Posts Tagged ‘Schwegman Lundberg Woessner’

New Blog On AIA Aims For Co-Op Approach

Wednesday, January 18th, 2012

With a tidal wave of proposed regulations implementing the AIA poised to hit IP practitioners – ready or not – it seemed worthwhile to point out a new “Blawg” recently launched to help keep our heads above the murky legal waters to come. My firm, Schwegman Lundberg & Woessner, in cooperation with the IP group of the general practice firm Leonard Street and Deinhard, has opened a website, Patent RE-forum – Perspectives on the America Invents Act at http://www.americainventsact.com/. This blog blends the patent prosecution expertise of SLW with the experience of the IP litigation team at Leonard Street, and has already posted a series of short essays on most of the sections of the AIA: “Breaking Down the AIA.” Members of the William Mitchell College of Law IP Institute have also been invited to contribute posts.

Since Patents4Life does not intend to follow the new regulations closely, except as they will affect life sciences/biotech practice, the site should be a good supplement to my musings. For example, on January 6, 2012, the USPTO published 21 pages of proposed regulations  in 77 Fed. Reg. at 982  “simply” to implement the changed requirements for an inventor’s oath and declaration in various applications. There is an entire column on the changes in the oath and declaration requirements in a continuing reissue application (!)  I tried to skim the changes but quickly got bogged down. The most useful nugget I unearthed is that the assignee can execute the oath and declaration on behalf of a deceased inventor. Emotional issues aside, this can be a big help to facilitate continued prosecution in situations in which the inventor’s estate has been closed and the personal representative does not want to reopen it in order to sign for the inventor. Oh, and after September 16, 2012, the assignee(s) can sign the reissue oath and declaration for a broadening reissue application IF the assignee(s) applied for the original patent. Don’t get me started!

Finally, I am  pleased to note that both Patents4Life and Patent RE-forum were recently picked as members of the top 25 Minnesota Blawgs in a survey sponsored by the Minnesota State Bar Association. Not a bad 3rd birthday present for Patents4Life!

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Posted in AIA Patent Reform, Patent Reform Legislation | Comments Off

Patent Office To Open Satellite Office In Detroit

Friday, December 17th, 2010

The USPTO has announced that it will open a satellite office in Detroit in 2011, that will employ about 100 people. The PTO said that Detroit was chosen due to its high percentage of scientists and engineers “in the workforce” (ed.’s note: and drawing unemployment), its leading universities (ed.’s note: true, considering Wayne State, the University of Michigan and Case Western Reserve – not too far away) and the presence of a high volume of patenting activity in the area (ed.’s note: due mostly to the presence of Harness Dickey & Pierce, successful firm known best for prosecution for the auto industry). Certainly, the PTO is to be applauded for taking this innovative and challenging step, but I would like to know what group art units will be represented, and what kind of “bricks and mortar” facility is planned.

For about 15 years, Schwegman Lundberg & Woessner has worked successfully with satellite attorneys around the country, who are officed in their homes and who generate and link up to the firm’s “file room” via Citrix and Foundation IP. These are not “contract attorneys” but associates who can advance as steadily as associates in our San Jose or Minneapolis home offices. In fact, three of our satellite associates have become equity shareholders in the firm. Often they are lateral hires with significant experience, who require little training to get up to speed.

Thinking of satellite personnel makes me wonder if the PTO really plans on opening a facility or if it will simply aggregate a number of Examiners in the area who can work from home. But then, how will in-person interviews be handled?  Or training? Some problems can be avoided by only placing senior examiners in Detroit to begin with; but is the PTO full of folks who want to relocate to Detroit? Are the 100 jobs all support staff positions? Time will tell.

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Posted in USPTO Practice and Policy | Comments Off

FYI

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!

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Posted in About SLW, Conferences and Classes | Comments Off