Archive | December 2013

Request for Comments on Methods for Studying the Diversity of Patent Applicants

The USPTO has issued a Federal Register “Request for Comments on Methods for Studying the Diversity of Patent Applicants.” Click here to see a copy of the request: 78-72064 – PTO – MethodsStudyDiversityPatentApplicants-ComReq (2)

The December 2 Request for Comment states that the USPTO “is interested in gathering information on approaches for studying the diversity of patent applicants in accordance with research methodology developed as required by the America Invents Act (AIA or Act). To assist in gathering this information, the USPTO invites the public to provide comments on collecting information on the diversity of patent applicants consistent with the AIA.”

The USPTO seeks comments on the following questions:
(1) How and by which methods should the USPTO effectively study patent applicant diversity in accordance with the expressed intent of Congress in Section 29 of the AIA?

(2) Should the USPTO conduct surveys of patent applicants to obtain demographic data such as race, gender, age, and geography, of inventors as a group?

(3) Aside from surveys, how can the USPTO effectively collect personal identifying information about U.S. and non-U.S. patent applicants in order to study applicant diversity through improved data matching, analytics, and studies?
(a) Should the USPTO collect certain personal identifying information about U.S. and non-U.S. patent applicants on a mandatory basis or on a voluntary basis? How would each of these approaches affect the accuracy of the information being provided?
(b) Can USPTO effectively collect personal identifying information from other institutions or organizations about U.S. and non-U.S. patent applicants?

(4) What particular personal identifying information should the USPTO seek (or not seek) in order to more effectively study applicant diversity? Why?

We would appreciate any comments you have to the Request for Comment, including the specific questions (1)-(4) noted above, by January 2nd.

Please send your comments to Shayne O’Reilly at or to Debora Plehn-Dujowich at

Also, please let either of us know if you are interested in assisting with this project.

Thank you

AIPLA Women in IP Law Committee – FREE WEBINAR

Please join the Women in IP Law Committee’s free* webinar:

Taking Charge of Your Career in Law
December 17, 2013
12:30 – 1:30 pm Eastern

Have you ever thought of starting your own law firm? Would you know where start, what to consider, what the risks are, the rewards, and whether it might be the right path for you? Do you want to improve your rainmaking skills and learn how to build better relationships with your clients and colleagues? Have you thought about how best to create your social media profile?

Our guests will share their experiences and practical insights on these and other topics to help you take charge of your career. In particular, Arlene Neal of Neal Blibo, LLC, and Valerie Mason Davis of The Mason Group Patent Specialists, LLC, will focus on various aspects of starting your own firm after working in law firms and in-house. Hetal Kushwaha of Marks &Clerk Canada will present her thoughts on how to start taking charge of business development. Debora Plehn-Dujowich of Drinker Biddle will focus her presentation on how to best create your own blog and your own social media profile.

For more information and to register please click HERE

*No CLE credit is available for this webinar.


Arlene Neal, Neal Blibo, LLC

Valerie Mason Davis, The Mason Group Patent Specialists, LLC

Hetal Kushwaha , Marks & Clerk Canada

Debora Plehn-Dujowich, Drinker Biddle

Jessica Ergmann (Moderator), Draeger

Yelena Morozova (Coordinator), Gill Jennings & Every LLP

We would like to thank our sponsor Drinker Biddle:

Drinker Logo for webinar

Lawyer Turned Thespian

By Jessica Ergmann, Dräger – IP Counsel, North America

Have you ever struggled with effectively conveying a message to a client? Well, power-point is typically less than stimulating, hence the phrase “death by power-point.” So, I have an idea for you. Become a thespian and put on a show.

It is not uncommon for an IP team, whether it be an in-house IP department or law firm, to encounter a lack of understanding or even resistance to a legal principle when working with a client. I will provide you with an example. We ask our clients to perform a patentability search prior to beginning a new R&D project, however prior to searching, we ask our clients to complete a short one-page form to ensure the searching, results, and analysis are protected under Attorney-Client Privilege. The response to our request- “You lawyers are ridiculous, I have to get permission to patent search?” So to teach our clients the principle of Attorney-Client Privilege, my IP team and I engaged in a court room drama. (Please keep in mind, the following is purely fictitious, and scripted so as to effectively, perhaps excessively, illustrate a point.)

Allow me to set the scene: Engineer was assigned to a new R&D project, so before expending countless R&D resources, he performed a patent search to evaluate the patentability of the new concept. In doing so, he stumbled upon US Patent ‘666, owned by Competitor, Inc., that he determined to be relevant to an existing product owned, manufactured and sold by his company. Engineer proceeded to promptly and prudently email his Manager the patent and his astute and thoroughly investigated legal conclusion of the product’s infringement of Competitor’s US Patent ‘666. Now, turn the clock ahead three years. Competitor files a complaint against Accused Company in the Eastern District of Texas (go ahead, pick any division), seeking damages for infringement of US Patent ‘666.

Fast forward another three years later (past discovery, including answering 43 Interrogatories, 78 Requests for Production, numerous hours in deposition, numerous unsuccessful settlement discussions, and gobs of money in attorney’s fees) to trial. Engineer is on the stand, the Texas Eastern District Court Judge presiding, and Competitor Counsel’s grueling examination begins.

First, the poking and prodding into every detail of Engineer’s past. (Our client is aghast at the intrusiveness of the questions and the repeated overruling of Defense Counsel’s relevance objections.) “Where did you attend pre-school?” “Did you make good grades?” “Did you have a dog as a child?” And on, and on, and on….

And then comes the credibility attack. Digging into Engineer’s past to find one iota of wrongdoing, a mere discrepancy on a job application, and inflating it in front of the jury as though he had committed murder. In every attempt to explain himself, Engineer was harshly quieted by Plaintiff’s Counsel and the Judge. He continued to elaborate on his answers, and Judge got really enthusiastic, went off script, and threatened him with a night in a “cold, dark cell.” (I am not sure if Engineer was genuinely scared, or confused because Judge went off script and caused him to lose his lines.) Anyway, Plaintiff’s Counsel continued attacking his credibility, while he had to sit there, tormented, answering in the form of “Yes” or “No” only.

And now for the smoking gun. The email sent from Engineer to Manager regarding Competitor’s Patent ‘666. As Plaintiff’s Counsel introduces the email into evidence: “Objection, your honor – This is a privileged communication.” Of course, I knew the email was not protected under Attorney-Client Privilege, however in my effort to demonstrate this principle to the audience, I objected. (Surely, our client thought, this cannot come into evidence, for Engineer sought legal advice from In-House Counsel after he emailed Manager.) Ah-ha! After you say, sorry, too late. OVERRULED. The email comes in.

“Engineer, please read Exhibit P0525 aloud to the jury.” Engineer squirms, and apprehensively reads the email, “Hi Manager, I was doing some patent searching and I came across a patent from Competitor, Inc. The patent number is 6,666,666, and as far as I can tell our product infringes the patent.”

Stick a fork in the Defense, we are done. Oh, and liable for treble damages too.

I attempted to rehabilitate Engineer, picking up the pieces of his integrity off of the floor and putting them back together, trying to showing the jury that he is a genuinely good guy who had one minor indiscretion in his youth. And look at all of the charity work he does!

I also attempted to show the jury that Engineer did not understand what the legal claim of infringement required, after all, he had a professional degree in computer science, not a J.D., and, get this jury, his determination was based upon the specification, not the claims. Yeah, like they give a rat’s you know what.

After the bloodbath ended, the point we emphasized to our client, was that even with my valiant attempt to rehabilitate the witness, all the jury sees is a guy who went to Columbia, surely a genius who knows how to read a patent. Oh yeah, and a big liar.

Accused Company was found to infringe Competitor’s US Patent ‘666, and damages totaled $30 million. Oh yes, and because we knew about the patent and proceeded to manufacture and sell our infringing product despite this knowledge, we are liable for a whopping $150 million. Why? – the client asks. Willful infringement = Treble Damages. “Ahhh” says the client as the light bulb makes its debut, “That Attorney-Client Privilege sounds important – Maybe we should fill out that damn form before performing a search next time.”

I would like to mention Dewayne Hughes, Senior IP Counsel Dräger, North America. This mock examination was his excellent idea, and it was a huge success with our R&D group. We effectively conveyed our message, and had fun doing it. Because they have a full understanding of why procedures are in place, they are willing, even encouraged to practice them. Dewayne has become a mentor to me, and I look forward to continuing to learn from him every day. Thank you.

Upcoming National Association of Women Lawyers (NAWL) Webinar

NAWL Management Series:
To be Viewed as a Leader, You Must Communicate Like One. A Practical Guide on Effective Communication to Clients and Stakeholders Within Your Organization.

A Skills-Based Workshop on Leading Through Persuasive Communication

December 10, 2013 | 11:00—12:00 PM Pacific/2:00—3:00 PM Eastern

This interactive webinar presented by The Fullbridge Program will focus on providing practical advice and skill-building to help in-house counsel, associates and partners alike effectively communicate with and persuade clients and key stakeholders within their organizations. Any professional’s ability to have influence internally and with clients is enhanced – or limited – by his or her ability to communicate effectively. By combining the business communication framework of Top Down Thinking (TDT) with core persuasive communication styles and channels (for instance, the channels of authority, rationality or relationships), participants will gain insight on how to communicate effectively while also drawing on their own inherent persuasive styles. A discussion of the six primary persuasive channels as well as insight on effective inter-generational communication will close the session.

The Fullbridge Program is an innovative business education and professional skills program specifically designed to accelerate practical and theoretical business knowledge and professional skills for lawyers.

Rya Conrad-Bradshaw, Director of College and XBA Partnerships, The Fullbridge Program
Carrie Fletcher, Director of Professional Development Programming, The Fullbridge Program