Loading

2020 Intellectual Property: Yearly Report

2020 was a year unlike any other. While we celebrate countless innovations, many of which helped confront a global health crisis, we acknowledge the unprecedented challenges faced by so many. As the year draws to a close, we present the below reflection on both the accomplishments and the lessons taken from 2020. We look forward to your continued partnership as we work together to keep innovation moving forward. We wish you all the best in 2021.

Introducing PatentCAD

Patent applications are time consuming. The process requires meticulous attention to detail when crafting a detailed description and claims for the innovative product or process being patented. Currently, automated patent drafting tools exist but our attorneys concluded they did not improve efficiency or quality. For this reason, we decided instead of buying a program we would build our own.

A dedicated team at Polsinelli – Simon G. Booth, Counsel, Lead Developer of PatentCAD, Gregory P. Durbin, Practice Chair, Thomas M. Isaacson, Vice Practice Chair, Shelton W. Austin, Shareholder and Brian K. McKnight, Shareholder – used their collective years of experience to design, build and implement a new Artificial Intelligence tool that maximizes efficiency and quality while elevating client service.

Designed exclusively in-house and hosted by Polsinelli servers, PatentCAD provides a secure and efficient first-step in the patent drafting process that allows our attorneys more time to focus on strategy and claims analysis.

Women in IP Program

The Polsinelli IP Department continued to support the building of a community among tech-oriented women, including IP attorneys and their professional colleagues, with our Women in IP collaboration program. The WIP program has also seen an increase in cross-practice collaboration with Kathryn T. Allen (Privacy and Cybersecurity) and Iliana L. Peters (HIPAA). Increased cross-practice collaboration facilitates a greater sense of community and support among the women in all practices, leading to greater retention among diverse individuals.

Read more about our WIP program participants:

  • Learn how Intellectual Property attorney Tara A. Nealey, Ph.D., transformed her career from neuroscientist to Practice Chair of Polsinelli’s Biotechnology and Life Sciences Patent Prosecution practice, leading a team of attorneys, patent agents and scientists specializing in IP and the full range of life science technologies. Also, learn about what she enjoys doing in her free time, such as beekeeping, here.
  • Melissa Harwood, Ph.D., joined our Biotechnology and Life Sciences Patent Prosecution practice in the Seattle office.
  • Rhiannon D’Agostin helped several not-for-profit foundations fund groundbreaking research for rare genetic disorders, while also protecting their interests in any resulting intellectual property.
  • The firm recently welcomed Michelle L. McMullen, Ph.D., to our Biotech & Life Science Patent Prosecution practice in the Chicago and Raleigh office. To introduce Michelle to the firm and learn more about her practice, we asked Michelle a few questions.
  • Taryn Elliott, as Design Practice Chair, launched Polsinelli’s new Product Design & User Interface practice group.
  • Teri H.P. Nguyen obtained a rare grant of interlocutory appeal and briefed appellate arguments to the Federal Circuit. Teri was also appointed Secretary of the National Conference of Vietnamese American Attorneys.
  • Rebecca C.E. McFayden, Ph.D., joined our Biotechnology and Life Sciences Patent Prosecution practice in the Miami office.
  • Principal Margaux A. Savee was an invited speaker on several panels, including “Patents at the PTAB: How the Times Have Changed (or Not)” at IPWatchdog CON2020. Margaux was also an invited lecturer and published a paper entitled, “An Overview of Post-Grant Proceedings and Recent Developments” at the Patent Law Institute’s Advanced Patent Prosecution Workshop.
  • LaTasha (Tasha) Snipes joined our Intellectual Property and Technology Litigation practice in the Houston office.
  • Andrea M. Porterfield merged her trademark, patent and licensing experience in a consultative manner to help land a major new client in a breakthrough technology sector seeking to protect IP in the U.S. and abroad. Andrea also manages one of the firm’s larger client’s intellectual property portfolios totaling more than 1,100 active trademark registrations.
  • Tam Thanh Pham oversaw the preparation and filing of more than 200 patent applications in the U.S. and foreign countries, including Australia, Canada, China, the European Patent Office, India, Japan and South Korea. Tam also ran the mentorship program for more than 200 participants as Mentorship Committee Chair of the Asian American Bar Association of the Greater Bay Area.
  • Kathryn T. Allen was recently recognized by Missouri Lawyers Weekly as Up and Coming in her field for her innovative “Startup Toolkit” which provides low-cost legal support for startups to protect their IP.

Be on the lookout for virtual events and podcasts in 2021.

Polsinelli Launches the Product Design and User Interface Practice

In November, we announced the creation of a new Product Design & User Interface practice group led by Taryn Elliott. In recent years, visual impression and user experience have become an increasingly distinguishing factor in the marketplace. We partner with our clients to add value and expand the scope of coverage through complementary design patent, utility patent, trademark, trade dress and copyright filings.

IP Partnership With UnitedLex

We’re pleased to announce that we’ve partnered with UnitedLex to help businesses gain competitive advantage through state-of-the-art investment and management of intellectual property assets.

The Polsinelli and UnitedLex solution combines the patent experience of a traditional leading law firm with the cutting-edge technology of a legal services company. The approach aligns disparate departments and reimagines the process around IP investment and management, from the development of new IP and the monetization of existing IP to the assertion and enforcement of rights through litigation and alternative dispute resolution. This offering builds on the unique partnership between these two leading firms announced earlier this year.

We have found that the partnership has benefitted clients by providing many business-level advantages, including: the ability to handle large patent prosecution projects; a coordinated process that ensures issuance and the strongest possible patent coverage; strategic advice regarding patent filings, including identifying the most impactful markets to pursue; and, the development of a large patent portfolio without a need for extensive in-house resources.

2020 IP Department Highlights

  • The Hatch-Waxman group continued to advise and represent leading pharmaceutical and medical device companies, including in first-to-file ANDA litigation. The products involved in their recent matters collectively represent more than $5 billion in annual sales. The team’s counseling encompassed all aspects of the business cycle, from market identification and initial product development through litigation and trial or resolution.
  • The Post Grant group continued to advise and represent leading technology companies across a multitude of segments including telecommunications, energy and pharmaceutical. The Post Grant group continues to be recognized as one of the top and most successful firms in the country and was recently ranked number 13 among the top-performing law firms, and number 9 among firm representing petitioners by Patexia Inc. in their 2020 IPR Intelligence Report.
  • The IP Litigation group adapted to virtual advocacy by utilizing technology, including holding remote hearings by video. In June, Division Chair Gary E. Hood coordinated a complimentary webinar discussing remote advocacy with United States District Judge Robert W. Schroeder III, Chief United States District Judge Landya B. McCafferty and Emmy-Award Winning Video Producer and Trainer Madeleine Pollak.
  • The Trademark and Copyright group secured a client win in a case involving patent infringement, trademark infringement, trade dress on the look of product and trade dress on the packaging of the product. The team also continued to protect the IP of one of the largest social networking platforms in the world and were lead counsel on behalf of multibillion-dollar public company clients in various trademark opposition, enforcement and counseling matters.
  • The Chemical practice continued to represent Fortune 500 companies, mid-cap companies, emerging growth companies, and universities in various industries, including polymer, animal health, pharmaceutical, cosmetic, catalyst, oil and gas and chemical ingredient industries. The team counseled clients to develop, manage and enforce worldwide patent portfolios, designing a comprehensive patent strategy to achieve clients’ business objectives while avoiding infringement of competitors’ patents.

Recent Rankings and Recognitions

Because we are IP attorneys, we always track our stats. To follow are some statistics we are proud of. Our department’s recent rankings and recognitions include, but are not limited to, the following:

  • Nationally ranked in patent prosecution in IAM Patent 1000, 2020.
  • Nationally ranked as being a Standout in Intellectual Property Litigation, BTI Litigation Outlook 2021.
  • Nationally ranked in Tier 1 for Patent Law, Trademark Law, Litigation – Intellectual Property and Litigation – Patent in U.S. News and World Report’s 2021 “Best Law Firms.”
  • Ranked among the Top 1-2% of patent firms by Patexia Inc.’s Patent Prosecution Intelligence Report, 2020 Edition. Rankings taken from a study of 5,000 firms. Additional National rankings include Top 100 Best Performing Law Firms in Biotech.
  • Ranked No. 13 among the top-performing law firms nationwide in Patexia Inc.’s 2020 IPR Intelligence Report.
  • Ranked among the Top 100 Most Active Law Firms representing Complainants in ITC Section 337 cases in Patexia Inc.’s 2020 ITC Intelligence Report.
  • Ranked on Juristat’s “Top Patent Firms in 2019” list for Tech Centers 2400 and 2600. The ranking is based upon the number of applications filed, allowance rate and the average number of office actions before allowance over a 12-month period.

Nationwide Biotech Expansion

Our nationwide expansion included the addition of 8 Ph.D. level professionals in our Biotechnology and Life Sciences Patent Prosecution group.

Expanded Presence in Raleigh

We’re delighted to welcome Michelle L. McMullen, Ph.D., to our Intellectual Property Department in Chicago and Raleigh, N.C. Dr. McMullen joins the firm as a shareholder with more than 20 years of experience in intellectual property law and a deep understanding of biotechnology, pharmaceutical and medical technologies that provides clients with real world perspective and guidance.

Expanded Presence in Seattle

It’s our pleasure to welcome Shareholder Melissa Harwood, Ph.D., to our Biotech/Life Science Patent Prosecution Practice and growing Seattle office. Melissa becomes the first life science IP attorney in the Seattle office. Also joining Melissa’s Seattle team are Jan-Philip Meyer, Ph.D., and Lisa Lippert, Ph.D.

Expanded Presence in Miami

We grew our Miami office with a new Intellectual Property attorney, Rebecca C.E. McFadyen, Ph.D.

As the newest member of Polsinelli’s national Biotech/Life Science Patent Prosecution Practice, McFadyen is a registered patent attorney with a Ph.D. in Biomedical Sciences. She focuses her practice on all aspects of domestic and international patent prosecution, including third-party pre-issuance submissions, client counseling and pre-litigation analysis related to the life sciences and biotechnology areas.

Recent Intellectual Property Growth Nationwide

Our department is proud to have welcomed 20 exceptional attorneys, patent agents and scientists in 2020.

eAlerts

Webinars

ITC Litigation in the Times of COVID-19

International travel restrictions and local lockdowns have raised particular challenges for litigating before the U.S. International Trade Commission, with its normally-quick adjudications of international IP disputes. This presentation covers current developments in ITC law and practice, including COVID-19 procedures and practice pointers for discovery and hearings, legal developments in 2020, and a look ahead to issues to watch in 2021.

Intellectual Property Webinar Series Part 1: Design Your Way Through 2020

Whether on a budget, launching new product lines, or adapting products and services to a remote environment or other changes brought by 2020, obtaining protection for your IP remains critical. Design patents should be part of any IP strategy, particularly when considering the relatively low cost to obtain them and the higher potential damages. The webinar examines current trends and provide examples of effective integration of design patents into IP strategies.

Intellectual Property Webinar Series Part 2: Online Brand Protection and Anti-Counterfeiting Strategies in 2020

2020 saw many challenges and changes. With the increase in online sales and marketing, 2020 saw an explosion of knockoff products and brand abuse. We discuss the trends in the latest schemes used by bad actors and strategies to combat them.

We are excited to announce that Polsinelli will be the exclusive U.S. contributor for IAM’s weekly emails in 2021. We welcome the opportunity to connect with IP professionals worldwide.

Wishing you and yours all the best and we look forward to serving you in the near future. Cheers.

Patrick C. Woolley