janssen v. Teva (no utility for hypothetical bioactivity), Stanford v. Roche (weakens Bayh-Dole Act), Myriad (DNA and diagnostics are natural phenomena), Therasense v Becton Dickinson (more ways than ever to show inequitable conduct), and the WARF stem cell reexamination (WARF lost at the Board) do not bode well for the system Jefferson hoped would help modernize the young republic.  The only bright spot on this judicial trial of tears was the Fed. Cir.’s affirmance in Prometheus v. Mayo in December that methods of medical treatment and monitoring past muster under Bilski.  And yet, even this modest decision may be reconsidered by the Supreme Court.

Still, the last time the full court addressed the issue of patentable subject matter was in 2001 in Pioneer v. JEM Ag Supply, in which the patent eligibility of plants was affirmed, and the Court refused to back down from Chakrabarty.  The issuance of the Chakrabarty patent was 30 years ago this month and most would agree that granting biotech patents has done our society a lot more good than it has rained evil upon us. Except, perhaps for the folks who are trying to block Obama’s order permitting funding for stem cell research. Or the Myriad plaintiffs. But they are in the minority. Aren’t they?

Patents4Life Makes The BioBlogging Project’s Top 50

Friday, June 4th, 2010

Though we are only about 14 months old, I was pleased to see patents4life get a spot as a top biotech blog (and no, we didn’t “sponsor” this list). While the BioBlogging Project is oddly bio-skeptical, the link will lead you to a list of blogs on a wide variety of biotech subjects that would not be easy to otherwise access. Happy hunting!

BioBlogging Project


Wednesday, April 14th, 2010

LES Spring Meeting — Boston, MA – May 19-21, 2010

I will be part of a Workshop entitled “A Shot Across the Bow – The Process Behind the Making and Responding to Demands to License Patented Technology” scheduled for May 21st at 930AM. The other speakers will be Robert Sloss of Farella Braum & Martell, Ted Chan of Biovail and Susan Stoddard of the Mayo Foundation. The short title of this workshop could be “Fending off the NPE’s,” but, of course, not all “license seekers” are Trolls and sometimes, it is better to flee to the shelter of a reasonable license than it is to push your gladiator (read “litigator” ) into the ring.

Schwegman Lundberg & Woessner Ranked High On “Patent Scorecard”

Schwegman Lundberg & Woessner is approaching its 17th anniversary with about 80 attorneys in three offices and 12 satellite locations. The firm has remained unique in both not having a litigation department and in not maintaining a large incoming “foreign” docket. As a result, most of the patents that we draft and prosecute originate with U.S. clients. That leaves us pretty far down on the list of firms when rankings come out based only on total number of attorneys or number of patents issued per year.

However, it was heartening to see the “’Patent Scorecard” published in the April 2010 issue of Intellectual Property Law Today. Schwegman Lundberg & Woessner ranked second of the 25 firms ranked. The rating and ranking system was developed by The Patent Board and “is complied with natively-filed patents, excluding those with a foreign priority…since patents with a foreign priority have usually been drafted according to the requirements of a specific foreign jurisdiction.”

The total Technological Strength Score accorded to a firm was based on metrics named Current Impact, Science Linkage, and Innovation Cycle Time, but you can guess that using “natively- filed” patents as a starting point eliminating the monster patent-issuers like Oblon Spivak, Sughrue, Birch Stewart, and Oliff & Berridge, all of whom obtained over 2000 patents in 2009. So it was particularly gratifying to rank so high on a list mostly made up of older, better known firms, when we “only” issued 808 natively-filed patents in 2009. (Just based on the number of such patents, we were ranked 5th.) Of course, I agree with the summary of the Patent Board: “In this difficult economy, Patent Analytics offer a vital perspective that can help maximize returns on investment for clients and law firms alike.” Write on!