Challenges abound with regards to litigation, outsourcing and monetization; and are currently increasing on a national and international level. It is essential to understand these issues in order to have an upper-hand in overcoming these obstacles.

IP and patent professionals are planning to invest in several services and solutions, some of which include:

  1. Valuation Services
  2. Recruitment & Talent Management
  3. Patent Litigation
  4. Patent Drafting & Filing

IQPC surveyed a senior group of in-house IP and patent professionals to discover which services and solutions they plan to invest in over the next six to twenty-four months to help them build a cost effective, robust and future proofed IP and patent strategy.


To learn more about these issues, join IQPC at Global Patent Strategies Summit this March 11-13, 2015 in San Jose, CA.

IQPC’s Global Patent Strategies Summit will provide you with the opportunity to familiarize yourself with some of the most important issues at play in the industry today by participating in an interactive forum designed with engagement and open discussion in mind. Join us in order to:

  • Improve your company’s proficiency with regards to efficient & effective patent portfolio management
  • Collaborate with outside counsel in order to maximize results while minimizing costs
  • Understand, and respond to, changes in the patent reform landscape and recent SCOTUS rulings
  • Take a deep dive into the International space through sessions focused on the EU’s Universal Patent Court plan & an update on the Patent space in India/China

For more info on topics and sessions, download the agenda here.

To save an extra 20% off of standard pricing use the code: GPS_BARISTABLG

For more information visit, email or call 1-800-882-8684


  Print This Post Print This Post is a new patent-related website that claims to use peer-reviewed patent valuation methodologies to rank patent attorneys and to profile patent examiners.

PatentStat uses comprehensive data-mining and cutting-edge analysis to help you choose the most appropriate patent attorney, and profiles patent examiners to help you manage patent prosecution.

The use-cases are to help patent filers intelligently select appropriate counsel in any one of 33 technology areas, and to help attorneys better know the examiners who are reviewing their applications.

The methodology is transparent (, and the listings are dynamic, allowing sorting based on each individual priorities (e.g. a patent filer may prioritize time-to-grant over any other metric).

Law firm and attorney profiles are developed through a transparent process:

  • All patents granted in the past ten years are grouped by technology area and by filing year
  • Each patent is scored based on intrinsic factors such as time to grant, back citations, claims, etc.
  • The patents in each group are ranked based on these factors
  • For each technology area, law firms and patent attorneys are profiled based on the average rank of their patents

Why have these metrics been chosen?

The metrics used by PatentStat have been validated through independent peer-reviewed research, or through use by international bodies such as the OECD

What if I disagree with these metrics?

PatentStat is transparent and flexible. No weighting is applied to the metrics — they are all considered at par — and the website also allows you to sort the lists by any of the metrics. So, you are free to play with the metrics and order the law firms and attorneys as you see fit.

Think this is a good idea or a not-so-good one?  Let us know.

  Print This Post Print This Post  

A new blog just out by Michael McCabe, Jr., is IPethics & Insights, which focuses on ethics and discipline in the field of IP law.  It’s self-described as a resource for intellectual property attorneys regarding patent and trademark ethics, professional liability, and discipline, including the latest USPTO and court decisions, trends, news, and analysis.

“I’m not upset that you lied to me, I’m upset that from now on I can’t believe you.”
                             ~ Friedrich Nietzsche

A recent article focuses on U.S. District Judge Keith Ellison’s decision in in Tesco Corporation v. Weatherford International Inc., in which he dismissed a patent infringement action with prejudice as a sanction for counsel’s misrepresentations to the court.

The district court stated, “Counsel owes the Court a duty of complete candor at all times, regardless of whether the jury is in the courtroom, or opposing counsel rejects other sanctions.

McCabe points out that lying to a judicial officer is a serious matter and one of many ways that Intellectual Property practitioners can be professionally disciplined.

If you get a chance, check it out this new resource.

  Print This Post Print This Post  

The USPTO began accepting applications for the Glossary Pilot on Monday, June 2 as part of ongoing efforts to improve the U.S. patent system. The Office initiated the pilot program to study the impact of glossary on claim clarity in the specification of software-related patent applications by encouraging the use of glossaries by patent applicants and will run for 6 months.

Participation in the Glossary Pilot requires an applicant to include a glossary section in the patent application specification to define terms used in the patent application. Applications accepted into this pilot will receive expedited processing and be placed on an examiner’s special docket prior to the first Office action, and will have special status up to issuance of a first Office action.

To qualify for the Glossary Pilot Program, all of the conditions and requirements set forth in the Federal Register Notice dated March 27, 2014 must be satisfied.  In particular, applicants are reminded that:

1.         The application must be an original, non-reissue, non-provisional utility application that does not claim benefit of a prior filed non-provisional U.S. application, unless the application is a continuation-in-part application filed for the purposes of providing a glossary.

2.         The application and the petition to make special using Form PTO/SB/436 must be filed on or after June 2, 2014 and before either 200 petitions are granted and/or six months after the June 2, 2014 start date, whichever occurs first.

3.         The claimed invention must be classified in one of the following Art Areas (see USPC class [PDF] ) information to determine if the utility application would be subject to examination by one of the technology areas listed).

4.         The application must include a glossary that is placed at the beginning of the detailed description portion of the original specification of the application, identified with a heading, and presented on filing of the application. The glossary should include definitions that will assist in clarifying the claimed invention, creating a clear application file wrapper history, and must comply with all of the requirements set forth in Section III.B of the notice[PDF]

5.         The applicant must file the application, the petition to make special, and all follow-on papers using EFS-Web.

6.         The application must contain at least one claim, but no more than four independent claims, and no more than 30 claims total.

For more information about the Glossary Pilot, contact Seema Rao 571-272-0800 or visit the initiative here.

  Print This Post Print This Post  

Congress directed the USPTO to submit a report on virtual marking after enactment of the AIA. The AIA made many changes to United States patent law, including an amendment to 35 U.S.C. § 287(a), the so-called “marking” statute. The purpose of marking an article is to provide constructive notice to the public that the article is patented. Failure to appropriately mark an article can preclude the recovery of damages for infringement until effective notice is given. In the AIA, Congress intended to modernize and update the statute.

Prior to the AIA, the marking statute required patented articles to be physically marked by placing the word “patent” or the abbreviation “pat.,” along with the patent number, on the article itself or its packaging. The amendment to § 287(a) introduced in the AIA provides patentees with the option of using “virtual marking,” i.e., affixing onto the article or its packaging the word “patent” or the abbreviation “pat.” followed by an address of a posting on the Internet that associates the patented article with the number of the patent, as an alternative to physical marking.

This report analyzes the effectiveness of the new virtual marking provisions of 35 U.S.C. 287(a), which allows patent owners to mark their products with an internet address that provides the patent numbers associated with the product.  The report also analyzes the impact of such virtual marking on public access to patent information and any issues (legal or otherwise) which virtual marking creates.

On the basis of the public comments and independent research, the USPTO concluded that virtual marking has likely met its intended objectives of reducing manufacturing costs, facilitating marking of small articles, and improving the general public’s access to patent information. However, the USPTO believes it could be beneficial to revisit the issue at a later date, to account for further user experiences, additional data, and case law developments.

  Print This Post Print This Post  

Did you know that the number of FDA warning letters issued increased substantially by 78% from 2007 to 2013? One of the industries that accounted for the highest number of warning letters was Pharmaceutical/Biotechnology.

Sparta Systems recently released an infographic that provided an analysis of FDA warning letter trends since 2007, and also gave their predictions for 2015. Here’s how these trends might affect the Pharmaceutical/Biotechnology industry.


  Print This Post Print This Post  


Global Patent Strategies Summit
March 11-13, 2015 · San Jose, CA

You may feel a bit like you’re grasping at straws in order to keep up with the ever-changing world of patent law. You’re not alone.

IQPC’s upcoming Global Patent Strategies Summit will be your opportunity to learn from fellow patent experts who recognize the most important issues at play in the industry today. Join us
March 11-13, 2015 in San Jose, CA to participate in the interactive forum.

But first, take a look at the below presentations from speakers at our previous patent events that will give you a glimpse at what’s in store:

Navigating the New Post-Grant Review Landscape

In this presentation, Roland H. Schwillinski, Senior Director of IP and Commercial Litigation at Illumina, and Otis Littlefield, Partner – U.S. Patent Prosecution at Morrison & Forester LLP, explain how to successfully use USPTO patent trial proceedings.

Practical Strategies for Effective & Efficient Discovery 

The Four Steps to Efficient and Effective Discovery are discussed in this presentation by Kim E. Choate, IP Counsel at Dow Corning. The steps include: Establish a Sound Document Management Policy, carefully evaluate and create a case strategy, create a discovery plan and lastly narrow the scope of discovery.

Download Presentation 

 Receive via Email

Download Presentation

 Receive via Email

About Global Patent Strategies Summit

Bring yourselves up to speed on the future of patent law, gain critical updates on recent Supreme Court cases and discover how best to monetize and protect your Intellectual Property by attending IQPC’s Global Patent Strategies Summit.

This time critical event will examine the current challenges within Litigation, Reform, Regulations, Cross Border, Infringement, Injunctions, Risk Assessment, Monetization, Outsourcing, Translation and more.

Download the Agenda • Request Via Email


Register today with promo code GPS_BARISTADE and get 20% off standard rates. To secure your attendance call 1-800-882-8684 or email Please note that this promotion is not available online. For pricing information click here.

P.S – To view who you will meet at the Global Patent Strategies Summit, download the past attendee list here.

  Print This Post Print This Post  

I recently received a note form an in-house counsel asking for feedback on a proposed standard for invention disclosures.  This is an offshoot of LEDES ( by representatives from universities, law firms, companies, and software vendors. The intent is to provide an open standard for transferring invention data, typically from inventors to their patent attorneys.

The LEDES Intellectual Property Matter Management (IPMM) subcommittee has presented to the LOC membership a working draft of an invention disclosure schema standard and now seeks public feedback.  The IPMM subcommittee also prepared an introductory video that presents the purpose and basic structure of the invention disclosure schemas.

The introductory video is available here.

Schemas: (22 downloads)

A survey to collect public feedback is available here and will remain open until November 30, 2014. was established by the LEDES Oversight Committee in 1998 as a global resource for standards created by the LEDES Oversight Committee to be used in the exchange of information between law departments or other legal organizations and the outside counsel and other legal vendors providing services to them.

  Print This Post Print This Post