PRACTICE TIPS FOR TAMPA BAY ATTORNEYS - MAKING YOUR CLIENT SPECIAL
Intellectual Property Section
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M
aking your client
special means more
than great client
experience for patent
attorneys; it means providing clients
with an advantage when taking on
a common enemy in the patent
application process: time. The aptly
named Petition to Make Special, 1
which is a valuable tool for
attorneys with clients eager to press
through the USPTO, allows patent
applicants over the age of 65 to
expedite applications.
For Tampa Bay practitioners,
the Petition to Make Special takes
on added significance because
the Tampa-St. Petersburg area
represents the “most aged
[metropolitan] place” 2 out of
the United States’ 53 largest
metropolitan areas. With 18.7
percent of the Tampa-St. Petersburg
population over 65, nearly one in
five would-be inventors can use
the Petition to Make Special. 3
In the case of Nick Brestoff,
the Founder of Intraspexion — the
“Minority Report of Litigation,” 4
the Petition to Make Special was
likely a contributing factor in moving
his company’s patent application
(U.S. Patent Application No.
15/277,458) through the USTPO
in less than three months to a first
Office action. The average time
for first Office action for the same
representing high
class/subclass is
5
risks of potential
nine months,
lawsuits.
meaning Brestoff
The key
moved from
takeaways for
application to
Tampa Bay
approval in less
practitioners?
than a third of the
Keep an eye out
time for similar
for opinions on the
applications.
inventive concept.
For patent
Don’t be afraid
And don’t be afraid
attorneys, the
to ask your client’s
to ask your client’s
approval of
age, if you’re
Intraspexion’s
age, if you’re
interested in making
software-based
interested in making
your client special!
patent, “Using
Classified Text and
your client special.
1 37 CFR
Deep Learning
Algorithms to
1.102(c)(1). See also
Identify Risk and
M.P.E.P § 708.02,
Provide Early Warning” (U.S.
Section II.
2 Joel Kotkin, America’s Senior
Patent No. 9,552,548), also lends
other insights in the wake of Enfish,
Moment: The Most Rapidly Aging Cities,
LLC v Microsoft Corp.,and Bascom
Forbes (Feb 16, 2016), https://www.
Global Internet Servs. v. AT&T
forbes.com/sites/joelkotkin/2016/02/1
Mobility, in which articulating an
6/americas-senior-moment-the-most-
“inventive concept” 6 emerged as a
rapidly-aging-cities/#28d238d653e5.
3 Id.
ray of hope against potential 35
4 Jeff Cox, AI for Legal Ops and
U.S.C. § 101 challenges. In Bascom,
the court provided that, “an
Corporate Counsel - The First Wave,
inventive concept can be found
ACC Legal Ops Observer (March
in the non-conventional and non-
2017), available at http://newsmanager.
generic arrangement of known,
commpartners.com/accalegal/issues/
7
conventional pieces.”
2017-02-01.html#2.
5 First Office Action Estimator,
While Intraspexion uses
“conventional pieces,” such as
United States Patent and Trademark
Deep Learning Algorithms and
Office (last accessed Apr. 11, 2017),
reading facts from prior cases to
https://www.uspto.gov/cgi-bin/
identify common phraseology
fao_calc/fao_calc.pl?class=706&
for particular lawsuits, it’s quite
subclass=025000
non-conventional, and arguably
&submit=Search+
inventive, to train an artificial
by+Class%2F
intelligence system to find key
Subclass.
6 Bascom, 827
words relating to specific case
types, install that system locally
F. 3d at 1349.
7 Id. at 1350.
on a company computer or in the
cloud, and then leverage the
system to read millions of internal
Author:
communications to locate phrasing
Jeff Cox, Esq.
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