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Lisa Adams is a Member in the firm and is based in our Boston office. She is an experienced patent and trademark attorney known for her forthrightness and strategic approach. Lisa has a particular focus on medical technology, life sciences, mechanical products and processes, chemical and materials science, and electrochemistry. She represents clients in patentability evaluations, the preparation and prosecution of patent applications, and the reissue and reexamination of patents. She also conducts freedom to operate studies, performs due diligence and clearance studies, and helps clients build IP portfolios. She has been named among the Top 250 Women in IP by Managing Intellectual Property.

The term “blockchain” is everywhere, and it is likely that you will interact with blockchain technology every day in the years to come.

Blockchain technology recently came to the public’s attention thanks to rising prices in cryptocurrencies, like Bitcoin.  However, it continues to expand into almost anywhere information is stored, like primary voting, healthcare, and real estate.  Startups are even using initial coin offerings (ICOs) built on blockchain technology to raise money instead of using a more traditional venture capital route.  A startup company can release its own digital currency, which investors can purchase instead of buying shares in the company.  In 2017, startups raised $6.8 billion through ICOs.

What is blockchain?

Continue Reading What is blockchain and how will it affect me?

If you purchased anything from a website using a one-click purchase button, you indirectly paid Amazon for that ability, at least up until September 11, 2017 when Amazon’s patent to this technology expired. As a result, one-click purchasing might become the new norm.

In 1997, Amazon filed for a business method patent to one-click purchasing, which allows return shoppers to purchase items with just a single click of a button instead of having to proceed through a prolonged checkout process. The patent issued in 1999, at which point Amazon sued Barnes & Noble for patent infringement based on a similar technology used during Barnes & Noble’s checkout process. After extended litigation, the two companies settled in 2002. Not wanting to face similar litigation, Apple licensed the patent in 2000 to simplify ordering from the Apple Store.

Continue Reading Have you ever used a one-click ordering process online? Then you indirectly paid Amazon.

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner.  The online form allows applicants to request an interview at any time without calling the examiner over the phone and leaving a message, which is a common practice now.  The form also is intended to be used instead of the older Applicant Initiated Interview Request Form, which is a separate form and is no longer recommended by the USPTO.

Continue Reading Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

Prior Art SearchThe latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent prosecution.  The U.S. Patent and Trademark Office (USPTO) wants to increase the quality of examiner searches using non-patent literature and foreign patents generally.  To achieve this goal, STIC provides examiners with access to foreign patents, foreign applications, journals, books, commercial databases, translations, and a specialized collection of resources in the biological and chemical fields.  STIC also has search strategy experts that can assist examiners in search activities and understanding certain technology areas.

Continue Reading How to Search Like an Examiner With the Scientific and Technical Information Center

The Clarity of the Record Pilot program is an ongoing and evolving program that is part of an attempt by the U.S. Patent and Trademark Office (USPTO) to produce high-quality patents as part of the Enhanced Patent Quality Initiative (EPQI).  This is all part of a larger push by the USPTO to document on the record everything that happens during prosecution of an application, which can affect any issued patent and any patent family members in later legal proceedings.

The initial pilot is over, and the results of the pilot are now being reviewed as part of the ongoing program.  The pilot ran through August 20, 2016, and worked to identify best examiner practices for enhancing the clarity of the prosecution record and, in particular, greater clarity in claim interpretation, interview summaries, and reasons for allowance.  The pilot consisted of about 130 utility patent examiners, and the participants participated in a variety of different activities, such as ongoing training activities and Quality Enhancement Meetings (QEMs).  The USPTO has provided public access to training slides presented to the participants regarding Documenting Claim Interpretation, Interview Summaries and Pre-search Interview Option, and Reasons for Allowance.

Continue Reading Beware of the USPTO’s Push for Clarity

George Bailey stands on a bridge begging for another chance at life. Upon being granted a second chance, he joyously runs home to embrace his family. As the community of Bedford Falls rallies around him and raises funds to save the endangered Building and Loan and George Bailey personally from an unjustified failure, someone proclaims a toast to George Bailey, “the richest man in town.” It’s a powerful ending to a beloved holiday classic, and it would have been forgotten over time but for accidentally allowing a copyright to expire.

Continue Reading When a Quirk of Copyright Law Creates a Christmas Classic: It’s a Wonderful Life and the Public Domain

This is the third in a 3-part series about the use of crowdfunding in health and biotech start-ups. We started with the story of a tech start-up which set records for funding through a Kickstarter campaign, triggering the interest of entrepreneurs in capital- intensive industries.  Part 2 discussed the JOBS Act and the government’s attempt to overcome regulatory hurdles facing companies which want to use crowdfunding to raise equity investment capital. Part 3 addresses some Potential Dangers inherent in the system of crowdfunding being devised.  We hope you find the series educational and invite you to contact the authors with questions. Crowd Funding Image

PART III:  First, the JOBS Act requires the SEC to issue complex implementing rules prior to crowdfunding becoming a reality.  For any startup seeking funding through a crowdfunding source, the rules proposed by the SEC under the Act demand detailed disclosures regarding the company.  The company must also describe exactly how the securities it is offering are being valued.  Additionally, the Act requires ongoing, annual financial reports from the company after any successful crowdfunding campaign.  These facts alone may scare off some entrepreneurs.

Continue Reading Crowdfunding and IP in Health and Biotech Start-ups (Part 3): Potential Dangers

Crowd Funding ImageThis is the second in a 3-part series about the use of crowdfunding in health and biotech start-ups. We started with the story of a tech start-up which set records for funding through a Kickstarter campaign, triggering the interest of entrepreneurs in capital- intensive industries (Part 1: The Beginning). Part 2 discusses the JOBS Act and the government’s attempt to overcome regulatory hurdles facing companies which want to use crowdfunding to raise equity investment capital. Part 3 will address some Potential Dangers inherent in the system of crowdfunding being devised.  We hope you find the series educational and invite you to contact the authors with questions. 

PART 2: he US government began to address these investment challenges through the Jumpstart Our Business Startups Act (JOBS Act) in April 2012. While companies like Kickstarter allow startups to sell products or services, the JOBS Act envisions companies actually selling equity in themselves through crowdfunding campaigns.  Certain provisions of the JOBS Act allow investments by accredited investors, and Title III of the JOBS Act anticipates allowing large numbers of non-accredited individuals to invest in startup companies.  Rules proposed by the Securities and Exchange Commission (SEC) to implement the Title III crowdfunding provisions of the JOBS Act were expected by the end of 2013, but they have continually been delayed.  Expectations now place release of the rules at the end of 2015.

Continue Reading Crowdfunding and IP in Health and Biotech Start-ups (Part 2): The JOBS Act

Crowd Funding ImageThis is the first in a 3-part series about the use of crowdfunding in health and biotech start-ups. We start with the story of a tech start-up which set records for funding through a Kickstarter campaign, triggering interest in crowdfunding by entrepreneurs in capital-intensive industries.  Part 2 will discuss the JOBS Act and the government’s attempt to overcome regulatory hurdles facing companies which want to use crowdfunding to raise equity investment capital. Part 3 will address some Potential Dangers inherent in the system of crowdfunding being devised.  We hope you find the series educational and invite you to contact the authors with questions.

PART 1: Pebble Technology had an interesting goal.  It wanted to design and build a watch that could connect to iPhone and Android smartphones using Bluetooth.  It wanted to allow the watch to alert a wearer with a silent vibration for incoming calls, emails and messages.  The traditional path for Pebble Technology would have been to raise funds, first through angel investors and then—if it was lucky—through venture capital groups.  It would build its Pebble watches.  It would market them.  And finally it would have attracted a large enough customer base to make its time and effort worthwhile (for the company and its investors).

Continue Reading Crowdfunding and IP in Health and Biotech Start-ups (Part 1): The Beginning

On October 1, 2014, the United States Patent and Trademark Office (“USPTO”) announced the After Final Consideration Pilot 2.0 (“AFCP 2.0”) – a program intended to provide new features that will enhance communication between the USPTO and the applicant, as compared with the original After Final Consideration Pilot (“AFCP”).  AFCP 2.0 is free and will remain in effect until September 30, 2015.

There are two significant differences between the original AFCP program and AFCP 2.0:

1.      Requirement for Amendment to At Least One Independent Claim

A response after final rejection under AFCP 2.0 must include an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect.  The purpose of this requirement, which was not required in the original AFCP program, is to focus the program on applications that are more likely to benefit from the program.

2.      Availability for an Interview

If the examiner’s review of the response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.  Form PTO/SB/434 includes a statement that the applicant is willing to participate in an interview initiated by the examiner.

While the requirement for an amendment to at least one independent claim may very well increase the effectiveness of the program due to a focus on applications that are more likely to benefit from the program, this change does not appear to provide any additional advantages to applicants.  Under current practice, examiners have sufficient basis not to consider many responses filed after a final rejection, often because the examiner determines that further search and/or consideration is required.  While AFCP 2.0 allots a limited amount of time for examiners to consider after-final amendments and to conduct a further search, examiners still have discretion to determine that the amount of time allotted under AFCP 2.0 is insufficient.  In particular, prior to considering the amendments and conducting any additional searches, the examiner must first determine whether additional searching and/or consideration is required and whether such search and/or consideration can be completed within the time allotted under AFCP 2.0.  Only after this determination will the examiner consider the amendment, conduct additional searching, and, if required, request an interview.

Accordingly, while the USPTO statistics may show an increased percentage of applications allowed after final through the program, this increased percentage could simply be a result of reduced participation in the program. Applicants can continue to expect examiners to issue an advisory action indicating that further search and/or consideration is required.