Archive for the ‘patent’ Tag

What Goes Up…Must Come Down: Viagra Patent Invalidated by Canadian Supreme Court   Leave a comment

An article that I wrote about the invalidation of Pfizer’s Canadian patent for Viagra was recently posted on my firm’s Life Sciences Now blog.


You may read the article here.

Posted May 15, 2013 by deboraplehn in Uncategorized

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Don’t Miss the AIPLA 2013 Mid-Winter Institute!   Leave a comment

The American Intellectual Property Law Association (AIPLA) is trying something new for its 2013 Mid-Winter Institute which will be held in Tampa, Florida on January 30-February 2, 2013.  For a description of the program see the  AIPLA 2013 Mid-Winter Institute flyer.

The focus of the meeting will be on why Intellectual Property is THE business asset of the 21st Century.  IP attorneys and company executives will work side by side to present how they work together to face the challenges presented by today’s economy and protect IP in the global marketplace.

Here are some of the advantages of attending the meeting, alone or with a client:

  • attend the sessions and think through best practices and procedures to determine how to best maximize IP protection
  • learn directly from business executives and leaders why IP protection is so important to companies today
  • the conference will provide an intense primer on IP protection, including patent, copyright, trademark, as well as trade secret protection
  • this is a great opportunity to network with in-house or law firm attorneys and to learn from each other how to best maximize IP protection
  • learn how a working knowledge of IP has benefited business executives, CEOs and CTOs straight from the source
  • learn how IP matters to Angel and Venture investors
  • learn about global IP issues in biotechnology, chemistry, high-tech fields and other technical areas
  • learn how start-ups can best maximize the value of their IP and attract investors

If you want to receive more information from the AIPLA on the 2013 Mid-Winter Institute as it becomes available, click here.  I am one of the organizers and will attend the Mid-Winter Institute.  I look forward to seeing you there!

Posted November 4, 2012 by deboraplehn in AIPLA

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WIPO ePCT–a PRIVATE PAIR-like way to keep track of your International Applications   2 comments

WIPO has a new system for keeping track of your International Applications, and it is called ePCT.  It works much like the USPTO’s Private Pair, but it has some advantages over Private Pair, that I will explain below.

For a list of FAQ about ePCT, click here.  Here are some of the highlights regarding this new service offered by WIPO:

1.  As with Pair, there are two services, a public one and a private one.

2.  If you wish to use the public service, all you need will be a basic user account.

3.  If you wish to use the private service, you will have to set up a WIPO online user account via the WIPO accounts service and you will need to obtain and use a digital certificate.  For instructions on how to create a user account and obtain a digital certificate, click here.

4.  ePCT private services allow you to access international applications filed as of January 1, 2009, regardless of the receiving office and regardless of the type of filing.  You will receive advance notification of dates, such as the 30 month time limit.  It also allows you to create constructable links to specific document pages, that you can then forward to your clients or co-workers.  Another advantage over Private Pair is that it allows you to preview the front page of an international application publication, so that you can make any necessary corrections before publication.

5.  It is not yet possible to electronically file an international application via ePCT.

6.  The person who has control over an international application in ePCT is termed the eOwner.  He/she can grant eOwner, eEditor or eViewer to other users with whom he/she has conducted a “digital handshake.”  eEditors can access and edit the documents related to a particular international application, but cannot assign editing or viewing rights to other users.  eViewers, as the name suggests, can only view documents but cannot edit them.

7.  ePCT is part of the entire Global Dossier concept, a virtual environment to give all stakeholders a virtual one-stop shop for managing related international applications.

For a video describing the Global Dossier concept, click below:

Global Dossier concept

Posted July 15, 2012 by deboraplehn in PCT

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USPTO Proposes New Standard for the Disclosure of Sequence Listings Using XML   Leave a comment

In an announcement in the Federal Register on May 15, the USPTO posted a request for comments on the recommendation for the disclosure of sequence listings using XML (Proposed ST.26).   The standard is being revised to require the use of extensible mark-up language (XML) format, to update the standard, and to more closely align requirements of the standard with those of public sequence database providers.  The USPTO is requesting comments to be received on or before July 16, 2012.  No public hearing will be held.

As an explanation for the proposed change, the USPTO explains that in October 2010, the Committee on WIPO Standards (CWS) established a Task Force, designating the European Patent Organization (EPO) as the lead, to propose a revised standard for the filing of nucleotide and/or amino acid sequence listings in XML format, known as the “XML standard.”  It is expected that the XML standard will be adopted at a meeting of the CWS in early 2013.

The text of the current draft of the proposed main body of the sequence listing standard, with its associated Annexes, is available via the Office’s Web site: click here.  The documents are also available below:

1. Recommendation for the disclosure of sequence listings using XML (ST. 26): click here.

2. Annex B1 Controlled Vocabularies: click here.

3. Document Type Definition (DTD for ST. 26): click here.

Some of the highlights of the proposed changes include:

1. The XML standard (paragraph 4) prohibits the inclusion of any branched nucleotide or amino acid sequences or any sequences with fewer than ten specifically defined nucleotides or fewer than four specifically definted amino acids.

2. The XML standard (paragraph 5) specifies inclusion of sequences containing any nucleotides that can be represented using any of the symbols set forth in Annex B.1, paragraph 1, Table 1.  This includes modified nucleotides.

3. The XML standard (paragraph 6) specifies the inclusion of sequences containing D-amino acids.

It remains to be seen how this new XML standard will impact biotech practice, and how burdensome it will turn out to be, or how useful.

Posted June 13, 2012 by deboraplehn in USPTO

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Google Patents Now Redirects to the Main Google Home Page   Leave a comment

Some of you may have noticed that if you try to go to the Google Patents homepage, you are now automatically redirected to the main  Google Home Page.  In fact, without much warning, Google decided to integrate Google Patents with its main Google search engine.

Google calls it part of its “Spring Cleaning in Sping” in its official blog.   Here is what they say about Google Patents:

  • We’re redirecting the old Patent Search homepage to to make sure everyone is getting the best possible experience for their patent searches. Over the past few months, we’ve been making updates and improvements to the Patent Search functionality on—not only are you able to search the same set of U.S. patents with the same advanced search options, the new experience loads twice as fast as the old Patent Search homepage, contributes to a unified search experience across Google, and sports Google Doodles as well. The team looks forward to including patents from other countries soon, and will be rolling out additional features to Patent Search on in the future.

This is part of an initiative by CEO Larry Page to streamline the services offered by Google.  Some of the other services that have also been shut down are Google Flu Vaccine Finder, Google Related, Google Sync for Blackberry, Google Talk’s mobile web app and One Pass.  For a complete list of services that have been affected, read here.

The good news is that Google Patents is not gone altogether, and the Advanced Search Page is still active, as Google explained in their blog, cited above.  It is also encouraging that Google plans to add additional features, such as the addition of patents from other countries.  In a previous blog post, I reported that Google is now archiving US patent file histories from public PAIR.  Hopefully, Google will continue to expand its patent-related services.  Keep checking back for updates!

Posted May 6, 2012 by deboraplehn in Google

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Interview: Drew Smith, developer of MPEP Plus iPad App   Leave a comment

I recently interviewed Drew Smith, the developer of the MPEP Plus iPad App.  He had sent me a free copy of the app to try out, and I decided that rather than write a review, it would be interesting to interview him to find out about how he decided to become an app developer while still in law school.

1.  How did you come up with the idea for your MPEP Plus iPad App?

My firm does a good amount of international work through foreign agents, and I initially planned to make a database of global patent laws and procedures.  My thinking was that it’d be extremely useful to have quick access to, say, rules on novelty in Brazil, without having to search the web and click through a lot of clutter.  But while simple to code, the app became a little problematic, interestingly enough, because of IP issues.  Many foreign governments hold copyrights on their government works.  I found a good number of English translations of foreign-language laws, but many of those were the result of someone’s creative translation.  After a while, my app was so gutted of information that it was essentially just the sites of USPTO and WIPO, with poor auto-translations of a handful of government works.  I refocused the app to only provide the MPEP and supporting materials.  The “PLUS” was my personal joke about my app being better–as if the MPEP, the bible of the industry, is somehow inadequate!

2.  There are already other MPEP apps on the market–how is yours different?

After I released the first version of this app, I looked to see what had already been done.  Surprisingly, there are very few apps that focus on the MPEP, despite the fact that every patent attorney and agent uses it.  I wanted to incorporate things that make the iPad fun, such as touch gestures, animation, and vibrant colors.  I like to think that the use of public-domain patent drawings add a touch of humor, and that the patent-retrieval system is an intersting twist on just punching in a number.  If you’re going to make a program for such a powerful platform, why subject users to page after page of black text?

3.  You are a patent agent and are about to be admitted to the NY bar, right?  How did you become interested in becoming an app developer?

Yes, I’m an agent for about one more week, until I’m sworn in as an attorney.  I’ve always liked programming, probably because it’s in my blood.  My dad got his undergraduate degree in applied math, which was computer programming when computers were the size of a small car.  Later, in the mid-1980s, he was one of the first attorneys to use a computer in his law practice, then started his own software company in the 90s, and put out his own iPad app, Form 14, in January.  (It calculated child support using Missouri guidelines.)  I took a programming class in college, but didn’t consider it as a career.  Later, as an engineer, I modified pieces of software that were in place at the time.  I dabbled in coding a game for the XBox but never made anything worth releasing.  When I started in patent law, I realized that I needed something to distinguish myself as a patent professional.  There will always be people with better degrees, or better grades, so why would a client pick me?  So I’d say I got into iOS programming half for my own enjoyment, and half to show a subset of potential clients that I can handle at least some of their inventive subject matter.

4.  Do you have any advice for others who are interested in developing their own apps?

I’d say dream big, but start small.  My first app, Dial-a-Patent, was a slightly tweaked calculator from the first tutorial of Paul Hegarty’s iOS development class on iTunes U.  I wanted to do amazing things, but I had to keep it in perspective.  Also, I’d estimate that learning Objective-C and Xcode took me around fifty hours.  That’s just time spent running through tutorials and reading about syntax!   That being said, if a person is dedicated enough, once they get past the initial learning curve, integrating functionality is not nearly as daunting.  If a person has capital but not time, there are lots of talented programmers out there who would make an app for cheap.

5.  Are you currently working on new apps?  Any hints?

Since I’ve started developing, I’ve had people approach me with a few non-legal ideas, almost all of which incorporate the  most interesting features of iOS: animation, facial recognition, photo integration, geolocation, 3D modeling, RSS feeds, and so on.  Unfortunately, because they are for other people or entities, I can’t really discuss them.  I’ve considered doing apps for other areas of law, or law students, but don’t have a “hook,” like patent illustration, just yet.  The next thing that I’ll release will probably be a patent form app.  It would be useful if you need to fill out an IDS, or declaration, and don’t have your computer in front of you.  In addition, there will be a couple of other features that I hope will utilize the benefits of the hardware.

6.  What are your favorite apps for (a) work and (b) play?

I  don’t use too many apps at work, other than my own!  But I can say that Penultimate and iAnnotate PDF really helped when I was studying for the patent bar.  For fun, the app I’ve used most, hands down, is Hipstamatic.  I play a good number of games on the subway, like NBA 2K12 and Final Fantasy Tactics.  And apps like HBO Go and Netflix provide a good dose of entertainment at the end of the day.

Public PAIR patent file histories now available on Google   4 comments

The patent file histories of roughly a million and a half patent applications are now available through Google.  Google is crawling file histories from Public PAIR on the USPTO website.

Google repackages the documents as zip files.  Google has provided detailed information about the format.

For instructions on how to retrieve file histories from Google Click Here.

This new service indicates that Google is investing more resources into its Patent search franchise, spearheaded by Google Patents.  Google may be positioning itself to be a real competitor to other services that currently provide patent file histories.  The real advantage of Google is, of course, that it provides the service for free.  It remains to be seen if Google will continue expanding the type of services it provides, perhaps beginning to offer free patent monitoring services, such as “Google Patent Alerts.”

Posted February 3, 2012 by deboraplehn in Google

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Through the looking glass–a patent lawyer’s adventures with mobile technology   Leave a comment

I decided to start a blog because I wanted to share my experiences navigating the wonderful new world of mobile devices like the iPad and the iPhone in both my career and in my personal life. I am a patent attorney and my scientific background is in biochemistry. I love computers and gadgets, but am pretty much self-taught when it comes to how to use them. I also love social media. I have a twitter account (@deboraplehn) from which I microblog about anything and everything that interests me. I found that sometimes 140 characters just wasn’t enough for me to share with others my experiences. After lawyertechreview featured me in an article for App Friday, I received a lot of positive feedback. Many colleagues enjoyed the article and were curious as to what other gadgets or apps I used. This made me think that other people, like me, were new to the world of mobile gadgets and might enjoy hearing about my adventures as a new user. This is why I decided to start this blog. I hope you will enjoy it and I hope many people will share their stories and expertise with me as well!

Posted June 9, 2011 by deboraplehn in Apple, Apps, iPad, iPhone

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