Law students Michael Swett (Seattle University School of Law) and Stephen Chen (University of Washington School of Law) were recently selected as the recipients of Seed Intellectual Property Law Group’s annual Founders Scholarships for year 2010. In 2003, Seed IP Law Group created two scholarships to honor its founders, Richard W. Seed and Benjamin F. Berry. Seed IP Law Group’s Founders Scholarships are given annually to students at the University of Washington and Seattle University Schools of Law. Seed IP seeks to annually recognize outstanding students who have a keen interest in the field of intellectual property law and who also have an undergraduate degree that qualifies him/her to sit for the U.S. Patent and Trademark Office’s Patent Bar Exam. “We think it’s very important to train the next generation of intellectual property attorneys so that we can continue to build on the legacy started by Ben Berry and Dick Seed,” said Karl R. Hermanns, Seed IP’s Managing Partner. “Only through strong support of higher education will our country continue to be a leader in the world.”

Intellectual Property Today magazine has ranked Seed IP Law Group at #64 in its annual “Top Trademark Firms” survey. The data, gathered from reporting nationwide firms, is based on the total amount of United States trademark registrations issued in 2009 where the law firm, or member of the firm (i.e. partner/associate), is listed as the legal representative on the registration. Seed IP issued 231 trademark registrations in 2009. Seed IP has consistently been among the Top 100 in this annual survey.

Seed IP Law Group PLLC proudly welcomes Jeffrey M. Sakoi as a new partner. Jeff specializes in strategic intellectual property counseling, patent procurement and enforcement, licensing, and patent assertion management services to chemical, mechanical, and electro-mechanical companies. He provides these services across a broad range of multi-disciplinary industry sectors, including semiconductor, pharmaceutical, pulp and paper, wireless telecommunication, transportation, medical devices, and alternative energy industries. Jeff received a B.S. (cum laude) in Chemical Engineering (1982) from the University of Idaho and holds a J.D. (1985), also from the University of Idaho. Prior to joining Seed IP, Jeff served as a patent attorney at the Dow Chemical Company (Midland, MI) for several years. He has since amassed over twenty-five years of experience as a patent attorney, drafting and prosecuting patent applications across a multitude of industries.

Jeff is admitted to the state bars of Washington, Idaho, and Michigan. He is admitted to practice before the U.S. District Court of Idaho, the U.S. District Court for the Western District of Washington, and the U.S. District Court for the Eastern District of Michigan. Jeff is registered to practice before the U.S. Patent and Trademark Office. He is a member of the Washington State Patent Law Association, the American Intellectual Property Law Association, the Intellectual Property Owners Association, the Asian Bar Association of Washington, and the National Asian Pacific American Bar Association. Jeff has been a past lecturer at CASRIP (Center for Advanced Study and Research on Intellectual Property), a seminar which takes place annually at the University of Washington, and has been selected as a Washington Law & Politics “Super Lawyer” annually since 2004.

Seed IP’s Electrical Engineering & Computer Science Group proudly welcomes Joshua A. Kading as a new associate attorney. Joshua specializes in U.S. and foreign electrical engineering, computer science, and mechanical patent matters, including patent procurement, licensing, business methods, and strategic domestic and international intellectual property portfolio management. He has many years of experience in drafting and prosecuting patent applications, drafting and presenting non-infringement, invalidity, and patentability opinions, and developing client patent programs. Josh received a B.S. in Electrical Engineering (2003) from the University of Wisconsin-Madison and holds a J.D. (2008), also from the University of Wisconsin-Madison. Prior to joining Seed IP, Joshua served for several years as a Patent Examiner at the United States Patent and Trademark Office (Alexandria, VA), followed by four years as a law clerk and associate. Joshua is admitted to the Washington State Bar, the Wisconsin State Bar, and the United States District Court – Western District of Wisconsin, and is registered to practice before the U.S. Patent and Trademark Office. He is a member of the American Bar Association and the Washington State Patent Law Association.

Seed IP Law Group PLLC proudly welcomes Shoko I. Leek as a new partner. Shoko specializes in U.S. and foreign patent procurement in a variety of fields including optical, electrical, mechanical, and software technologies. In addition, she provides clients with patent infringement and validity opinions, due diligence reviews, trademark procurement, and general intellectual property law counseling and strategic portfolio management. Shoko received a B.S. in Physics from the University of Washington (1998) and a B.A. in Political Science and Economics from Waseda University (Tokyo; 1990). She holds a J.D. from University of Washington School of Law (1997). Shoko is admitted to the Washington State Bar and is registered to practice before the U.S. Patent and Trademark Office. She is a member of the American Bar Association, Washington State Patent Law Association, and King County Bar Association. Shoko is also a Summer Seminar Faculty Member for CASRIP (Center for Advanced Study and Research on Intellectual Property), a seminar which takes place annually at the University of Washington.

Intellectual Property Today magazine has ranked Seed IP Law Group at #94 in its annual “Top Patent Firms” survey. The data, gathered from reporting nationwide firms, is based upon the total amount of United States patents issued in 2009 where the law firm, or member of the firm (i.e. partner/associate), is listed as the legal representative for the issued patent. Seed IP issued 330 patents in 2009. Seed IP has consistently been among the Top 100 in this annual survey.

Seed IP’s Computer Science & Electrical Engineering Group recently welcomed Jeremiah J. Baunach as a new associate attorney. Jim specializes in U.S. and foreign computer science matters, including patent procurement, licensing, and strategic portfolio management. He received a B.S. in Computer Science from the University of Portland (Portland, Oregon; 1996) and holds a J.D. from Willamette University College of Law (2000). After law school, Jim served four years in the U.S. Air Force as a communications officer and network design engineer before specializing in patent law full time. He is admitted to the Washington State Bar and is registered to practice before the U.S. Patent and Trademark Office. Jim is a member of the Washington State Patent Law Association.

The Federal Circuit Court recently affirmed a lower court decision (see Wyeth v. Dudas, 88 U.S.P.Q.2d 1538 (D.C. Cir. 2008)) that the U.S. Patent and Trademark Office (PTO) has been incorrectly calculating delays by the PTO that resulted in greater than three (3) year pendency of an application before issuance.  Wyeth and Elan Pharma International Limited v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010).

In the United States, the term of a patent is adjusted for certain delays by the PTO during prosecution of the patent application (“Part A delays”).  The statutory provisions also guarantee that a patent will grant within three (3) years from the filing date of the application and provide for additional adjustment of term for any period of pendency over three (3) years (“Part B delay”).  However, any adjustment for Part A and/or Part B delays is reduced for certain delays in prosecution attributable to the applicant.  Any such adjusted term is shown on the face of an issued U.S. patent and is referred to as Patent Term Adjustment (PTA). 

In the above noted case, the Federal Circuit Court found that the PTO has been incorrectly calculating the Part B delay.  In essence, the PTO was not providing credit for delays in prosecution during the first three (3) years to the extent those delays contributed to application pendency greater than three (3) years.  Under the correct calculation, day-by-day credit will now be received for certain PTO-caused prosecution delays during the first three (3) years of pendency of the application, in addition to credit for pendency over three (3) years (both of which may be reduced by certain applicant-caused delays).

Therefore, a patent that issued more than three (3) years after its filing date may be entitled to a longer PTA.  If the PTO’s calculation is incorrect, to receive the correct term you may either (1) file a petition with the PTO if within two (2) months of grant; or (2) file suit with the Federal District Court for the District of Columbia if within 180 days of grant.

Additionally, many patent owners may have patents that issued more than 180 days ago that would be eligible for additional PTA except for the miscalculation by the PTO.  The PTO has not yet provided any comment regarding such patents.  However, at least one patentee has filed a complaint against the Director, asserting that “[the District Court for the District of Columbia’s] decision in Wyeth v. Dudas constituted a change in the law sufficient to invoke the doctrine of equitable tolling to allow for the filing of this complaint at this time.”  The doctrine of equitable tolling preserves a plaintiff’s claims when strict application of the statute of limitations (in this instance, 180 days from date of grant) would be inequitable.

The PTO has announced that it will conform to the Federal Circuit Court’s decision and is in the process of changing its calculation methods.  A revised computer program is expected to be in operation for patents that issue on or after March 2, 2010.  The PTO has also established interim, optional procedures for a patentee to request recalculation of patent term adjustment without a fee as an alternative to petition and fee as required by 37 C.F.R. § 1.705(d).  A form may be submitted no later than 180 days after the patent issued, and the patent must have issued prior to March 2, 2010.  For additional details see the USPTO web site:

(Interim Procedure for Patentees to Request a Recalculation of the Patent Term Adjustment to Comply with the Federal Circuit Decision in Wyeth v. Kappos Regarding the Overlapping Delay Provision of 35 U.S.C. § 154(b)(2)(A), dated January 26, 2010).

Please contact us if you have any questions regarding PTA or other matters.

Seed IP Law Group congratulates associate attorney Hayley J. Stevens on recently passing the Patent Bar Exam. She is now registered to practice before the U.S. Patent and Trademark Office. Hayley joined Seed IP’s Electrical Engineering & Computer Science Group in 2008. She specializes in domestic and foreign patent prosecution and domestic trademark matters. Hayley received a B.S. (cum laude) in Electrical Engineering from the University of Florida with an emphasis in digital design (2004). She was awarded her J.D. from Willamette University College of Law (2008). Hayley is admitted to practice in Washington State (2009). She is a member of the Washington State Patent Law Association and the Institute of Electrical and Electronics Engineers, Inc.

The United States Patent and Trademark Office (USPTO) is implementing a pilot program in which an applicant may have an application advanced out of turn (accorded special status) for examination, for applications pertaining to green technologies including greenhouse gas reduction (applications pertaining to environmental quality, energy conservation, development of renewable energy resources or greenhouse gas emission reduction).  Currently, an application pertaining to environmental quality, or energy conservation, development of renewable energy resources or greenhouse gas reduction will not be advanced out of turn for examination unless it meets the requirements of the accelerated examination program. Under the Green Technology Pilot Program, applications pertaining to environmental quality, energy conservation, development of renewable energy, or greenhouse gas emission reduction, will be advanced out of turn for examination without meeting all of the current requirements of the accelerated examination program (e.g., examination support document). The USPTO will accept only the first 3,000 petitions to make special in previously filed new applications, provided that the petitions meet the requirements set forth.

Effective Date:  December 8, 2009.

Requirements:  A petition to make special under the Green Technology Pilot Program may be granted in an application if the eligibility requirements set forth in section II or III and the following conditions are satisfied:

(1) The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. 111(a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371. The application must be previously filed before the publication date of this notice. Reexamination proceedings are excluded from this pilot program.

(2) The application must be classified in one of the U.S. classifications listed in section VI of this notice at the time of examination. See section VI for more information.

(3) The application must contain three or fewer independent claims and twenty or fewer total claims. The application must not contain any multiple dependent claims. For an application that contains more than three independent claims or twenty total claims, or multiple dependent claims, applicants must file a preliminary amendment in compliance with 37 CFR 1.121 to cancel the excess claims and/or the multiple dependent claims at the time the petition to make special is filed.

(4) The claims must be directed to a single invention that materially enhances the quality of the environment, or that materially contributes to: (1) The discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction (see the eligibility requirements of sections II and III of this notice). The petition must include a statement that, if the USPTO determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), applicant will agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements in section II or III of this notice and is classified in one of the U.S. classifications listed in section VI of this notice. See section V of this notice for more information.

(5) The petition to make special must be filed electronically before December 8, 2010, using the USPTO electronic filing system, EFS–Web, and selecting the document description of ‘‘Petition for Green Tech Pilot’’ on the EFS–Web screen. Applicant should use form PTO/ SB/420, which will be available as a Portable Document Format (PDF) fillable form in EFS–Web and on the USPTO Web site at http://www.uspto.gov/web/forms/index.html. Information regarding EFS–Web is available on the USPTO Web site at http://www.uspto.gov/ebc/index.html.

(6) The petition to make special must be filed at least one day prior to the date that a first Office action (which may be an Office action containing only a restriction requirement) appears in the Patent Application Information Retrieval (PAIR) system. Applicant may check the status of the application using PAIR.

(7) The petition to make special must be accompanied by a request for early publication in compliance with 37 CFR 1.219 and the publication fee set