The Dobrusin Law Firm - Intellectual Property

Strategic Intellectual Property Law

Month: November 2021

Daniela Walters, Eric Hydorn, and Bryan Lemanski Hone Their Patent Practice Skills in PTAB Mock Argument Program

While much of the advocacy in patent prosecution is in the form of written words, opportunities for oral advocacy do present themselves. During prosecution, practitioners may be required to conduct examiner interviews or attend Patent Trials and Appeals Board (PTAB) hearings, both of which require such oral advocacy.

The United States Patent and Trademark Office (USPTO) recently provided an opportunity to practice oral advocacy with its Legal Experience and Advancement Program (LEAP). A select group of practitioners from across the country were paired as counsel and co-counsel and advocated their side of a mock case in which the patentability of a sports helmet was disputed. Arguments were presented to current administrative PTAB judges during an abbreviated argument presentation.

Dobrusin shareholder Daniela Walters and associates Eric Hydorn and Bryan Lemanski participated in the LEAP event. Each improved their knowledge in preparing arguments, controlling the record during the trial, and addressing questions posed by the judges. The USPTO’s continued collaboration with practitioners provides crucial skill-building opportunities that improve the quality of the trial relationship between the PTAB and practitioners.

Michigan Lawyers Weekly Recognizes Becky Ballard as an “Unsung Legal Hero” for 2021

We are delighted to share that legal administrative assistant Becky Ballard has been named to Michigan Lawyers Weekly’s 2021 class of “Unsung Legal Heroes.”

The Unsung Legal Hero award honors law firm employees who consistently go above and beyond the call of duty, often behind the scenes. The honor is reserved for the most talented and dedicated legal support professionals in the state.

Shareholder Katie Pacynski wrote this in support of Becky’s nomination:

No one works harder than Becky. She has been my assistant for many years, and I continue to be impressed by her absolute dedication while she balances tremendous family demands.

Becky knows my docket like the back of her hand, and she is on top of everything. She anticipates my requests, has all necessary paperwork completed before I even have to ask, and seeks to understand WHY we do things. Becky has strong attention to detail and does whatever is needed without complaint. She not only has to deal with me (a person who, admittedly, has unreasonably high expectations), but she also supports Paul Palinski, one of our busiest attorneys.

COVID has been especially difficult for Becky. She has five children (the youngest still in elementary school) and four grandchildren, many of whom live with her, and she regularly helps her brother, a single father with full custody of his nine children. 

I cannot think of someone more deserving than Becky to be recognized for all she does.

A ten-year veteran of The Dobrusin Law Firm, Becky is an essential part of what we do and a valued member of our family. Congratulations, Becky!

The What, Why, and How of Continuation Patent Applications

The patent application and examination process is not static. After an inventor files a non-provisional patent application, there may be opportunities to modify or expand claims made in the original “parent” application or even add new claims related to the same invention before the parent issues. Continuation-type patent applications are vehicles through which inventors can strengthen the protections afforded to their innovations and respond to changes in technology, the marketplace, or the invention itself.

What Is a Continuation Patent Application?

A continuation patent application allows a patent applicant to pursue patent claims based on the same specification and drawings as previously filed in the pending “parent” application. It is a new application with new claims and associated fees but must contain the same patent illustrations and written description as the parent application. It will also share the same priority date as the parent application.

While a continuation involves the same underlying invention described in the parent application, it includes different claims that may be broader, narrower, or related to another aspect of the invention than the inventor claimed in their original application. The scope of a continuation application’s claims cannot be identical to those in the parent application.

Instead, claims in a continuation application can be canceled claims from the parent application. Claims in a continuation application can also be strategically drafted to cover a competitor’s product or service (if adequately described but not claimed in the parent application) that came to market after the parent patent application’s priority date.

Divisional Applications and Continuation-In-Part Applications

Closely related to continuation patent applications, and offering similar benefits, are divisional applications and continuation-in-part applications.

Like a continuation application, a divisional patent application uses the same specification and patent illustrations as the parent application and shares the same priority date. Unlike a continuation application, which contains new or different claims, a divisional patent application presents patent claims that the applicant already filed with the parent application. These existing claims might have been voluntarily withdrawn or canceled, or the U.S. Patent and Trademark Office (USPTO) may have required the applicant to withdraw or cancel them.

A continuation-in-part (CIP) application, which repeats a substantial portion to all of the parent’s specification, can also be filed during the lifetime of the parent application. The key feature of a CIP is that it allows the inventor to add new material to the specification and patent illustrations not previously disclosed in the parent application. This is a great route for inventors who have refined their invention and want to add or remove elements or include new improvements developed after the parent patent application was filed.

Claims in the CIP application based solely on the parent application’s disclosure will receive the parent application’s priority date. Any claims based on the new disclosure or a combination of the old and new disclosures will only be entitled to the CIP application’s filing date.

Why Consider a Continuation Patent Application?

There are several reasons an inventor may consider a continuation patent application as part of their overall patent prosecution strategy:

  • Claiming Multiple Inventions. A patent can only claim one invention. However, many patent applications are drafted or determined by the USPTO to cover multiple inventions. For such applications, the USPTO may issue a “restriction requirement” that divides up the inventions and asks the applicant to select one for examination. The applicant can then pursue other non-elected inventions in a divisional patent application.
  • Broadening Claims. Patent applications are sometimes allowed with claims providing only “narrow” coverage. For example, an applicant may establish an immediate defense by expediting claims to a specific embodiment of an invention or by accepting an Examiner’s offer to allow a subset of the pending claims. In such circumstances, an applicant can use a continuation application to pursue “broader” protection. They may also file a continuation to cover alternative embodiments of the invention or block design-arounds.
  • Evolving Technology. Technology is constantly changing. A pending continuation application can be a way to draft claims covering future advances, so long as they are supported in the original parent patent application.
  • Deferring Costs and Decisions. Sometimes, an inventor needs to defer a decision or costs related to their invention. An applicant can use a continuation application to delay prosecution by “restarting” the examination timeline by abandoning the parent patent application for a continuation application with the same or similar claims.

Filing a continuation, a divisional, or a CIP application is a strategic decision that can significantly impact the strength and scope of protections your invention will receive. To learn more about continuation applications, when to file, and discuss which type is appropriate for your new invention, please contact the attorneys at The Dobrusin Law Firm.

Recently Introduced Bill Seeks to Reform PTAB and the Inter Partes Review Process to “What Congress Intended”

As the America Invents Act (AIA) marks its 10th anniversary, one of its authors has introduced new legislation to change how the AIA-created Patent Trial and Appeal Board (PTAB) conducts its business.

Sen. Patrick Leahy, along with Sen. John Cronyn, announced their “Restoring the America Invents Act” bill at the end of September to address “problems for small businesses and ordinary Americans caused by poor-quality patents.” Specifically, the bill focuses on PTAB’s inter partes review (IPR) process, which Leahy asserts lacks transparency and is too often tainted by “politicized meddling.”

The PTAB and the IPR Process

The PTAB is a tribunal within the U.S. Patent and Trademark Office with authority to review and decide the validity of patents post-grant. The IPR process, which the PTAB oversees, was designed to provide a faster and less expensive way for companies often targeted by patent infringement suits to try to invalidate patents. The system has been particularly useful in managing lawsuits filed by “non-practicing entities” (NPEs). Sometimes referred to as “patent trolls,” NPEs do not make or sell products or services that embody patents they hold.

Over the past several years, criticism of the PTAB and the IPR process has grown relating to how the PTAB exercises its discretion when making rulings, the lack of review of its decisions, and the underlying constitutional legitimacy of the Board and IPRs generally.

Proposed Reforms in the Restoring American Invents Act

If the Restoring America Invents Act becomes law in its current form, several significant changes will come to the PTAB and IPR proceedings. Perhaps the most impactful would be the limits placed on the PTAB’s ability to deny the institution of IPR proceedings, providing that “a petition that meets the requirements of this chapter shall be instituted ….” The Director would maintain limited discretion to deny or alter institution based upon multiple proceedings involving the same patent or member of the same patent family pending before the Office.

The bill would also allow the USPTO Director to review PTAB trial decisions, permit the government to challenge patents before the Board, and expand the scope of IPRs and the PTAB’s jurisdiction. The bill also encourages stays of district court proceedings involving the same patents pending PTAB review and allows for immediate interlocutory appeals of decisions denying a request for a stay. Additionally, the bill puts the burden on patent owners to prove the patentability of any amended claims and makes several changes regarding estoppel of parties and claims.

The prospects of the proposed legislation are unclear, which can be said about most bills introduced in this deeply polarized Congress. While big tech companies will lobby for the bill, it will likely be opposed by those who believe those companies already have too much power and influence over the patent landscape.

If you have questions about the Restoring America Invents Act or PTAB and inter partes review generally, please contact the patent attorneys at The Dobrusin Law Firm.

Paul Palinski Helps High School Students Develop Career Skills as a Detroit Economic Club Mentor

Founded in 1934, the Detroit Economic Club (DEC) provides a platform for international dignitaries and business leaders to explore issues that shape the economic environment. The organization also seeks to identify and encourage tomorrow’s leaders, helping them develop professional skills through its Career Readiness Academy (CRA).

Recently, Dobrusin Law Firm shareholder Paul Palinski renewed his commitment to serve as a volunteer CRA Mentor through 2022. He joined the program in 2020.

The CRA is a five-month program where Southeast Michigan high school students connect with Paul and other young DEC leaders to discuss personal branding, career paths, networking, interview preparation, resumé writing, and LinkedIn usage. Over the curriculum’s six sessions, the students receive personalized attention and forge meaningful mentor-mentee relationships.

Paul exemplifies our firm’s pledge to support the communities in which we live and work. Besides the DEC, he is a member of McLaren Oakland Hospital’s board of directors and the governing council of the State Bar of Michigan’s Intellectual Property Law Section.

 

Photo Credit: Detroit Economic Club

The Dobrusin Law Firm Included Among the “Best Law Firms” in Patent Law for 2022

U.S. News & World Report and Best Lawyers® have released the 2022 list of the “Best Law Firms” in America, and once again, the Dobrusin Law Firm has earned a Metropolitan Tier 1 ranking—the highest ranking in the region—for our patent law practice!

For each annual edition of Best Law Firms, the publishers scrutinize client and lawyer submissions, peer reviews from leading attorneys in various practice areas, and additional information provided directly by the law firms.

In August, shareholders Eric Dobrusin, Kristen Pursley, and Rebecca Wilson were included on the 2022 list of the Best Lawyers in America© and shareholders Katherine PacynskiPaul Palinski, and Daniela Walters were named to the 2022 list of Best Lawyers: Ones to Watch.

Five Dobrusin Shareholders Recognized as DBusiness “Top Lawyers” for 2022

We are delighted to announce DBusiness Magazine has selected five Dobrusin Law Firm shareholders among Metro Detroit’s “Top Lawyers” in intellectual property law for 2022.

Our “Top Lawyers” and the IP categories in which they were recognized are:

Each year, DBusiness conducts an extensive peer review process, evaluating thousands of Southeastern Michigan lawyers across several legal specialties. Honorees are the most accomplished and esteemed practitioners in the region.

Please join us in congratulating Eric, Kristen, Erin, Katie, and Becky!

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Pontiac, MI 48342

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Fax: 248-292-2910
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