Category: Patents

Patent System under Attack: Interview with USPTO Director Michelle Lee

This morning, my fellow leaders of the Chicago Intellectual Property Law Association (IPLAC) and I met with Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO), and several of her fellow USPTO executives, including the impressive Dr. Christal Sheppard, Director of the Detroit Office. Director Lee has excellent qualifications. Unfortunately, as discussed below, […]

#HIMSS15 Health IT, IP & Software Patent

As I write these words, I stand among 41,000 health information technology (HIT) professionals gathered in Chicago for  HIMSS15. As an intellectual property (IP) lawyer, I am here because my clients are here. If you’re at HIMSS15, you are probably engaged in electronic health records (EHR) software, hardware and/or medical devices. Your organization is likely to be active […]

Build Your Patent Portfolio: Preparation, Prosecution, Appeals

Are you General Counsel, Patent/IP Counsel, or an executive of a company that owns valuable proprietary technology? If your company or your client files patent applications, you’re probably encountering rejections. You may be wondering how to deal with the cases at hand and how to improve your strategy, procedures and execution for preparation and prosecution of patent applications. […]

Luck, Resources, Skill: In Basketball & Patent Cases

I write these words just hours before the Final Four—Kentucky, Duke, Michigan State, and Wisconsin—contend for the NCAA basketball title. Luck, resources, or skill: Which factor is most important in basketball? In patent cases? In basketball, one counts on a bit of luck as the ball rolls around the rim. Talented players are the key resources. For skill, just look at the […]

Build Your Law Practice in Bar Associations and Relationships

I am a principal in a small patent law firm based in Chicago. We have developed a national and international practice. You can, too, regardless of the size of your firm. We go to places like New York, Los Angeles, Houston—and Munich, Beijing, and Tokyo—for meetings of the American Bar Association (ABA), American IP Law Association (AIPLA), and International Association […]

Inter Partes Review (IPR) of Patents

If you are asserting or defending against a patent, here are key points on “Inter Partes Review (IPR) of Patents” as presented to Chicago Bar Association. The Leahy-Smith America Invents Act of 2011 (AIA) created new post-grant patent invalidation procedures including Inter Partes Review (IPR) by the Patent Trial and Appeal Board (PTAB) in the U.S. Patent and Trademark […]

Obtain Allowance of Software Patent under Alice and Guidelines

Last summer’s Supreme Court decision in Alice v. CLS Bank has had a dramatic effect on the patentability of business method and computer software inventions. In Alice, the Court declared that claims directed to abstract ideas must be analyzed under the framework for determining the patent subject matter it established in the Mayo  and Myriad cases. […]

Science vs. Technology: Volta vs. Watt and Edison

Today’s Google doodle honors Alessandro Volta (whose name will be remembered forever in connection with the volt, a unit of power) on his 270th birthday. Volta is credited with the invention of the first electrical battery in 1799. The doodle has been criticized as misleading because it portrays electric lights more commonly associated with Thomas […]

History and Future of U.S. Patent System

As I write these words, I am inspired and surrounded by original autographs of seven of America’s eight early presidents. Their signatures appear on 200-year old original patents displayed on the walls of my offices. See Beem Presidential Patent Collection. “If a country can be said to possess a soul, then America’s is the patent […]