Invent, Protect, EnforceTM
Chicago Patent Attorneys Share Historical January 15, 1809 letter from Thomas Jefferson advising his cousin of his on its website, see article published in the CHICAGO DAILY LAW BULLETIN on August 18, 2009.
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See a similar story about Hallihan IP Partners at USATODAY on August 17, 2009.
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Chicago Patent Law Firm Posts Original Letter from Thomas Jefferson, First Head of U.S. Patent Office, on Firm Web Site
Letter from President Jefferson to his cousin regarding newly invented horse bridle among historical memorabilia made available on Hallihan IP Partners Web site
Chicago (Lexis Nexis) August 17, 2009 -- A rare original letter written by Thomas Jefferson while he was president of the United States has been posted for free viewing online at the Web site of a new group of Chicago patent attorneys.
The letter was recently acquired by Hallihan IP Partners, which opened for business this spring and has already been engaged by a number of US and Overseas companies to handle a variety of intellectual property matters.
"I have always been a collector of interesting historical memorabilia, but the opportunity to acquire such a rare piece of American patent history was one that we simply could not miss," explained William J. (Hal) Hallihan.
In addition to the Jefferson letter, Hallihan IP Partners has posted images of other items from this historical collection, including documents signed by inventors Thomas Edison, Lee De Forest and William Shockley. They are available for viewing at the Web site of these Chicago intellectual property attorneys.
Prior to serving as the nation's third President, Jefferson was the first Secretary of State and also the first head of the U.S. patent system under President George Washington. He is widely viewed as having done more to encourage the flourishing of invention through his direction of the patent system than any other American in history.
"On January 18, 1809, Jefferson writes to his cousin, Richard Randolph, and encourages him to secure a patent on an innovative horse bridle he just invented," said Hallihan. "It gives us rare insight into the importance Jefferson placed on protecting inventions, a fundamental principle in the practice of intellectual property law here in America 200 years later."
Hallihan's concept in forming his new boutique law firm was to assemble a team of experienced intellectual property attorneys without the typical overhead and business practices often associated with the larger law firms. The firm's litigators have earned a reputation for success with defending clients in patent cases brought in the notoriously "plaintiff-friendly" Eastern District of Texas. The firm is located at 117 N. Jefferson, Suite 200, in downtown Chicago. For more information about Hallihan IP Partners, please go to http://www.hallihan.com/ or call 312.784.3000.
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OTHER IP NEWS
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The USPTO has launched a targeted patent examiner hiring initiative to help reduce the patent application backlog. They are seeking experienced intellectual property professionals to apply for these challenging and rewarding positions. See more information at www.uspto.gov.
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The court of Appeals for the Federal Circuit recently upheld a decision Mr. William J. (Hal) Hallihan obtained on a summary judgment motion in the Eastern District of Texas, that invalidated seven of Iovate's patent claims. See, for example, http://www.patentlyo.com/patent/2009/11/federal-circuit-affirms-edtex-ruling-that-iovates-muscle-building-patents-are-invalid.html. Iovate's obtained the subject patent from the same department at the University of Florida that licensed GATORADE.
This decision validated Mr. Hallihan's assertion that numerous advertisements in bodybuilding magazines were sufficiently detailed to invalidate the claims. As part of the prior art search that was performed for the client, Mr. Hallihan acquired numerous old bodybuilding magazines from the 1990s that included numerous articles and ads for various nutritional supplements.
This decision also maintains Mr. Hallihan's successful record of defending clients in charged with patent infringement in the allegedly plaintiff friendly Eastern District of Texas (Beaumont, Lufkin and Tyler).
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USPTO to Hold Public Roundtable on Work Sharing for Patent Applications
Work sharing expedites the examination process by reducing duplication of work among the partnering patent offices
The Commerce Department’s United States Patent and Trademark Office (USPTO) will hold a public roundtable on Wednesday, November 18, from 8:30 a.m. to 1:00 p.m. at its campus in Alexandria, Va. The meeting is being held to evaluate current work sharing efforts and to develop proposals for additional work sharing agreements among partnering patent offices.
“International filings have increased dramatically in recent years,” noted Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “To address this challenge, we must make work sharing programs work, and I am committed to expanding them to prevent the USPTO from duplicating the efforts of our overseas partner offices.”
Inventors and companies are increasingly seeking intellectual property protection for their inventions both at the USPTO and in patent offices abroad. Typically, applicants must file different applications for their inventions in each country in which they wish patent protection which leads to multiple searches and examinations. This redundancy creates inefficiencies and causes delay in processing, additional costs for applicants, and results in the patent offices around the world duplicating a substantial amount of work. The USPTO and foreign patent offices now face a growing backlog of pending applications, and applicants must wait longer times for an application to be examined. Through work sharing, an office eliminates the redundancy by utilizing the work already done by another office thereby expediting the patent examination process.
The USPTO plans to make the roundtable available via webcast. Webcast information will be available on the USPTO’s Internet Web site before the roundtable. The written comments and list of the roundtable participants and their associations will be posted on the USPTO’s Internet Web site after the meeting.
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Commerce Secretary Gary Locke Appoints Sharon Barner Deputy Director of the
U.S. Patent and Trademark Office
IP attorney named to key USPTO post
WASHINGTON – U.S. Commerce Secretary Gary Locke appointed Sharon Barner to the post of deputy director of the U.S. Patent and Trademark Office (USPTO).
“I have directed the USPTO to significantly reduce the time it takes to process patent applications,” Locke said. “David Kappos has moved quickly to establish an aggressive agenda to pursue that goal. Sharon is a deeply qualified IP attorney and her experience is an important addition to the USPTO senior leadership as they reshape the office and work with Congress to pass comprehensive patent reform.”
Barner is a top attorney in the field of intellectual property with 23 years of legal experience. She is currently a partner with Foley & Lardner LLP in Chicago and chairs the firm's Intellectual Property Department. Her experience spans clients in fields including those involved in patent, trademark and copyright disputes and also technical science fields such as genetically engineered foods, computers and satellites.
Serving under Kappos, Barner will take charge of an office that provides incentives to encourage innovation and technological advancement, and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace.
Over the past ten years, Barner has been featured as a top intellectual property lawyer in The National Law Journal, Black Enterprise Magazine, Diversity and the Bar and IP Law & Business and was recognized in the Illinois Super Lawyers for her intellectual property litigation work. Barner also regularly writes and lectures on several intellectual property topics including business counseling, patent litigation and risk management.
Barner received a Bachelor of Science degree and a Bachelor of Arts degree in political science from Syracuse University and a law degree from the University of Michigan in 1982.
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David Kappos Confirmed as Patent and Trademark Office Director
The U.S. Senate today confirmed David Kappos as the new Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO).
U.S. Commerce Secretary Gary Locke issued the following statement:
“We are grateful to the Senate for its swift confirmation of David Kappos to lead the U.S. Patent and Trademark Office. “It’s no secret that the agency currently faces significant and persistent challenges, but David is the right person to meet them and carry out my top priority for the USPTO -- dramatically reducing the unacceptably long time it takes to process patent applications.”
Kappos Background
Over a 20-year career, David Kappos has accrued deep knowledge of the patent system and broad respect from professionals across the field – including the biotech, life sciences and high tech sectors. Most recently, he was the vice president and assistant general counsel for intellectual property at IBM. Specifically, Kappos managed IBM’s patent and trademark portfolios – protecting and licensing intellectual property worldwide.
He takes control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.
Recently, Kappos has served on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He also has been the Vice President of the Intellectual Property Owners Association. He has held various leadership positions in intellectual property law associations in Asia and the U.S. and has spoken widely in Asia, Europe and the U.S. on intellectual property topics.
Kappos received his bachelor’s degree in electrical and computer engineering from the University of California-Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a development engineer and has served in a variety of roles before taking his current position, including intellectual property law attorney in IBM’s Storage Division and Litigation group, IP Law Counsel in IBM’s Software Group, assistant general counsel for IBM Asia/Pacific, IBM Corporate Counsel and assistant general counsel.
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USPTO Jumps on the Bandwagon and Opens Exhibit of Michael Jackson’s Patent and Trademarks
The United States Patent and Trademark Office (USPTO) and the National Inventors Hall of Fame and Museum are presenting a special exhibit featuring material from Michael Jackson’s patent and trademark applications. The exhibit is free and open to the public starting Wednesday, July 15 and runs through Labor Day.
Mr. Jackson is the co-inventor of a “system for allowing a shoe wearer to lean forwardly beyond his center of gravity by virtue of wearing a specially designed pair of shoes which will engage with a hitch member movably projectable through a stage surface.” Included in the patent application is an original sample of Michael Joseph Jackson’s signature and drawings of his invention.
The exhibit will also feature an example of Mr. Jackson’s registered trademarks, including United States Registration No. 1,908,209, which provides exclusive rights to use the words, “MICHAEL JACKSON,” on, “sound recordings; namely, pre-recorded phonograph records, audio tapes, compact discs, videotapes, and motion picture films featuring music and entertainment.”
The museum is open to the public Monday through Friday 9 am to 5 pm, Saturday Noon to 5:00 p.m. (closed on Sundays and federal holidays). The museum is in Alexandria, Virginia at the United States Patent and Trademark Office. It is located in the atrium of the Madison Building, 600 Dulany Street, Alexandria, VA, and is easily accessible from the King Street and Eisenhower Avenue Metro stations (Blue Line and Yellow Line). USPTO Museum Info: (571) 272-0095. Admission is free of charge.
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Commerce Secretary Gary Locke Takes Key Step to Address Patent and Trademark Office Challenges
U.S. Commerce Secretary Gary Locke has announced the appointment of former U.S. Patent and Trademark Office (USPTO) official Nicholas Godici to look at ways to strengthen the management structure of the USPTO and provide an up-to-date assessment of the challenges the office faces. Godici, hired by current Acting Under Secretary for Intellectual Property and USPTO Director John Doll, will work with USPTO officials to identify areas of concern and to assist in the transition to a new director. He will serve as a consultant for a period of up to 180 days.
President Obama nominated David Kappos, a patent professional with more than 20 years of experience, to be the next USPTO director on June 18.
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Top Patent Firm Rankings Announced By Various Entities. Nobody Agrees!
The monthly magazine Intellectual Property Today previously announced their 2009 rankings of "Top Patent Firms" of US patent law firms. The Avery Index also put out a list of the "Top 100 Patent Firms" in the United States The interesting thing is that neither agree. That is not surprising because their criteria is completely different from one another and only measure very easily measured quantitative (instead of qualitative) criteria.
IP Today includes the following firms in their top 25 patent law firms, using their criteria based upon the number of patents issued.
Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
Sughrue Mion, PLLC
Birch, Stewart, Kolasch & Birch, LLP
Oliff & Berridge, PLC
Fitzpatrick, Cella, Harper & Scinto
Blakely Sokoloff Taylor & Zafman LLP
Harness, Dickey & Pierce, PLC
Fish & Richardson P.C.
Foley & Lardner LLP
Townsend and Townsend and Crew LLP
McDermott Will & Emery
Finnegan, Henderson, Farabow, Garrett & Dunner, LLC
Nixon & Vanderhye P.C.
Staas & Halsey LLP
Knobbe Martens Olson & Bear LLP
Cantor Colburn LLP
Buchanan Ingersoll & Rooney PC
Brinks Hofer Gilson & Lione
Wenderoth, Lind & Ponack
Schwegman, Lundberg & Woessner
Kenyon & Kenyon LLP
Dickstein Shapiro LLP
Antonelli, Terry, Stout & Kraus, LLP
Thomas, Kayden, Horstemeyer & Risley, LLP
Young & Thompson
The Avery Index uses a different criteria, number of registered patent attorneys and agents employed by the firm and, while there might be some overlap, they come up with a different list of firms in the top 25 spots.
Finnegan, Henderson, Farabow, Garrett & DunnerFish & Richardson
Jones Day
Kenyon & Kenyon
Foley & Lardner
Knobbe, Martens, Olson & Bear
Townsend and Townsend
Ropes & Gray
Brinks Hofer Gilson & Lione
Morrison & Foerster
Howrey
Fitzpatrick, Cella, Harper & Scinto
Morgan, Lewis & Bockius
Alston & Bird
McDermott, Will & Emery
Harness Dickey and Pierce
Fulbright & Jaworski
Baker Botts
Merchant and Gould
Kirkland & Ellis
Sterne Kessler Goldstein & Fox
Oblon Spivak McClelland Maier and Neustadt
Greenberg Traurig
McAndrews Held and Malloy
Woodcock Washburn Kurtz MacKiewicz and Norris
Which method is better? We submit the answer is neither. Using the number of patents issued tends to put at the top spots firms who may do a lot of incoming foreign work (where the patent applications are first filed overseas and the firms are merely filing a translation or just entering the national phase of a PCT application, instead of drafting them from scratch). That can tend to skew the numbers away from the patent firms that draft more patent application. If you are interested in patent litigation, then this criteria also does not make much sense. Similarly, there are many faults that you can find with merely using the raw number of registered patent attorneys and agents employed by a law firm. There are many fine firms on both lists. However, there are also many fine firms that did not make the top 100 of either list.
Using similar criteria to rank national or international restaurants would likely place one or more hamburger chains at the top of the lists due to the number of burgers sold, or the number of employees the restaurants have. In either case, would you really believe such hamburger chain is the best restaurant? Would you even believe that it is the best place to buy a hamburger?
And, yes, there are many other lists of top patent firms. Martindale puts out a top 10 that is supposedly updated monthly. Chambers also put out a list of the top 36 Intellectual Property firms in the US.
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President Obama nominated David Kappos as Director of the U.S Patent and Trademark Office
President Obama nominated David Kappos, an experienced patent professional with over 20 years of experience, as the new Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent and Trademark Office (USPTO).
“The United States Patent and Trademark Office faces significant challenges, and it needs an experienced leader like David at the helm,” U.S. Commerce Secretary Gary Locke said. “He will be a strong voice for patent reform and I have tasked him to reduce dramatically the unacceptably long time the office takes to review patent applications.”
Over a 20-year career, Kappos accrued a deep knowledge of the patent system and broad respect from professionals across the field – including the biotech, life sciences and high tech sectors. He is currently vice president and assistant general counsel for intellectual property at IBM. Specifically, Kappos manages IBM’s patent and trademark portfolios – protecting and licensing intellectual property worldwide.
If he is confirmed by the U.S. Senate, Kappos will take control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.
Kappos serves on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He is also the Vice President of the Intellectual Property Owners Association. He has held various previous leadership positions in intellectual property law associations in Asia and the U.S. He has spoken widely in Asia, Europe, and the U.S. on intellectual property topics.
Kappos received his bachelor’s degree in electrical and computer engineering from the University of California-Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a development engineer and has served in a variety of roles before taking his current position, including intellectual property law attorney in IBM’s Storage Division and Litigation group, IP Law Counsel in IBM’s Software Group, assistant general counsel for IBM Asia/Pacific, IBM Corporate Counsel and assistant general counsel.
