Category: Patents

Unitary patent: Why select Greece over Turkey?

Greece and Turkey are in the news. I visited both countries in May. Both are pleasant. Of the two, Turkey seems to be the more serious candidate for new business investment and related patents and intellectual property (IP). Greece notoriously has defaulted on its debt and is in danger of exiting the European Union (EU). Economically, the nation is not a major […]

High Court Bites Spider-Man Patent

A patent endows its owner with “superpowers,” but “only for a limited time,” held the U.S. Supreme Court in Kimble v. Marvel (June 22, 2015). The time-honored formula for action is “ready, aim, fire!” Here, as in many less-than-perfect business/legal cases, the parties reversed the last two steps. To their credit and profit, at least […]

Beem Asks USPTO for Better Quality Patent Examination

The U.S. Patent and Trademark Office (USPTO) has proposed a new patent quality initiative. See Director’s Blog and Federal Register. In response, I have submitted a formal comment, Tracking Number 1jz-8ipa-7jnk, as set forth below. I contend that any discussion of quality patents should take into account the need for

Fear of Patents Incited by Lobbyists

Patent law promotes the progress of technology by rewarding inventors who patent their inventions. From the beginning, the Constitution empowered Congress to pass a Patent Act, and President George Washington called for it in his first State of the Union address. Congress acted affirmatively in 1790, with periodic updates ever since. As Abraham Lincoln said, the patent system adds […]

Quick and Easy Intellectual Property (IP) Audit

To conduct a quick, easy, and effective intellectual property (IP) audit, start with the business, not with IP or legal considerations. IP has little value apart from the business. Legal issues have no meaning apart from the business. How does your company make money? Identify key products, revenues, and margins. Relationships. Customers. Key people. Market leadership. Competitors. Vulnerability. […]

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 […]