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CLOC's Patent Prosecution Framework – All on the Same Page

It was an honor to have been a part of the Corporate Legal Operations Consortium’s (CLOC’s) Patent Prosecution Deliverable Framework Initiative. For those not familiar with CLOC, it is a “non-profit organization consisting of legal operations professionals providing education, sharing best practices, networking, establishing a professional organization and community, and driving positive change across the corporate legal services ecosystem.”

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Unitary Patent System – Are You Ready?

As we have been hearing for some time now, the Unitary Patent (UP) system is going to be upon us before we know it. As you may recall, this new system includes not only the creation of a Unitary Patent asset, but also the establishment of a Unified Patent Court. As of the writing of this article, it appears that the UP system is imminent with the final milestones for triggering the system happening by this late Spring / Summer. No longer can we hope that the new UP system will only be implemented after we retire. It’s now a reality with us having to get our arms around it by the end of this year.

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Understanding IP Risk Mitigation Services to Combat Threats Posed by NPEs

Many people have asked me how to best mitigate IP risks associated with legal entities that assert patents of dubious quality for nuisance value (e.g., cost-of-litigation) settlement purposes – these are the proverbial “patent trolls” or more politely called non-practicing entities (NPEs). My answer unfortunately starts with a stereotypical lawyer-like answer, “it depends”.

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New USPTO Rule Makes Management of TM Assets Even More Important

Earlier this month the USPTO enacted a new facet to the §§ 8 and 71 Declarations of Continued Use, allowing examiners to ask registrants for additional proof-of-use specimens, above and beyond the ones provided in their affidavits. After conducting a two-year pilot where the USPTO asked 500 participants to provide additional specimens, 51% of registrants were unable to provide the now mandatory proof-of-use. This resulted in many of the trademark holders deleting the goods and services for which they were unable to prove use. Other registrations were cancelled altogether.

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Focusing on Patent Quality

As I reviewed our 2017 Patent Program Benchmarking Survey, I was excited to see that an increasing number of companies are embracing key performance indicators (KPIs) to help them not only increase the operational efficiency of their patent portfolio programs, but to also increase the quality of their output. This increased corporate focus on patent quality resonates with me. For years, many of you have likely heard me express my belief that quality over quantity is a critical path for all of us. It ensures that we can develop strategic intellectual property programs for our companies. It also helps further improve our Nation’s confidence in our intellectual property system, which has taken a hit over the last decade due to the unfortunate use of dubious-quality patents for litigation settlement purposes.  

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