The SHADOW PATENT OFFICE

Your source for guaranteed validations/valuations of patents
Introducing: the AI-accelerated KX Patent Analyzer, backed by powerful Patent Defense insurance


REVIEW OF PATENT LAW FIRM DISCUSSIONS OF CLIENTS'
PATENT CONSUMER PROTECTIONS AND COSTS



Patents are consumer products, the consumer being (corporate) inventors, a multi-billion dollar a year product manufacturing industry. Over 500,000 patent products (applications) are manufactured (written) each year in the United States -- with no warranties. Patent applicants are due the entire bevy of consumer protection laws and consumer product advisories. And they are expensive products, easily costing over $40,000 to get a patent written and examined. And consumer protection is needed in the patent world, when a major law firm can quote, apparently with approval, a statistic that "... up to 97% of all patents are of low value". Lower than ... the $40,000+ spent to acquire the patent, making the statistic economically equivalent to "... up to 97% of all patents are worthless"? Yes, massive consumer protection is needed.

Why? There are so many ways that the patent system and the patent courts are hostile to inventors seeking protection for the innovations, and destructive of their patents. (see New York Times, 16 April 2022, editorial from the entire Editorial Board: "... The U.S. Patent and Trademark Office is in dire need for reform"). High-priced consumer IP product companies - i.e., patent law firms - IOOOO, should explain more on their Web sites of this hostility/destruction and how they help inventors fight this hostility. And given the high costs, firms should explain fees, pre- and post-issuance, and patent insurance (which helps reduce costs). But sadly, most law firms say ... nothing. NOTHING. The US Patent and Trademark Office does offer some advice (e.g., in MPEP), but the law firms need to do so much, much, more (especially because MPEP is a difficult read for anyone, let alone non-lawyers).



Patent Litigation-Only Firms:

A word of caution. IOOOO, you should avoid patent law firms that do patent prosecution AND patent litigation for non-prosecution defendant-clients, and prefer patent law firms that only do patent prosecution and patent enforcement litigation. The former are law firms that, IOOOO, are in ethical conflict: one group of their lawyers thinks most patents (ideally) are valid - the prosecutors, ... while another group of their lawyers think that most patents (ideally) are invalid - the litigators. Such a firm, a patent law philosophical chimera, will never fight for a higher quality patent system (law firms make their money on patent litigation, as patent prosecution is a loss-leader).

On the other hand, there are some law firms that just focus on patent litigation. IOOOO, probably realizing the futility (and low-profits) of obtaining high-quality patents for their clients that can survive the gauntlet of post-grant attacks. Thus, one patent strategy you can use is to seek patents with a law firm that only does patent prosecution to get your patent (and only does patent enforcement litigation), and another law firm that only does patent litigation to enforce your patent. The chimeras are too ethically conflicted. Here is a brief list of patent litigation-only law firms. Be careful if you hire a large patent litigation law firm. In April 2022, the law firm Dentons was ordered by an appeals court to pay a former client $32 million in a malpractice judgement. In a patent lawsuit, two different offices of Dentons (one in the US, one in Canada) provided legal representation on both sides of the lawsuit. The court awarded the $32 million to the patent owner, RevoLaze, because Dentons didn't obtain sufficient written consent from all parties before the lawsuit.


REVIEWS OF WEB SITES OF PATENT LAW FIRMS


THE FEW LAW FIRMS THAT EXPLAIN SOME OF PATENT LAW

Fish & Richardson (US):

Kudos to Fish & Richardson, one of the few patent law firms that explains on their Web site some of the basics of patent law and its complexities. Their explanations, with a few more sentences (quote some fees?), would be much more powerful patent consumer advice.

But at least they explain some of the basics of patent law to start educating consumers of their services, unlike most of the following firms that explain nothing. Nothing.

Their Web page, Introduction to Patent Claims (August 2020), is a nice brief intro to patent claims (and reading this, you have to wonder, why doesn't every law firm offer something similar?). Nicer is mentioning that patent claims can't be enforced outside the United States (which affects server and design patents), that Beauregard claims are used to protect software inventions - even if not part of the law (which everyone agrees to ignore), and mentioning the importance of reasonably-defining of claim terms (which arises in claim construction in litigation) - that would be nice.

Their web page, An overview of utility patents in the United States, could mention that U.S. utility patents can't be enforced outside the United States (a huge problem in the global cloud computing era). The page could mention that once you get a patent, it can be challenged in multiple forums (USPTO appeals, court cases) by competitors hiring patent litigators. Their Web page: Functional Claims does not discuss the threat to functional claims due to the incoherent "abstract" caselaw of the courts (and functional claims do appear 'abstract' to computer-illiterate judges). And for the record, the USPTO has never published a summary of public comments with regards to potential definitions for the undefined 'functional', despite its RFC over a decade ago.

Their Web page: What is Patentable Subject Matter?, while much discussing 'abstract' (again, if Fish can discuss, so too can many other law firms - geesh!), does not mention that even high-level federal judges (on the CAFC) themselves have admitted that most of the caselaw for 'abstract' is incoherent and contradictory, making it almost impossible for anyone to know how to write claims that aren't 'abstract'. On their collection of Patent Law Essentials web pages, it would be nice to discuss the importance of prior art searching.

IOOOO, more explanation by Fish of the above would be nice. SPO is glad to write material F&R can use.

But at least they explain some of the basics of patent law to start educating consumers of their services, unlike many of the following firms that explain nothing. Nothing.


Patent lawyer Russ Krajec (US), of BlueIron IP, has prepared the following graphic illustrating the cost of acquiring a patent. While some of his estimates are a bit high (a good prior art search can be had for $2000, not $4400; patent drafting for $10,000 not $12,000, etc.), the average cost to acquire a patent can easily be between $30,000 and $60,000, if not more. If your law firm is not upfront about such potential costs, find another patent law firm. Would you buy an automobile (which costs similarly) if you were told the final price AFTER you signed the (engagement) contract?


EVERY consumer product (i.e., patents) patent law firm should have data similar to Russ' on their Web site. Some "dealer posted prices" would be nice. Where the FiretrUCK is the FTC?

LAW FIRMS THAT DON'T DISCUSS THE CONSUMER PROTECTION ASPECTS OF PATENT LAW
Sadly, IOOOO, the general attitude summed up below seems to be: "An uninformed consumer is the best customer to have." Reprehensible for a consumer product (a patent - an article of commerce manufactured by patent lawyers, patents being UCC Sect. 2-105 industrial "goods") that can easily cost $30,000, $40,000, $50,000 and more to buy. Consumer products, which according to a Finnegan Henderson quote of industry analysts, are oh so worthless "... that up to 97% of patents fall into the low value category ...". (IOOOO, do the people at Finnegan understand the statistical law of large numbers, which, given the large numbers of patents that Finnegan prosecutes, this "up to 97%" applies to Finnegan's prosecuted patents?) Does this 97% statistic, if true, be evidence of all patent lawyers collectively trying to prove the 'infinite monkey theorem' for high-quality patents? Would anyone buy (or be allowed to buy) a new car if 97% of them were of "low value" as soon as they drove the car off the dealer's lot?


On their Web pages related to patents, the following patent law firms, with regards to patent owners/applications as consumer/products:



Alston & Bird (US): their Web pages linked to: Patent Prosecution, Counseling & Review -- no such discussions

Amin Turocy Watson (US): their web page: Patent Prosecution -- no such discussions

Amster Rothstein & Ebenstein (US): their web page: Practice Areas: Patent -- no such discussions

Armstrong Teasdale (US): their web page: Services: Patent Prosecution -- no such discussions

Bayramoglu Law Offices (US): their web page: Patent -- no such "important" discussions

Benoit & Cote (US): their web page, Services: Patents -- no such discussions

Berenato & White (US): their web page, Services: Patents -- no such discussions
       They have a fair number of explanatory sub-pages, more than most other patent
       law firms. But tellingly, one FAQ - "Do I need to pay anything after I get
       my patent?", is not proceeded with "How much does it cost to get my patent?"

Berkeley Law & Technology Group (US): their web page: Patent Services -- no such discussions
       One of the few firms to mention Alice, though
       they give no explanation, so why bother?

Billion & Armitage (US): their web page: Services -- no such discussions

Birch, Stewart, Kolasch & Birch (US): their web page: Services: Prosecution -- no such discussions
       They do have a decent, well organized, collection of articles on patent law.

Boyle Fredrickson (US): their web page: Practice Areas - Patents -- no such discussions

Calfee, Halter, Griswold (US): their web page: Capabilities: Practices: Intellectual Property -- no such "comprehensive" discussions

Carr/Ferrell (US): their web page: IP Law Practice: Patents -- no such discussions

Cesari and McKenna (US): their web page: Patents -- no such discussions

Chip Law Group (US): their web page: Practice Areas: Patents -- no such discussions

Clark + Elbing (US):their web page Practice: Patent Prosecution -- no such "exceptional" discussions

Cooley (US): their web page: Patent Counseling and Prosecution -- no such discussions

Cozen O'Connor (US): their web page: Practices: Intellectual Property: Patents -- no such discussions
       They seem to emphasize their litigation prowess more than prosecution.

Darrow Mustafa (US): their web page: Practice Areas: Patents -- no such discussions

Dentons (US): their web page: Practices: IP and Technology: Patents -- no such discussions

Dergosits & Noah (US): their web page: Patent Preparation and Prosecution -- no such discussions

Dinsmore & Shohl (US): their web page: Patent Procurement & Management - no such "aggressive" discussion

Dority & Manning (US): their web page: Prosecution and Counseling -- no such discussions

Faegre Drinker Biddle (US): their web page: Patent -- no such discussions
       IOOOO, they should consider hiring some ex-PTO people to learn more about these issues.

Fenwick & West (US): their web page: Practices: Patent -- no such discussions

Finch Paolino (US): their web pages: Services: Patent Application Preparation and Prosecution, and
     Services: Strategic IP Counseling -- no such discussions

Fisher Broyles (US): their web page: Practice Area: Patent Prosecution -- no such discusions

Foley & Lardner (US): their web page: Intellectual Property -- no such discussions

Garlick & Markison (US): their web page: Practice Areas: Strategic Patent and IP Development -- no such discussions
       While they mention they offer "fixed-fee services", they don't list any fees.

Greenberg Traurig (US): their web page: Patent Prosecution -- no such discussions
       IOOOO, it is probably hard to concentrate on such stuff when you live and work, e.g., in Santa Monica. That is "all I wanna do".

Greenblum & Bernstein (US): their web page: Practices: Patents -- no such discussions

Hayes Soloway (US): their web page: Patents -- no such discussions

Heslin Rothenberg Farley Mesiti (US): their web page: Services: Patents -- no such discussions

Hoffmann & Baron (US): their web page: Practice Areas: Patents -- no such discussions

Hunton Andrews Kurth (US): their web page: Practices: Patent Procurement and Management -- no such discussions
       They mention that they are responsible for the "management of more than
       23,000 patent matters
". They might want to ask Finnegan if what Finnegan quotes:
       "up to 97% of all patents are of low value", applies to Hunton's 23,000.

Husch Blackwell (US): their Web page, Capabilities: Patent Preparation & Prosecution -- no such discussions

Iandiorio Teska & Coleman (US): their Web page: Legal Expertise: Patents -- no such discussions

Jones Day (US): their web page, Intellectual Property -- no such discussions
       If you are a Democratic or Independent or non-religious inventor,
       or are a victim of the far-right-wing Supreme Court's destruction of patent rights,
       you might want to consider giving your business to another patent law firm.

Katten Muchin Rosenman (US): their web page, Patent Litigation and Patents -- no such discussions
       One of the few firms to mention "patent minefields", though
       without explaining any of the "mines". They also rightly mention
       "risks" a few times (of which there are many), without mentioning
       patent insurance to minimize risks. Sigh.

Kowert, Hood, Munyon, Rankin & Goetzel (US): their web page: Practice Areas -- no such discussions

Lempia Summerfield Katz (US): their web page: Services -- no such discussions

Liang & Cheng (US): their Web page: About Us -- no such discussions

Maginot, Moore & Beck (US): their Web page: Our Practice: Patent Prosecution -- no such discussions
       If what Finnegan quotes, "up to 97% of all patents have low value",
       does that make most patent claims Maginot defenses?

Maschoff Brennan (US): their Web page: IP Prosecution: Patents -- no such discussions

McCarter English (US): their Web page: Service: Intellectual Property: Patents -- no such discussions

McClure, Qualey, Rodack (US): their web page: Patent -- no such discussions
       IOOOO, a bit lazy, don't ya think: "For more info on patents", contact the USPTO.

McCoy Russell (US): their Web page: Services -- no such discussions

McDermott Will Emery (US): their Web page: Patent Portfolio -- no such discussions

Merchant & Gould (US): their web pages: Practices: Electrical & Software, Practices: Chemical & Life Sciences, and Practices: Mechanical -- no such discussions

Millen White Zelano Branigan (US): their web page: Patent -- no such discussions
       They have a nice collection of articles commenting on IP law at: News and Events

Morgan Lewis (US): their Web page: Patent (and sub-pages such as Electrical Patents and Software Patents) -- no such discussions

Moore & Van Allen (US): their Web page: Capabilities: Patent -- no such discussions

Morrison & Foerster (US): their Web page: Patent Strategy + Prosecution -- no such discussions

Nath, Goldberg, Meyer (US): their Web page: Our Services: Domestic Prosecution -- no such discussions
       Mention "high quality, cost effective" without defining 'quality' or explaining their 'costs'

Nixon Vanderhye (US): their Web page: What We Do: Patents -- no such discussions

Norton Rose Fulbright (US): their Web pages: Services: Intellectual Property, and Services: Patents -- no such discussions

Oliff PLC (US): their Web page: Our Practice: Patent Prosecution -- no such discussions

Osha Bergman Watanbe Burton (US): their Web page: Practice Areas: Patent Prosecution -- no such discussions

Ostrolenk Faber (US): their Web page: Patent Practice & Services -- no such discussions
       Quote: "All Ostrolenk attorneys invest the time required to do the job right." 'Time' at what hourly billable rate?

Parson Behle (US): their Web page: Patent Prosecution. -- no such discussions
      However, on one of their Webpages written by one of their associates, James Meader,
       they are one of the few firms to mention ANY pricing information. He writes:
       "... the average cost to prepare and file a single patent application
       in the electrical and computer field was nearly $11,000. That can be
       a staggering amount for businesses of any size.
"

Patterson Thuente (US): their Web page: Patents: Insurance for Profits -- no such discussions
       Yes, a quality patent can help ensure that you reap the profits of your innovations.
       And this 'insurance' can be made more powerful with ... real patent insurance!!!.
       One PT lawyer, Brad Pedersen, wrote a rightly critical article in April 2022:
       Set better standards for quality to save the U.S. patent system.
       By 'better' he means 'any'. I quote Brad: "Even after decades of
       criticism surrounding poor-quality patents, the USPTO has yet to
       define what is meant by 'quality' in a way that can be used to
       objectively distinguish bad patents from good patents.
"
       Brad, you will be glad to know that patent insurance provides
       the objective measure of quality you are calling for!
       Every patent law firm should write such an article.
       Biased note: Brad once bought me the best chicken wings I ever had.

Pearne & Gordon (US): their web page: Practice Areas -- no such discussions

Pillsbury Winthrop (US): their web page: Patent Counseling, Prosecution & Litigation -- no such discussions

Price Heneveld (US): their Web page: Practice Areas: Patents -- no such discussions
       A law firm with "Price" in the name, and the only with an online
       payment portal. How about some ... prices?

Procopio Cory (US): their Web page: Practices: Patent Prosecution and Counseling -- no such discussions
One kudo for Procopio is that they recognize the importance of helping their clients make money - the non-parasitical, symbiotic model that few other patent law firms offer. Procopio has their own incubator, Launchpad by Procopio based in San Diego, a nine-month program that offers a fair amount of support. More patent law firms should offer the same (if your law firm has an incubator, please let us know).

Quarles & Brady (US): their Web page: Patent Prosecution -- no such discussions
       Kudos for a bit of poetry: "... help our clients peel back the
       layers of the proverbial onion and reveal protectable concepts
"

RatnerPrestia (US): their Web page: Practice Areas -- no such discussions

Reinhart Boerner (US): their Web page: Practices: Patent Preparation and Prosecution -- no such "meticulous" discussions

Ridout & Maybee (Canada): their Web pages: IP Services: Patent Prosecution and IP Services: Strategic Counseling, Opinions & Portfolio Management -- no such "exceptional" discussions

Rothwell Figg (US): their Web page: What We Do: Patent Prosecution -- no such "immensely important" discussions
       They have helped clients obtain over 10,000 patents. How many
       of these patents fall under Finnegan's quoted statistic?

Schwabe, Williamson & Wyatt (US): their Web page: IP: Services: Patents -- no such discussions

Scully Scott Murphy Presser (US): their Web page: Practice Areas: Patents -- no such discussions
       They have a blog

Seed IP Law Group (US): their Web page: Services: Patent -- no such discussions

Snell & Wilmer (US): their web page: Services: Patents -- no such discussions

SoCal IP Law Group (US): their Web page: Services: Patents -- no such discussions
       They do have the cutest, pointless, home page banner. Needs a PriorArtMan.

Spencer Vane (US): their Web page: Services: Intellectual Property -- no such "communications" or discussions

Staas & Halsey (US): their Web page: Practices: Patents -- no such discussions

Sterne Kessler Goldstein Fox (US): their Web page: Services: Patent Prosecution: Utility Patents -- no such discussions

Taft Stettinus (US): their Web page: Services: Patent Prosecution -- no such discussions

Tautz, Schuhmacher (US): their Home page: Patent Applications & Prosecution -- no such discussions

Thomas Horstemeyer (US): their Web page: Services: Patents -- no such discussions

Thompson Coburn (US): their Web page: Practices: Patent Prosecution -- no such discussions

Troutman Pepper (US): their Web page: Patent Prosecution, Counseling + Portfolio Management -- no such discussions

Van Pelt, Yi & James (US): their Web page: Services -- no such discussions

Verlander LLP: their Web page: Practice Areas -- no such discussions

Vitale, Vickrey, Niro, Solon, Gasey (US): their Web page: (click on "Our Services) -- no such "premiere" discussions

Weaver Austin Villeneuve & Sampson (US): their web pages:
All Services and IP Portfolio Development -- no such "deftly" discussions

Wilson, Sonsini, Goodrich & Rosati (US): their web page: Patents and Innovation -- no such discussions

Wolf Greenfield (US): their Web pages: Patent Services Overview and Patent Publications -- no such discussions
       They have a box, "Q&A Patents: if you are new to patents, download our Q&A on Patents booklet".
       There is no link to the booklet in the box (as of June 2022) on these pages (Brown M&Ms test, folks).

Womble Bond Dickinson (US): their Web pages: Services: Intellectual Property, and Services: Patents -- no such discussions

Woods, Rogers (US): their Web page: Practices & Industries: Intellectual Property -- no such discussions

Workman Nydegger (US): their Web page: Services: Patents -- no such discussions

Xsensus (US): their Web page: Practice Areas: Patent Procurement & Prosecution -- no such discussions with "nuance"
       IOOOO, U.S. Patent 11361190, is easily worked-around, starting with, "... output ..." from/to where?

Young Basile (US): their Web page: Practice Area: Patent -- no such discussions



US Patent and Trademark Office:

The issue of transnational patent enforcement (when an invention can be easily moved offshore), IOOOO, is as deadly a problem as the death-gauntlet of 101 caselaw that declares every invention to be 'abstract' and thus invalid, or of 103 caselaw that declares every invention to be 'obvious' and thus invalid.

On their Web page,
General information concerning patents, 4th paragraph, at least the USPTO explains in brief what law firms below should be explaining in detail: "... U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions...". This constraint seriously greatly devalues computing server and method claims, which appear in most software patents. This issue also greatly devalues patents for expensive products. Given the utter failure of law firms to explain this on their Web sites, the USPTO might want to discuss this on their Web pages to help protect inventors. The USPTO should point to the ClearCorrect case in the above-mentioned 4th paragraph of MPEP.

Patent law firms should also emphasize more strongly the importance of prior art searching (or at least point to the following USPTO web page), as does the USPTO at their web page, Seven Step Strategy for Patent Searching. I will only criticize the USPTO here for not including an 8th step which is not done by the majority of patent applicants (rendering their patents much worthless): SEARCH THE NON-PATENT PRIOR ART!. And both patent law firms and the Patent Office should discuss patent insurance, which has a great impact on the value of issued patents (IOOOO, a 'duly' issued patent without having a duly issued patent enforcement insurance policy is worthless).



LAW FIRMS THAT DON'T DISCUSS THE CONSUMER PROTECTION ASPECTS OF PATENT LAW, WHILE STAYING STUFF THAT THE SPO, IOOOO, WOULDN'T SAY

On their Web pages related to patents, the following patent law firms ALSO, with regards to patent owners/applications as consumer/products:

They do make some comments on the patent system, but IOOOO, they might want to consider eliminating the trite and trivial comments.
NOTE: the following commentary is based on their Web sites as of July 2022



Artegis Law Group (US): their Web page: The Artegis Law Group -- no such discussions

They state: "Our technical expertise enables us to quickly identify the 'game-changer' assets in any IP portfolio." (though, without a thorough prior art search, IOOOO, you can not identify anything quickly), which IOOOO is cute marketing lingo, because even a strongly valid patent on a 'game-changing' invention can be a worthless asset if you know little about patent defense insurance usable by your competitors, and the problems of the gauntlet of hostile patent courts, and/or the difficulties of transnational border patent enforcement. "robust portfolio", "robust opinions", "drafting quality patents", "unmatched value", "deep understanding" - which without definitions of 'robust', 'quality', 'unmatched' (really, no other law firm is equal to Artegis?), and 'deep', IOOOO, is marketing fluff. Indeed, all firms offer robusta opinions, and when such opinions end up with acidic 101 and 103 rejections, the clients do feel bitter (yes, a bad coffee chemistry joke :-).



Baker Botts (US): their Web page, Patent Prosecution -- no such discussions

They state: "We emphasize claim construction with the goal of providing the broadest protection possible under federal law." (Well, what law firm doesn't have this goal?). But what patent owners also really need, IOOOO, is the broadest protection possible in light of the prior art, which is not discussed in an era where still, most patents cite inadequate amounts of prior art. Broad claim boundaries stop at the prior art. And one part of "federal law" that we all must "emphasize" is Constitutional law, especially being able to do claim drafting with Due Process Public Notice of what Congress meant in 1952 for 'process/abstract', 'obvious', 'skilled', and 'enabled'. Especially 'abstract'. If your claims are really broad, it could make it easier for a judge to hand-wave and declare 'abstract' and thus invalid.


Banner Witcoff (US): their Web page, Patent Prosecution -- no such discussions

"... one of the world's leading law firms" measured by who/how/when? One of the firm's lawyers, Bradley Wright, is/was Editor-in-Chief (up to the third edition) of a book, "Drafting Patents For Litigation and Licensing", from which the Shadow Patent Office takes many judicial rulings for killing patents using caselaw, and embeds the rules into expert system rules for our Analyzer. IOOOO, Banner Witcoff might mention some of this stuff for free on their web site. A brochure for the book on their Web site at: https://bannerwitcoff.com/_docs/news_events_archive/news/BNA_2692-DPLL.pdf.
There is an excellently-deadly table at one point in the book, with about 100 ways your patent can be killed in the courts. As it is pretty much impossible to avoid all 100 flaws, you have to wonder, IOOOO, a) does Banner explain/give this list to its clients?, and b) is it ethical for a law firm to offer patent prosecution services to its clients if it implicitly has such a dismal belief in their probability of survival of patents in litigation? You cannot write such a book without calculating that the probability that your clients' patents will survive all of the caselaw reviewed in the book. Is the deadly caselaw in this book one reason that Finnegan can quote (with approval?) the statistic that "up to 97%" of all patents are of low value? Does Banner explain this to their clients with their "unique training"?


Berenato & White (US): their Web page: Services: Patents -- no such discussions

Berenato's Web site is a good example, IOOOO, just how apathetic patent law firms are to providing consumer information to their patent clients. For example, in the FAQ section, they ask answer: "Do I need to pay anything after I get my patent?", to which they answer: "Yes, the United States requires the payment of maintenance fees every four years after the patent is granted.". OK, butt how freakin much, in thousands of dollars? Can't afford the pixels on the HTML page? And why not provide a link to the USPTO Web page on patent fees? And why not ask/answer the question: "How much do I need to pay B&W before I get my patent?". Who cars how much it costs to maintain an issued patent if they run out of money during prosecution filing RCEs?

IOOOO, B&W is a bit entertaining. "Do I need an attorney? While an attorney is not needed, a skilled patent attorney provides insight, experience and guidance that most inventors lack." Since there are few federal judges, let alone patent lawyers, who skillfully understand 35 USC 101, 103 and 112, IOOOO, too many patent lawyers lack 'insight, experience and guidance'. Does B&W guarantee that patents they file won't be rejected under 101 and 103 at the First Office Action? And, IOOOO, the following fails clients. "What can be patented? Any new, unobvious, and useful invention or ornamental design", which a) isn't complete - patents have to be enabled in the written description (most software patents aren't); and b) isn't true with its use of 'any', which should use instead what the current law is: 'any which aren't abstract'.


Buchanan Ingersoll & Rooney (US): their Web page: Patent Procurement -- no such discussions

IOOOO, one serious claim of theirs needs to be substantiated in detail, or removed from their Web site: "We keep abreast of the state of the law and its trends in various countries to know and effectively predict how patent applications will be treated years after they have been filed.". IOOOO, it is impossible to predict random judicial semantics based on unConstitutionally vague statutes (such as 'obvious') that will exist in the next 20 years of a patent application's / patent's life.

For example, did Buchanan Ingersoll "effectively predict" in November 2015, when they filed U.S. Patent 11,202,690: Method of digitally designing a modified dental setup, that in 2016, the CAFC would issue a decision (ClearCorrect v. Align Technologies) that destroyed the value of many such server-design patents, especially those for dental implants such seen in the '690 and Align Technologies patents? You can't predict how 'priests' will throw darts at a legal dictionary in the future.


Cantor Colburn (US): their Web pages, Services: Patents, and Utility, Design and Plant Patent Filing with the USPTO -- no such discussions

On their page: Strategic IP Portfolio Development, they state: "Our lawyers provide profoundly relevant guidance that helps clients leverage their IP assets for optimal advantage", which to be "profound" IOOOO should include a mention of patent insurance (CPI insurance provides great leverage), and the many litigation minefields that lead quickly to sub-optimal advantage. They do mention one good piece of advice. One document, Seven Deadly Sins of IP, does mention: "Sin: 4. Forgetting a Prior Art Search", though since their clients submit the same, low, amounts of prior art for software patents as everyone else, IOOOO, you have to wonder who is reading this document.


Carter DeLuca (US): their Web page: Practice Areas: Preparation and Prosecution -- no such discussions

"Quality patent protection ...", "Quality is reflected ...", "Carter DeLuca delivers quality patents ..." ... which, without a definition of 'quality', IOOOO, is meaningless. They make a comment that only makes sense to another patent lawyer: "[to get patents that] are unhampered by superfluous comments in the prosecution file history". This is important, so explain why (such as the implications of Festo), and the types of comments that are 'superfluous'.


Conley Rose (US): their Web page: Service: Patent Prosecution -- no such discussions

"Conley Rose delivers patents with quality ... We also consistently deliver a high-quality product for every project. For example, we employ several levels of review to ensure that all of our patent work meets both our own internal standards as well as our clients' drafting requirements and particular business objectives." They do not define what they mean by patent "quality/high-quality", nor mention enforceability (though no one else does). Does Conley Rose offer refunds for drafting 'high-quality' patent claims that are rejected under 101 by the USPTO? (yes, we all know, no law firm can/does offer such a refund). How can you use a "probability of success" in a patent claim, without defining a probability distribution function in the Specification ( U.S. Patent 11,348,062)?


Christensen O'Connor Johnson Kindness (US): their Web page: Practice Areas: Patents -- no such discussions

"... uniquely qualified ..." - no patent law firm is uniquely qualified, IOOOO, e.g., unless they offer refunds for 101 and 103 rejections. They write: "The firm prides itself on writing strong, defensible patents through a deep understanding ... of the law.", without explaining how, e.g., strong, defensible, server method patents can be defensible across international borders, such as their prosecuted server method patent: U.S. Patent 11,188,604, which can easily, non-infringingly, IOOOO, be hosted on a server outside the U.S., which fails to satisfy the instructions of USPTO Director Kappos' Beauregard claim memo, is also a two-party client/server claim (who do you sue?), and, the claim term 'index' - how is it enabled?


Crowell Moring (US): their Web page: IP Strategy, Prosecution & Portfolio Management: Patent Prosecution -- no such discussions

One of the few law firms to publicly confess, what in IOOOO, no one should brag about: "We not only see the future of patent law, we help create it." IOOOO, let us hope that they are not referring to the creation of the 101, 103 and 112 aspects of patent law - NO ONE wants to take credit for creating these incoherent, contradictory, unconstitutional bodies of (case) law. They also give emphasis to post-issuance tactics: "We recognize that there is little benefit to obtaining patent protection that is subsequently narrowed at the USPTO or in litigation." IOOOO, time to add a clause at the end, "... or nullified by patent defense insurance".


Dechert (US): their Web page: Patent Counseling and Prosecution -- no such discussions

They do claim: "Recognizing the dual imperative of maximizing patent portfolio value and aggressively protecting patents worldwide, we strive to enhance our clients' value and afford them the broadest protection." IOOOO, let us assume that this includes an 'aggressive' discussion with their clients about patent insurance that can minimize or maximize the value of a patent portfolio, and an 'aggressive' discussion with their clients of all of the caselaw that destroys value.


Duane Morris (US): their Web page: Patents -- no such discussions

They do claim: "Duane Morris IP attorneys endeavor to understand our clients' goals and focus on securing strong and enforceable patent protection.". IOOOO, let us assume that this includes an extensive discussion with their clients about patent insurance that can minimize or maximize the value of a patent portfolio, and an extensive discussion with their clients of all of the caselaw that destroys value.


Edell Shapiro & Finnan (US): their Web page: Patent Prosecution -- no such discussions

Interestingly, they have a brief blurb about their National Prosecution and International Prosecution - a perfect place, IOOOO, in the future to discuss the enforcement of national patents across international borders. Some law firm has to publicly discuss this deadly attack on national patents.


Finnegan (Henderson) (US): their Web page: Patent Office Examinations -- no such discussions

They state: "The strongest and best patents are less likely to be litigated.". "Less", compared to what? And, since only about 2% of patents are litigated, the weakest and lowest quality patents also are less likely to be litigated (unless they are being trolled). Finnegan is one of the few firms to even hint at fees, stating: "Our patent prosecution practice ... with relatively low billing rates ...". As Finnegan well knows in claim drafting, without a definition of 'relatively' in the Specification, you don't use the term 'relatively' in the claims to avoid charges of non-enablement and vagueness. IOOOO, same with marketing -- $495/hour is 'relatively' lower than $500/hour. "highest quality work" - definition of 'quality'?

But IOOOO, Finnegan has a potential ethics problem with its messaging. What it does not mention on the Patent Office Examination web page is what one of its lawyers quotes in a November 2021 article: Unicorn Patents on their Web site, (an archived version at: "Unicorn Patents"): "... and industry analysts who report that up to 97% of patents fall into the low value category" (Note: 'up to' is a qualifier used in (patent) law to render what follows to be meaningless. You can say something scary without being held accountable.). Given the large number of patents that Finnegan helps their clients obtain, statistically (law of large numbers), it is statistically arguable that up to 97% of the patents that Finnegan obtains for its clients are low value. Two questions for Finnegan (and all other law firms). 1) Is the average of this 'low value' for their prosecuted patents less than the average amount Finnegan's clients spend with Finnegan to get patents? 2) Does Finnegan believe the industry analysts (and thus should explain on their Web site why this isn't true for up to 97% of the Finnegan-prosecuted patents), or does Finnegan believe the industry analysts are wrong (and if so, provide data to the contrary)? IOOOO, you cannot quote such a damning statistic and say nothing. Would you buy a Tesla if they stated "Up to 97% of our customers burn to death in their cars"?

For example, is Finnegan-prosecuted U.S. Patent 11,204,299, Method and system for predicting water leakage events in district-metered-area of water distribution network, one of the 97% of "low value" patents? The patent is method for making predictions about water leaking from city piping systems. "Low value"? First, the method can be easily performed on a server outside the United States, with the results sent back without fear of infringement (thanks to the CAFC). Indeed, in the patent's Detailed Description, it pretty much teaches a workaround - "IN AN EMBODIMENT, THE PREDICTION SYSTEM MAY BE A REMOTELY LOCATED SERVER." Remotely, SUCH AS OUTSIDE THE FREAKIN UNITED STATES where there is no infringement for executing the method, and sending back to the US just the printed-matter "predictions". This much renders the patent to be of low value (the Shadow Patent Office will sell a Patent Defense policy against this patent just because of this). Second, impossible IOOOO, the patent cites no non-patent prior art. Seriously? For a municipal network problem? Third, the claim requires a prediction system, which the Specification enables as a machine learning model such as Long Short Term Model. Well, there are many, prediction systems, many of which are based on machine learning. Without more discussion than this short phrase, there is a chance that a court will view the claims term as a 'means' clause and limit the techniques just to LSTM (which one?), making it easy to work-around with another prediction system, such as k-nearest neighbors. Wipro, the patent owner, your patent, IOOOO, is one of those 97%ers of "low value".

Finnegan makes available papers on patenting your invention - nice! How about an article on patent insurance?


Fitch Even (US): their Web page: Patent Preparation and Prosecution -- no such discussions

One claim of theirs: "On behalf of every client, we strive to secure patents that are respected by competitors, difficult to design around, and enforceable in court." -- IOOOO, what patent law firm doesn't so strive, and if you are going to talk about "enforceable in court", which court are you referring to, for workarounds performed outside the United States? For example, Fitch-prosecuted U.S. Patent 11,188,956 System and method for performing operations in response to preauthorization and geographic location data, is a huge claim for a system that is little more than a "user database" and a "remote server", for which the remote server does a lot of processing. Does patent owner, Walmart, know (or were they told) that the patent is easy to design around by placing the remote server outside the United States, say in a separate business unit called Tramlaw Processing?

To their credit, on the right hand side of this Web page, they have links to many news articles related to patent prosecution (which is something few patent law firms offer). Indeed, some of the articles they link to (as of December 2021) should be talked about by all patent law firms to their clients: full scope of claims should be enabled, and means-plus-function claims require sufficient disclosure of structure.


Fletcher Yoder (US): their Web page About Us -- no such discussions

One claim of theirs: "Fletcher Yoder is dedicated to providing top quality legal services to our clients at reasonable rates, ...", which without a definition of 'quality' and 'reasonable rates', is, IOOOO, says nothing that isn't true of all patent law firms. They offer services for "design-around consultation", and the SPO states the same warning as for other firms: IOOOO, you shouldn't offer design-around services unless you inform your prosecution clients of design-arounds to their patents. Some kudos for Fletcher Yoder: they include photos of the 'little' people at patent law firms: the draftsman, the receptionist, the docketing people, and others. Nice! They are also one of the few firms to have a Diversity page. Also, nice! Still, we wouldn't mind seeing a list of their 'reasonable rates'.


Ganter Law Firm (US): their Web page: Areas of Practice: Patents -- no such discussions

While they don't say much about the dangers of the patent system, they do at least explain to potential clients what a US patent is. They briefly discuss the difference between utility, design and plant patents; and they brief discuss the difference between provisional and non-provisional patent applications. The SPO suggests a few additions. First, they state about provisionals "... one year in which to refine the invention and test their invention in the marketplace". I would add "and safely speak to potential investors". They should also mention that provisional patent applications are not published (unless converted into non-provisionals). And if you are going to discuss provisionals, why not mention PCT filings, which in a sense are 30/32-month global provisionals (though published at 18 months)? And if you are going to define "Utility Patent", include (because you have space on the Web page): "... improvement thereof, which are also not abstract nor laws of nature" -- state the judicially-legislated modified version of 101. Anyway, at least Ganter is doing some education.


Haley Guiliano (US): their Web pages: Practice Areas: Patent Preparation and Prosecution, and Pratice Areas: European Patent Prosecution -- no such discussions

They state: "We anticipate patents to be scrutinized as part of future enforcement actions, licensing negotiations, and other transactions.". As opposed to patent law firms which don't so anticipate? IOOOO, this is good advice for: U.S. Patent 11,195,150, which IOOOO probably won't survive the expected thorough prior art search for licensing negotiations, future enforcement actions and/or other transactions ... for a 3-party project management server easy to work-around, especially if the infringer has Patent Defense insurance (patent insurance implications should be part of the scrutiny of any patent).


Harrity & Harrity (US): their web page: Services: Patent Preparation & Prosecution, and Services: Patent Analytics -- no such discussions

Without a definition of 'quality', their start, IOOOO, is meaningless. "At Harrity, we have patented quality. Our firm specializes in drafting high quality patent applications ... we ensure high quality patent applications." High enough quality that Harrity offers refunds for what they claim to 'ensure' against: 101 and 112 rejections (matters of law - their fault)? High enough quality that they are fully enforceable? High enough quality that a sufficient amount of prior art was cited? IOOOO, U.S. Patent 11,361,243, cites an inadequate amount of prior art (one patent application, two journal articles, for an AI invention) and is easily worked-around offshore.

They offer "cutting-edge analytics" to their clients, based on "oceans of patent data". Such analytics (based on their Web page) does not include strength in light of all relevant prior art, nor does it include any analytics of the impact of patent insurance on their clients' patents. They offer the usual low-value metrics, such as number of patents acquired each year by large companies, without the insightful analytics of, for those such companies that are publicly traded, what is their normalized annual gain of their stock divided by the number of patents acquired?
They are one of the few firms that does not publish its lawyers' email addresses on the Web site.


Harness Dickey (US) their Web page: Patents -- no such discussions

They mention a "total quality approach" (expand the Patent Prosecution section), which without a definition of 'quality', IOOOO, has no meaning (and if they don't factor patent defense insurance into their 'approach', it is far less than 'total'). When they say, "Our total quality approach to patent prosecution means that we do the patent right, the first time around.", if you are considering their services, ask them if the first time around (First Office Action) your patent will be so 'right' that it doesn't get a 101 rejection, and ask if they will guarantee such an outcome with a refund if there is a First Office Action 101 rejection. They do have an informative blog that discuss some of the many problems plaguing inventors.


Haynes and Boone (US): their Web pages, Practices and Industries: Patents, and Patent Prosecution and Counseling -- no such discussions

On their Web page, AI and Deep Learning, they have a lengthy (for law firm web sites) discussion of the patenting aspects of AI patents. But they don't discuss how many of these patents can be worked-around by being performed offshore, and they don't discuss the obviousness implications of AI design tools being used by PHOSITAs.

Similar to a few other law firms, they explicitly state that they offer the service of the "design and implementation of non-infringing alternatives to patented technology", and the SPO states the same warning as for other firms: IOOOO you shouldn't offer work-around services unless you inform your prosecution clients of work-arounds to their patents.


Hodgson Russ (US): their Web page: Patent Prosecution -- no such discussions

They do mention that they "... regularly assist clients with ... advice on recent case law as applied to patent strategy", a very good thing that all patent law firms should be doing. Be interesting to know which case law they discuss. Adding "Advice of use of patent insurance" would be a nice addition to their regular assistance to clients. They have a 2016 article on how McRo v. Bandai Namco is supposed to be an improvement on the unconstitutional, undefined 'abstract' vagueness of Alice Corp. v. CLS Bank, without discussing the fact that McRo uses the undefined 'abstract' as well. And worse, McRo uses the utterly vague "merely", a semantic cancer in Cuno that Congress killed in 1952, a killing which the Supreme Court killed with KSR (never forget, no one out-legislates the Supreme Court).


Jackson Walker (US): their Web page, Patent Areas: Patent Prosecution -- no such discussions

They offer the service of "Rendering legal opinions on the strengths and weaknesses of patents". IOOOO, U.S. Patent 11,163,467 has the weaknesses of citing a grossly inadequate amount of patent prior art, citing absolutely no non-patent prior art, can be worked-around by being implemented on a server outside the United States (the patent is basically a server that decides to send a file either wirelessly or wired), has one claim term -- "threshold" -- IOOOO, that is inadequately specified ... a patent owned by a company with tons of money to seek quality patents.


Knobbe Martens (US): their Web page: Patent Prosecution -- no such discussions

Interestingly, they do suggest that the patent system is hostile to many inventors: "Realizing the deadly dynamic nature of patent law, we have created a number of cross-functional teams where patent prosecution and litigation attorneys work closely with each other, .... These hybrid teams are able to create stronger patents in the patent office that lead to better litigation results ... .". That is, and rightly so, case law due to patent litigation is so hostile (starting with 101) to patent applicants/owners that patent prosecutors need the advice of patent litigators to avoid the judicial minefields. IOOOO, it would be nice if they explained some of these issues on this Web page, as well as the use of patent insurance as a tool in litigation, and the refunds they offer if your 'stronger' patent application gets 101 or 112 rejections.


Kramer Levin (US): their Web page: IP Prosecution and Registration -- no such discussions

They do state: "Further, we offer clients opinions on everything from patentability and invalidity to the effective use of litigation.", which, IOOOO, should include a discussion of Patent Enforcement Insurance for litigation, as well as a discussion of much of the caselaw that can destroy patents litigated by their clients.


Ladas & Parry (US): their Web page: Expertise: Patents & Utility Models -- no such discussions

They state "We regularly coordinate and handle patent matters in every part of the world. ... Our global expertise has equipped us to explain to clients and take advantage of the differences between the patent practice in an applicant's country of origin and the country where an applicant is seeking foreign patent protection or enforcement ...", which is nice, but IOOOO does this expertise create software server/method patents that can avoid infringement by being executed outside the country that the patents issued in?


Leason Ellis (US): their Web page: Patent -- no such discussions

In its list of services provided -- Counseling, Due Diligence, Filing and Prosecution, License Agreements, Market Clearance / Freedom to Operate, Patent Watch Services, Reexamination, Reissue and Searching -- while briefly illustrating the complexities of patenting an invention, doesn't mention costs, patent insurance, hostility of the law, etc. One 'special' comment of theirs is odd: "Leason Ellis can track competitors' patent filings (sneaky, but permissible) ...", which is not special nor nifty (clients can do it themselves with Public Pair), is not sneaky (it is encouraged, not 'permitted', by the Constitution's Progress clause), while not mentioning what scares way too many companies from doing their own tracking: the threat of triple damages for infringing tracked competitors' patents. An odd comment. Now, a good Netflix series would be about Dewey, Cheatem and Howe bragging "We track competitors' patent filings by bugging their lawyers' offices".


Lerner Greenberg Stemer (US): their Web page: Practice Areas: Patents -- no such discussions

They mis-state the law in the "Publication" section. They don't mention that you can keep your patent application secret if you don't foreign file. They have a nice discussion of the defensive nature of patents (something most law firms don't mention). They mention a 'detailed memo on Bilski' but I couldn't find a link and a memo on Bilski/Alice/Mayo would be more helpful. They don't mention that one use of Provisionals is to be able to talk to potential investors. While they mention rightly that "no new matter" can be added to a patent application (I will ignore, what in IOOOO is unconstitutional, since Markman claim construction adds new matter), but one can add new matter in the form of a Continuation-in-Part. IOOOO, at least they try to explain.


Leydig Voit (US): their Web page: Patent Preparation and Prosecution -- no such discussions

They state that they "draft, prepare and prosecute patent application that can withstand the deepest scrutiny and defeat aggressive challenges to patentability", which IOOOO is irrelevant if the patent is not enforceable - an invention can be completely patentable, and completely unenforceable making patentability irrelevant. For example, a Nvidia patent prosecuted by Leydig: U.S. Patent 11,182,649, claims generating synthetic images to train a neural network, and then training a neural network. The invention may be patentable, but IOOOO it is easily defeatible by training the neural network outside the United States using the techniques in the U.S. patent, and sending the trained neural network (typically data representing weight coefficients) back to the US. Further, the next-to-last paragraph of the Detailed Description enables the claim terms "neural network" and "training" by teaching a forward/back-propagation technique using floating-point numbers, which ignores many other training techniques and the use of integer numbers -- all of which IOOOO are potential non-infringing alternatives.


Locke Lord (US): their Web page: Services: Patent Strategies -- no such discussions

One of their patent services is: "Design around strategies", which IOOOO has ethical problems. One design-around strategy for some of their clients is to move software/server/cloud systems offshore, where they can't be used for infringement with a US patent and can't block results sent back to the US. Excellent advice, IOOOO, if Locke Lord offers it. For example, it would be solid advice to tell their clients that they can work-around U.S. Patent 11,176,419, "Method for labeling image", by performing the image labeling offshore. It wouldn't make their client, and patent owner, Inventec Corporation, very happy, but IOOOO, it is solid advice. A word of advice for all patent law firms - IOOOO, you shouldn't offer workaround advice to clients. If you do it thoroughly enough, you may jeopardize your other clients whose patents the same advice attacks and devalues.


Maier & Maier (US): their Web page: Practice Areas: Patent Services -- no such discussions

On their Web page: Practice Areas: IP Monetization, they make no mention of Patent Collateralization Insurance, IOOOO, a very effective way to monetize your IP. On their Web page: Practice Areas: Litigation Services, they make no mention of Patent Defense and Enforcement Insurance, which reduces the costs of patent litigation (but to be fair, no patent law firm mentions client-cost-saving patent insurance on their Web pages - even law firms that do patent litigation work for patent insurance companies). IOOOO, you might want to find a law firm that respects its clients enough to learn about patent insurance.


Marshall Gerstein & Borun (US): their Web page: Patent Prosecution -- no such discussions

They claim that: "We also routinely consult with IP software solution developers to propose improvements, many of which have been implemented into product updates." Presumably some improvements implemented include checks for software patents citing very low amounts of prior art (especially no non-patent prior art), and checks for server claims that can be worked-around by being implemented outside the United States, etc., e.g., U.S. Patent 11,188,603, a patent which also doesn't discuss claim term "predetermined temporal" in the Detailed Description. While offering "Full-spectrum patent prosecution counsel", one counsel not listed is counsel with regards to patent insurance.


Maynard Cooper Gale (US): their Web page: Services: Intellectual Property Protection -- no such discussions

They describe one service they provide: "Our attorneys also assist clients in avoiding infringement risk by identifying non-infringing alternatives to existing patents held by others ... " - raising the question to if they discuss non-infringing alternatives to their clients' patents, say, by running a server application or process outside the U.S. For example, one Maynard Cooper prosecuted patent, U.S. Patent 11,125,915, Weather forecasting systems and methods tracking cumulus clouds over terrain, claims using a server to forecast the weather. The output is a report and/or weather map. IOOOO, any competitor can perform the invention on a server outside the U.S., and send the report/map back to the US without infringing the method claims (and the server claims can't be asserted against a server outside the U.S.). And how do you have enabled weather forecasting patents without a single mathematical equation in the Detailed Description? And why only discuss/claim cumulus clouds causing rain, when stratus clouds (not mentioned) do so as well? And does the Univ. of Alabama need four such patents? An $8000 Patent Defense Insurance policy is available to protect anyone from all four patents. IOOOO, the University of Alabama is probably in the red on the expenses for these patents, a crimson tide of economic loss for the state's taxpayers.


McDonnell Boehnen Hulbert & Berghoff (US): their Web pages: Services: Patent and Services: Prosecution -- no such discussions

A few of their lawyers maintain one of the better patent law blogs, www.patentdocs.org/. I am still waiting after many years for a PD blog about the Due Process Public Notice failings of the use of 'abstract' to kill patents and how MBHB files Constitutionality challenges to 101/103 rejections, and a blog about the unConstitutional use of claim construction at trial (which means the claims failed Due Process Public Notice at issuance, but then, since the courts censor this concern, can't blame PD).


Michael Best & Friedrich (US): their Web page: Practices: Patent -- no such discussions

MBF is one of the few firms to state the importance of prior art: "We work closely with stakeholders to provide the prior art analysis needed to make informed business decisions on whether to pursue patent protection ...", which IOOOO contradicts the statistics of prior art citations of patents prosecuted by all law firms.


Middleton Reutlinger (US): their Web page: Practices: Patent -- no such discussions

One thing they mention, which IOOOO is trite, is that "Our attorneys have bachelor's and advanced degrees in such scientific disciplines as: ...", which is a USPTO requirement for all patent attorneys. Similar to Locke Lord above, Middleton mentions that they offer "Design-around advice", and the same advice is offered to Middleton: don't offer workaround advice to clients. If you do it thoroughly enough, IOOOO, you jeopardize your other clients whose patents the same advice attacks. For example, Middleton prosecuted Google patent U.S. Patent 11,190,289: "Radio station recommendations", which IOOOO, teaches competitors how to work-around the patent by its use of "remote client device" accessing a "centralized database". For a server in Mexico acting as a centralized database, all US client devices are "remote" - legitimate design-around logic.


Mintz Levin Cohn Ferris Glovsky Popeo (US): their web page: Patent Prosecution and Strategic Counseling -- no such discussions

They claim to: "Craft claims with an emphasis on maximum protection", without defining what they mean by "maximum protection". Are the server claims they craft enforceable across national borders? Do their method claims have maximum protection against 101 rejections by the Federal courts? (Though to be fair, can any law firm offer these two maximal protections?).

They provide papers on some of these 'minefields' at their Insight Center, but their clients should not be forced to sift through lots of papers and menus to get at these vital papers (but kudos to Mintz for providing at least these papers, which very other law firms provide). Some of the papers are (but like Finnegan doesn't have a paper on patent insurance):


Muncy, Geissler, Olds & Lower (US): their Home page: Home Page -- no such discussions

They do have pretty pictures of pretty buildings in Washington (but not of the USPTO). What isn't pretty, IOOOO, is U.S. Patent 11,195,044, which IOOOO has an extremely narrow, sole, claim 1; cites an inadequate amount of patent and non-patent prior art; and has multiple spelling errors in claim 1: "featurevalue", "synthe sis", and "ofthe" -- not fatal, but shouldn't be there at all.


Oppedahl Patent Law Firm (US): their Web page: Our Services -- no such discussions

They are one of the few firms that does not publish its lawyers' email addresses on the Web site. They do discuss a problem that is rarely discussed publicly -- other patent law firms that are incompetent: "On several occasions in recent years, a company with a sizeable and troubled intellectual property portfolio has come to OPLF, asking OPLF to "clean up" the portfolio. This is particularly challenging work, often requiring a detailed review of the entire portfolio in a very short time, to identify docket dates and action items. The broader goal in some cases has been the identification of more important and less important portions of the portfolio, requiring a substantive review by experienced attorneys of OPLF. A related goal is identifying cases where claims were poorly drafted, and doing new claim drafting where possible to overcome previous deficiencies. Such cleanup depends not only upon the judgment of attorneys, but also upon the skills of experienced administrative staff." For example, if the Oppedahl law firm reviewed U.S. Patent 11,200,797, Traffic flow simulation, I wonder if they reported that the patent, IOOOO, cites a grossly inadequate amont of prior art (6 patents, ZERO non-patent prior art), and is a simulation method that can be run on an offshore server with the results sent back to the U.S. without infringement or damages -- and asked if the patent owner's lawyers informed them of this before they filed? A patent that the SPO can easily offer low-cost insurance to defend against its assertion.


Perkins Coie (US): their Web pages: Intellectual Property Law, Patent Prosecution & Portfolio Counseling, and
Patent Analytics, Strategy & Solutions -- no such discussions

Across these pages (and others on their Web site), Perkins Coie has the most extensive discussion of its patent law services and expertises. But little discussion of the above consumer issues, issues such as: costs, judicial hostility to patents, difficulties enforcing IT patents in a globally-connected world, etc. They mention offering "... counseling relating to design-arounds ...", and the SPO states the same warning as for other firms: IOOOO, you shouldn't offer design-around services unless you inform your prosecution clients of design-arounds to their patents.

Interestingly, their web pages discuss 3 major software tools: the Portfolio Dashboard (portfolio size/status), the Patent Prosecution Platform (billing and docketing), and the Patent Analysis & Review Tool (portfolio management and monetization). Most of their patent quality analytics seems to be comparative (to a client's competitors, etc.). I hope their PART system doesn't get upset when the SPO starts analyzing their clients' patents. For example, their U.S. Patent 11,347,819, basically claims generating weather reports on "a remote server". Did they explain to their client (Accuweather) and enter into the analytics databases, that, IOOOO, the patent is easy to "design-around" by using a remote server outside the United States? And while remote and server appear in the Detailed Description, remote server doesn't. And their U.S. Patent 11,297,461, a vehicle geofencing patent filed in May 2020 ... citing NO NO NO non-patent prior art. Seriously?

Their Patent Analytics, Strategy & Solutions web page has a nice discussion of "Value Creation and Monetization Models", "Patent Acquisition and Sales", and "Valuation Services", which make no mention of patent insurance. For example, they mention patent valuation using: "Discounted Cash Flow Methodology", "Comparative Revenue Modeling", and "Cost of Reasonable Alternative Methodology", but not "Competitor's Cost of Patent Defense Insurance". For many software patents prosecuted by all law firms, the SPO will be offering individual Patent Defense Policies against these software patents (especially those citing no non-patent prior art, those worked-around on foreign servers, etc.) for much less of a cost than the money spent to acquire the patent, i.e., the patent is effectively worthless. If you are not factoring the availability of contract-law-governed patent defense insurance calculations non-binding valuations (and almost no one does), IOOOO, your non-binding valuations are not accurate and usually lead to overvalued valuations.


Posz Law (US): their Web page: Specification Drafting - Best Practices (July 2020) -- no such discussions

Interestingly, this page is a lengthy discussion of patent drafting. But they really don't discuss the consumer issues listed above. For example, they have three paragraphs on "Write with future enforcement in mind", which mostly focuses on claim scope, and not enforcement issues such as those in ClearCorrect. Under "Fully Support the Claims", they write "Every abbreviation used in the claims or specification should be defined the first time it is used." "ECU" in their U.S. Patent 11,388,133, used in the Spec but defined nowhere. The '133 patent, for a network switch, describes the use of a CPU running processes. But neither 'CPU' nor 'process' is used in the claims to link the claims to the Specification.

They have three paragraphs on "Write with future prosecution in mind", with much discussion of prior art issues. But statistically, their clients' patents cite as little prior art as everyone else that allows Finnegan to quote a statistic that "up to 97% of patents are of low value". The above '133 patent cites little prior art, and nothing from the extensive collection of IEEE and ACM papers/articles on network switches.


Renner Otto (US): their Web pages: Patent Office Examinations and Prosecution and Counseling -- no such discussions

A "core competency" of theirs is "procurement of high-quality patents", which without a definition of "quality", IOOOO, says nothing. And the message contrasts with firms that have a core competency of procurement of ... low-quality patents? For example, the use of multiple means clauses in claim 1 of one of their clients' patents, U.S. Patent 11,116,667 makes it easier to develop non-infringing workarounds, for a 'similarity' signal analysis patent that cites no non-patent prior art. IOOOO, not high-quality. Posz Law (see above) would probably frown on this use of "means' claims (and the lack of non-patent prior art citations).


Schmeiser Olsen & Watts (US): their Web page: Patent Prosecution -- no such discussions

Commenting about their "high quality" and "sound filing strategy" without definitions of "quality" and "sound", IOOOO, says nothing. "Many of these key patents have been valued in the 10's and 100's of millions of dollars". Without saying how many (out of the 9000+ they have acquired for clients), and what patent valuation guessing was used, IOOOO, says nothing, especially if what Finnegan quotes: "... upto 97% of patents are of low value", is a statistic that applies to the patents of Schmeiser's clients. Look, one reason Congress/IRS mostly ended tax deductions for donated patents was that the patent valuations used were mostly lies to the tune of billions of dollars. Once the rule changed "You can only deduct gross earnings generated by the patents you donate", these donations disappeared. Were the many "10's and 100's of millions of dollars" in valuation ... guaranteed valuations?

"Given the costs ..." -- IOOOO, never use the word 'costs' without mentioning some actual costs. "Well-drafted patent applications", well, who doesn't, and using "well-drafted" without mentioning refunds for 101, 103 and 112 rejections -- IOOOO, says nothing. For example, did they inform IBM that: U.S. Patent 11,357,435 can be done by a competitor offshore with little threat of infringement charges especially if backed up by patent insurance (not that any law firm does, and not that IBM cares)?


Schwegman, Lundberg & Woessner (US): their Web page, Patent Prosecution Services -- no such discussions

They comment that "Our patents are held to a consistently high level of quality ..." (held by who?), which without a definition of 'quality', IOOOO has no meaning. For example, is one of their patents with an extremely narrow claim, which effectively cites no non-patent prior art for an invention with tons of prior art, for a server process that can easily avoid infringement by being run offshore (U.S. Patent 11,126,934) -- is of a "high level of quality", since 'quality', IOOOO, should include the issue of enforceability? Admittedly, the '934 is a trophy patent for Airbnb. Just don't ask for patent insurance to protect its value or enforceability.


Slater Matsil (US): their Web page: Services: Patent Prosecution -- no such discussions

Slater Matsil IP, as in "Incredible People", "Impressive Professionalism", and "Impactful Performance". Geesh, too many self-congratulations. They state: "Lessons learned from years of licensing and litigating patents inform every aspect of our patent drafting and prosecution practice. This level of precision and depth not only strengthens the application itself -- it also fortifies its defendability in the event of infringement." Maybe for non-software patents. IOOOO, no law firm can state this for software patents, given the death gauntlets of PTAB and CAFC, and the problems of blocking transborder infringement. They mention that they offer "Design Around Feasibility Studies", and the SPO states the same warning as for other firms: IOOOO you shouldn't offer work-around services unless you inform your prosecution clients of work-arounds to their patents.


Studebacker Brackett (US): their web page: Our Services: Patent Preparation and Prosecution -- no such discussions

One of the few firms not to publish their lawyers' email addresses on their Web site (usually it is firstname.lastname@sbpatentlaw.com). They tout (with a spelling error): "The success of patent prosecution should start with patent applications properly draft drafted to comply with U.S. practice." (as of June 2022) -- also not realizing, IOOOO, that properly is duplicative of "to comply" (and an illustration of why you don't put adverbs in patent claims unless you define the adverb in context).


Suiter Swantz (US): their web page: Patent Process and Startups -- no such discussions

On their Startups page, at one point, they write: "Suiter Swantz IP understands that startups are typically disadvantaged due to the lack of budgetary allowances available for IP protection. Our practitioners can craft a variety of cost-savings approaches that may be used to assist in minimizing or deferring cost for budget-limited startups and small businesses." OK, consider - "Lack of budgetary allowances". So how freakin much will I have to allocate in my budget to get a patent using their services? A perfect place for a law firm to discuss actual costs, and actual cost-savings approaches. They don't.


Volpe Koenig (US): their Web page: Practices: Patent Prosecution -- no such discussions
They mention that: "Valid, infringed, enforceable claims are always our focus.", which raises the question: how are their server claims enforceable across borders? For example, their prosecuted U.S. Patent 11,188,939: E-mailed based transactions for e-commerce, is a server process IOOOO easily hosted outside the U.S. where the patent can't be enforced. And given that there are three main email protocols (SMTP, POP, IMAP), why do the claims restrict just to SMTP - the patent's validity doesn't depend on the protocol? And IOOOO, Beauregard claims are useless for (offshore) server applications. They are one of the few firms to mention 101: "We have former patent examiners in the patent procurement group, including those with a deep understanding of USPTO 35 USC 101 rejections.". Deep understanding? If by "deep understanding", if they mean "deep understanding that 101 rejections are based on an incoherent, contradictory, unconstitutionally vague (under Due Process Public Notice) caselaw", well, IOOOO, everyone has that understanding (at least privately). And just as important as 101 rejections at the USPTO, are 101 invalidations in the courts, which are not mentioned here. IOOOO, please delete this sentence. What is preferred is a deep understanding of preventing 35 USC 101 rejections (unless refunds are offered by Volpe for 101 rejections).


Wenderoth, Lind & Ponack (US): their web pages: Specialties: Finely Tuned, and more specifically, Specialities: Electrical Technologies -- no such discussions

They do mention "the unsettled law on the eligibility of computer implemented inventions for patent protection", without explaining this very serious attack on inventors' rights, and without stating if what they mean by 'unsettled' is 'incoherent and unConstitutionally vague' (which 101 caselaw is, as is 103 case law which they don't/should mention). One thing to say in their favor, which they say in their favor, is that they "focus solely on patent prosecution" (the SPO is uncomfortable with law firms that do both prosecution, and do litigation for non-prosecution clients, similar, IOOOO, to candy companies selling diabetes drugs).


Withrow + Terranova (US): their home page: W+T is a high technology patent boutique -- no such discussions

While they state on their Philosophy page that "We don't have many suits or ties" (sexist, what is the philosophy for women's fashions?), most of the photographs of the lawyers have them wearing ... suits and ties. They do mention that that help you if "you need to monetize an asset", but don't mention any expertise with Patent Collateralizing Insurance, which helps you monetize your patents by insuring them to act as collateral for a loan (so you don't have to give up equity). On their Web page: Our Philosophy, they state that: "Our goal is to obtain ironclad patent protection for our clients' technology.", which without a definition of ironclad, IOOOO, has no meaning. It is true that most software patents obtained by law firms for their clients are ironclad, but only in the sense that when put into the toxic ocean of caselaw attacks on patents, the patents sink to the deadly depths. For example, U.S. Patent 11,188,513: Logfile collection and consolidation, citing no non-patent prior art (seriously, for log file processing, in the 21st century?) with claim language that IOOOO teaches work-around (interacting with 'remote computing device' in the U.S. is non-infringing if your log-file processing server is in Mexico), is IOOOO not ironclad - taco-clad maybe.


Woodard, Emhardt, Henry, Reeves & Wagner (US): their Web page: Practice Area: Patents -- no such discussions

Some quotes: "Every Woodard attorney is or will be a registered patent attorney with the United States Patent and Trademark Office ... Most law firms cannot say that.". All that matters for any law firm is if its patent prosecutors are registered with the USPTO, which by law, they have to be. IOOOO, given all of the other things that Woodard DOESN'T SAY (listed above), not sure the point of saying you have a lot of attorneys registered with the USPTO. "Every patent application we file goes through an extensive quality review program by our formalities department to confirm that all filing requirements are satisfied and appropriate deadlines are docketed. Our quality review does not stop we continue to monitor and confirm accuracy of USPTO records during pendency and track deadlines after issuance." This is much the USPTO definition of quality, satisfying the formalities of MPEP, as opposed to Woodard describing an extensive quality review program for validity and enforceability of the patent. For example, U.S. Patent 11,374,679, IOOOO, is little more than Huffman encoding of financial trading messages. "Huffman" appears nowhere in the Specification.





The Shadow Patent Office, Mall Plaza Pance, Calle 18 #350, Avenida Cañagordas, Cali, Colombia
     shadowpatentoffice@gmail.com      (506)-7295-0808
(c) 2021-2022 - The Shadow Patent Office (part of KukaXoco Colombia S.A.)