Patent Attorneys of the North

What exactly are patent attorneys in Minnesota up to these days?  Let’s take a look.  Let’s limit the look to activity between January 1 of 2017 and today (January 25 of 2019):

13,445   –  Number of patent grants to MN law firms and departments

21,770  –  Number of office actions issued in those 13,445 granted applications

Following is a breakdown of the rejection types that Minnesota patent attorneys have seen in those 20,000+ office actions.  There are two graphs, one for non-final actions and one for final actions.  Each bar is a count of the number of office actions that included the rejection type.  For example, just over 10,000 of the almost 15,000 non-final office actions received included a 103 type rejection.

Graph one

3

Here are the same two graphs but switched to percentages in stead of counts.  For example, almost 75% of the almost 15,000 non-final office actions received included a 103 type rejection.

2

3

Here are some interesting cumulative numbers that cover the 13,445 granted applications:

4And now for the grand finale!  Approximately how much money in attorney fees have Minnesota patent lawyers brought in over the last two years just for the preparing and filing of office action responses (assumes average of about $1,400 per response in attorney fees):

6

 

 

Examiner Angered by Huge IDS?

What is the record for the most references ever cited by an applicant in an information disclosure statement?

We are not sure if it is THE record, but we did find what we believe to be one of the largest IDS’s filed by a Minnesota law firm or legal department in recent history. An attorney from Fish and Richardson filed a big honking mother of an IDS in application 15/550,124. Take a look at what the examiner had to say about it:

Examiner blip

Ah, so it does not matter how many references you submit, the examiners will dutifully work hard and consider every reference to the best of their ability? Not exactly, the examiner also goes on to lay out these form paragraphs:

blip 2

What in the world would drive an applicant to the decision to submit over 2379 references? All we can do is speculate. It may not matter but the application was foreign originated. The assignee is Eisai Co., a Japanese pharmaceutical company headquartered in Tokyo. It would seem that the the overall family of related applications is pretty large. Here is a list:

Family

Could many of the 2379 IDS references have popped up in these related applications? Maybe? But it seems unlikely that this would be the driver of such a high number.

What do you think? Should the attorney have done a better job of curating and pruning the references before submitting? Is there significant risk associated with not submitting some of the references? Does submitting so many references significantly affect the presumption that all cited references were considered by the examiner? These are just some of the questions that come to mind in these circumstances. Thoughts, anyone?

K.H.

Intense Double Patenting War!

It is hard not to be a little bit entertained when an attorney loses his cool during prosecution. Let us provide you with an example. Application 15/428,001 is seemingly owned by Cochlear Limited, an Australian company. The case seems to have been originally filed by the Minneapolis law firm of Merchant and Gould. But the case gets transferred at some point to Martin J. Cosenza, who is a partner with the Virginia law firm of Pilloff & Passino, LLP.

Anyway, Mr. Cosenza filed an extremely heated after final response on 12/24/2018. For those of you playing along at home, that was Christmas fricken Eve. So keep that in mind. If you want to get a copy of the document from the USPTO’s PAIR system, just look for the response after final filed on 15/428,001 on December 24. Otherwise, here is a direct link to a pdf copy of the response:

Applicant Xmas Response

Dang. This attorney is heated up! Here is one of my favorite parts:

“We proffered through geometric though and logic reasoning why the Double Patenting rejection is inconsistent with the rejections, and we are told that our logic is not valid. Not the first time we have heard that. (One would think that my clients would have gotten rid of me by now for such illogical assertions that simply cannot be correct.)”

And of course, we must highlight the logic puzzle laid out that ultimately leads to an accusation that the USPTO is unfamiliar with the organization of the animal kingdom. For example:

“The analogy is apt and it supports our position. Is it the USPTO’s position that all mammals are the same? That is the problem. Also, the bird is not a mammal. Thus, our point is valid. The bird is different, and the record indicates that the monkey and the mammal are different from the bird.”

Finally, after repeatedly belittling the examiner for using stock and cut-and-paste language, the attorney declares:

“We again repeat our scholarly and righteous arguments.”

Anyway, you get the idea. It is worth reading the whole response. It is a trip. But the best part is that the Examiner wasn’t having it. This Examiner is officially our hero. He fires back with a 21 page Advisory Action on January 10, 2019. You can find it in PAIR or here is a direct link to open the document:

Examiner Advisory Action

This Examiner must have spent at least an entire day writing this advisory action, if not even more time than that. He even addresses the attorney’s logic puzzle analogy! And claim charts! He throws down the friggin claim charts, y’all. He fires a couple of shots at the attorney but he stays calm, cool, collected and professional. In short, he absolutely roasts the attorney’s arguments…one at a time….totally and thoroughly. Well done, Examiner Christopher Flory, well done.

We will most definitely have to check back with this application to see what move the attorney makes next. Our prediction? I think we are going to see a terminal disclaimer and that will just about be the end of it.

K.H.

Round 2: Patent Gettin’ Contest

The Wipe.org has not been around long but we have already acquired a nice audience of patent prosecution professionals. One of our readers recently wrote in and asked a follow up question related to the Patent Gettin’ Contest. If you missed that post, here is the link:

Patent Gettin’ Contest

Anyway, the reader wanted to know whether removing continuation applications and/or foreign originated applications would change the outcome of the contest. Now THAT is an excellent question. So, here we go. Round 2 of the Patent Gettin’ Contest!

First thing is first, we will prune the application set utilized in Round 1 of the Patent Getting Contest. Specifically, we will remove all applications types emphasized with green highlighting in this list:

Continuity

Okay, so that lowered the number of Minnesota connected applications included in the contest from 316 to just 210. It also completely eliminated 3M as a contestant, because it lowered their application set to almost zero. Thus, in the new contest, contestants will be:

list 5
The ANALYSIS

The easiest way to approach this is to compare Round 1 of the contest (top table – includes continuations and foreign originated applications) with Round 2 of the contest (bottom table – excludes continuations and foreign originated applications).

Cropped Table

New Contest

From our perspective, the results did not change TOO much. But let’s take a closer look across the pool of contestants.

The results for Seagate stayed close to the same. However, we maybe did not give Seagate proper credit in Round 1. So let’s remedy that now. The Seagate metrics are not too shabby. Their RCE rate is below average. On the other hand, their appeal rate is double the 4% bench mark but is 8.5% really such a big deal? They have no applications with two or more RCE’s. And they average only 0.9 office actions per each of their 71 grants. Hats off to Bob and the others at Seagate!

Now let’s take a second look at Hollingsworth Davis, who was the winner in Round 1. Their numbers held up nicely even after continuations and foreign originated applications were removed. Their RCE rate, appeal rate, amount of time per allowance, and average number of office actions are at or below the benchmarks. It is also interesting they they conducted no interviews compared to the 9 conducted by Seagate. Not sure what to tell you about the message there. Not enough data to draw any reasonable conclusions. Just an interesting fact, that’s all.

Fish & Richardson probably benefited the most by removal of continuations and foreign originated applications. But the nature of that benefit is counter intuitive. One would think that there would be more RCE’s when you remove continuation applications? But the Fish RCE rate dropped by about 5%! And let’s not miss that Fish had a 0% appeal rate in both rounds. Fish also stacks up with Hollingsworth on time per grant and average number of office actions. I think it is fair to say that Fish and Hollingsworth became neck and neck in Round 2.

The adjustments made in Round 2 were not as nice to any of Shumaker, Merchant or Mueting. All of these firms had a more intuitive increase in the RCE rates. They also increased their time to allowance and average of two office actions per grant. These changes are more along the lines of what you would expect when you remove continuations and foreign originated applications.

PAUSING FOR REFLECTION

We were surprised that there was not a greater shift in the performance metrics after continuations and foreign originated applications were removed. Were you surprised? Perhaps the impression that most of us have that continuations receive favorable treatment is overblown? That is a good topic to revisit on another day.

AND THE WINNER OF ROUND 2 IS…A TIE….PLUS AN HONORABLE MENTION!

fish

holl

We are going to call it a tie between Fish and Hollingsworth. Honorable mention to Seagate. A round of applause to all three groups! Congratulations!

Cemetery of Forgotten Dreams

Dude

This little guy in FIG. 1B looks pretty sad, right? I mean, right? Perhaps it is because he is part of a drawing that is just one of millions that will never be incorporated into a patent. They almost made it to the big show…but they will fall short. They will end their journey as part of a published but not patented application.

But to us, the scores of patent applications that do not become patents are quite interesting. These papers represent human dreams and aspirations. At some point in time, someone thought that what is described in that document was important, even the next big million dollar idea. It is powerful stuff.

So on this day in which we remember the great Dr. Martin Luther King Jr., let us take a moment to properly memorialize that guy above shown in FIG. 1B. He needs a name. Let’s call him Dude.

Here is what we know about Dude. He is part of application 15/373,809. The application was filed by a small company with an online product called SQUIGL. They are fully functioning at http://www.squiglit.com. They facilitate creation of whiteboard marketing animations. So, we know that the home of Dude is squiglit.com. Feel free to visit Dude as you schedule permits.

Dude’s dream of being incorporated into a published patent is not technically dead yet. A first non-final office action was mailed on July 27, 2018. Today is January 21 of 2019. Thus, in theory, a response could still be filed in the next seven days, with a three month extension of time, of course. Unfortunately, it is looking like no one cares enough about Dude to file a response. Sniff, Sniff. Sorry, Dude.

The examiner is sadly rejecting Dude as being not novel and also unpatentable subject matter. Double whammy. Ouch. It is a little unfortunate that Dude was filed in an application that only included two claims. No one bothered to support Dude with a full and proper set of claims. And now there is no one to stand up for Dude when he if facing ultimate and likely final rejection.

And so Dude will join so many others in the cemetery of forgotten dreams. Rest in peace, Dude. Rest in peace.

P.S., if you are so inclined to start a Go-Fund-Me page for Dude’s application during the next week, send us the link…we will tweet it out. ; )

Corporate LOVE for Minnesotan Patent Attorneys

Top Clients

Do you ever wonder which companies are the largest sources of patent prosecution work in Minnesota?  We don’t wonder about that either.  But we figured that SOMEONE out there might be interested in such a topic.  Above is a chart showing the top 15 sources of work.

The analysis in this post is based on a sample of 50,000 recent applications with Minnesota law firms or legal departments identified as handling the prosecution.  It is probably is not a surprise that 3M leads the way with 3,265 applications.  But it may be a surprise that the next companies on the list do not have headquarters in Minnesota.  Intel, Microsoft, Google, and Commscope are putting food on a lot of tables in Minnesota.  Moving down the list, we then arrive at Seagate, IBM, and Boston Scientific, all companies that at least have strong Minnesota roots.

Anyway, you get the idea.  Following is the complete list down to companies with 180 applications:

List

Eye Opening Patent Prosecution Numbers

graph 1

This graph shows the status of 23 applications all originating from Minnesota companies and all being handled by a Minnesota legal department.  Here is the interesting part.  All of these applications are being handled by the same examiner.  And as incredible as it may sound, that examiner’s initials are M.N.  Is that not ironic?!  Seriously, I am not sure.  Is it ironic or is it a coincidence?  I never know which is most correct.

Anyway, here are some staggering numbers that relate to this set of applications.

23   =  Total number of applications in the analyzed set; also the number of apps owned by a Minnesota company

4     =  Number of different Minnesota companies with an ownership interest in at least one of the applications; also the number of different Minnesota legal departments handling the prosecution of at least one of the applications (Shumaker & Sieffert, Brooks Cameron, Dardi & Herbert, and 3M)

1     =  The number of patents from the 23 applications

6     =  The number of office actions before the one patent was granted

8     =  The number of abandonments from the 23 applications

14   =  The number of the 23 applications that are still pending

57   =  The number of responses filed to date across the 23 applications

10+The number of years that Examiner M.N. has worked at the USPTO

46  =  The total number of patents that Examiner M.N. has granted…ever

163 =  Total number of active pending applications currently on the docket of Examiner M.N.

2.2  =  The average number of office actions issued in each of the 163 pending applications on the docket of Examiner M.N.

312  = Total number of applications on docket of Examiner M.N. that have gone abandoned

691  = Total number of responses filed in the 312 abandoned applications on docket of Examiner M.N.

Ouch.  Seriously.  Ouch.  Why not incorporate patent office analytics into your everyday workflow?  Yes we are biased.  But the Patent Advisor solution from LexisNexis IS must have technology.  Otherwise, your are trying to fly a plane without utilizing all available instrumentation.  And in that case, it is clear that M.N. is actually the pilot at the stick, right?

K.H.

Patent Gettin’ Contest

Cropped Table

This table represents a good old fashion PATENT GETTIN’ CONTEST.  Let’s work through it so that the numbers make complete sense.

The contest participants.  The purpose of this contest is to decide which of the following eight entities is possibly the best at obtaining patent grants quickly.

extra

Before you start freaking out about claim quality being the primary driver of compact prosecution, let me say one thing.  Each of these eight candidates is a well respected law firm or company staffed with fully qualified patent professionals.  We are going to assume that every one of these professionals is always on the mission to maximize claim quality.  Thus, the winner of our contest will be the entity that proves to be the best at obtaining patents the most quickly regardless of claim quality.

The Arena.  Okay, with that settled, let’s talk about the methodology.  In order for this to be a fair contest, this battle must take place within one common arena.  That arena shall be Tech Center Group 2680.  As you can see in this table below, the art units within this arena grant patents at a fairly consistent rate.  So, for the most part, none of our contestants has an unfair advantage.

arena

The metrics to be evaluated.  The patent prosecution statistics identified in columns B through I will be the metrics for evaluating the competitors.  Column B shows the number of patents granted in the 2680 arena during 2017/2018.  Column C is allowance rate but is mostly not applicable because participants are only being evaluated based on patents granted in 2017/2017.  Column D is the percentage of the applications that required at least one RCE prior to grant.  Column E is the percentage of the applications that required an appeal cycle prior to grant.  Column F is the average amount of time from the first office action to the Notice of Allowance.  Column G is the number of applications that required two or more RCE’s.  Column H is the average number of office actions between filing and issuance.  Finally, Column I is just for fun but represents the number of applications with a clear sign that an interview was conducted.

the metrics

Comparative baselines.   In order to better understand the differences in the metrics of our competitors, we need baseline context.  In this case, we have two baselines, which are presented in rows 2 and 3 of our table.  Row 2 provides the numbers for the entire USPTO but limited to just activity in Tech Center Group 2680.  In that same row, allowance rate and number of grants for just 2017/2018 are shown in parenthesis.  Row three provides the numbers for all activity originating from Minnesota companies and law firms in Tech Center Group 2680 during 2017/2018.  Thus, we can compare our competitors to relevant segments of the entire USPTO and just Minnesotans.

baseline

Showtime – The Evaluation.  Interesting positive numbers are highlighted in green.  Interesting negative numbers are highlighted in red.

The Mueting Raasch firm shows an RCE rate in Column D that is about twice as high as both the Minnesota and USPTO average.  It is therefore not surprising that they end up with the highest average number of office actions in column H at 1.7.

On the other hand, the Hollingsworth Davis firm has an RCE rate in Column D that is but a small fraction of the Minnesota and USPTO averages.  Again, it is not surprising that they average just 0.6 office actions per grant.  They averaged only six months per grant!

The Shumaker & Sieffert firm appeals a higher than average number of applications at 8.3 percent.  This is part of the reason that they require the most amount of time to secure a patent grant.  They also average 1.7 office actions per grant, a number that should have been made red in Column H.

A few random shout outs are in order.  It should be pointed out that 3M has the most applications that required multiple RCE’s (4).  The Shumaker firm conducted 19 interviews in 24 granted applications.     The Schwegman firm and 3M also interviewed applications at a high rate.

And the winner is…   

hollNOTE:  The writers of this blog have no affiliation with this firm.  This was an objective evaluation.  In the coming days, perhaps we will dig a little bit deeper to see if the Hollignsworth firm had a less than obvious favorable bias or advantage. 🙂  But for now, let’s give credit where credit is due…and give this firm a round of applause.  Congrats!

 

Heated Arguments with a Patent Examiner

There are many different ways to go about telling a patent examiner that they are wrong.  Below are three methods extracted from the file histories of actual real patent applications.

METHOD ONE:  The Directly Aggressive California Way (13/588,902  December 1, 2017)(Jean Nguyen Registration No.: 71,051 MORRISON & FOERSTER  Las Angeles)

one

METHOD TWO: The Minnesota “Prove It To Ya” Method (13/495,767 October 5, 2016)  (Andrew L. Jagenow, Reg. No. 51,842  MERCHANT & GOULD  Minneapolis)

2

METHOD THREE: The Minnesota Nice Method (14/174199  October 27, 2016)              (Robert S. Moshrefzadeh, Reg. No.: 61,055    3M   St. Paul, Minnesota)

3

Patent Attorneys Can Have Dreams Too

Provisional

This super sweet hand sketch comes from a provisional patent application filed by Brad Pedersen in 2002.  What makes this a little more interesting is that Brad was and is a patent attorney with the firm of Patterson Thuente, with offices located in downtown Minneapolis.  Between drafting applications and filing responses for others, Brad finds time to drive technological improvements in the field of flying saucers.  But before you laugh, take the time to read some of his granted patents closely (e.g., 9,904,292  9,073,532  7,931,239).  The granted claims have total applicability to quadcopter type flying machines (a.k.a., drones).

In fact, you too can own a flying machine that incorporates Mr. Pedersen’s inventions.  Simply go to the website for QFO Labs (https://www.qfolabs.com/).  Tell them that TheWipe.org sent you and you will get…nothing really.  But we will appreciate the shout out.  Here is a cool product photo taken from their web page (Brad, we hope you will see this image snag as falling within the scope of fair use ;).

drone2

Brad’s patents are especially interesting in light of the explosive growth in the consumer drone market over the last 15 years.  Consider what has happened in that market since Mr. Pedersen’s provisional application was filed way back in 2002.  This graph shows the number of drones sold by year, and it is limited just to the USA and does not include all drone types.

drones               From:  https://www.newsledge.com/consumer-drones-2018-numbers/

So, perhaps it is not too late to take Brad to lunch and start forming a close bond so that maybe he will invite you to his cabin/mansion for the weekend when he strikes it rich?  But before you make that call, consider that he might be asking YOU for a favor.  One of his patents is currently the subject of an IPR challenge (Case Number IPR2018-01690) in relation to a Federal District Court proceeding.  So, if you scratch his back and help him with his litigation on a pro bono basis, perhaps he will scratch your back with that cabin invite.

K.H.