

Ann McCrackin Part of PLI Workshop
SLW shareholder Ann McCrackin will be part of Practising Law Institute’s (PLI) Advanced Prosectuion workshop on Claim Drafting and Amendment Writing. It will be held on July 19-20, 2012 in New York City. Ann will be discussion Advanced Claim Drafting Issues for electronics and computers and will be part of an Amendment Workshop panel on the same subject.
A copy of the brochure is attached here or you can visit the PLI website.
PLI’s Advanced Patent Prosecution Workshop 2012
Please join Schwegman, Lundberg & Woessner, P.A. for an hour long discussion on how combining litigation, reexamination, and interference results in the USPTO’s new adversarial proceedings: inter partes review and post-grant review. For more information, please visit http://www.slwip.com/whatnow/.
Steve Lundberg Speaking at tech.2012
On May 22, 2012, Steve Lundberg will be one of the speakers at “tech.2012: the cloud, social, mobile, consumer, the app economy & enterprise.” tech 2012 is part of the Collaborative Vanguard Series. This is a new addition to the Vanguard Series and was suggested by Steve and fellow SLW attorney Tim Bianchi as a topic that is vital for Minnesota companies.
You can find more information about this event here.
SLW Q&A – Supreme Court Prometheus Decision
During the three weeks since the Supreme Court ruled that certain diagnostic claims are not eligible for patenting, four other patent cases have been impacted by this ruling.
The Court is shaping public policy by its ruling. Do you approve of such a public policy?
Tell us what you think of the recent Supreme Court Prometheus decision! Take a short survey by clicking on the link below. We will publish the results of the survey so your voice can be heard!
Nathan Ellefson Joins SLW’s Minneapolis Office
SLW welcomes new associate Nathan Ellefson. At SLW, Nate will focus on patent prosecution, freedom to operate analysis, opinions, and portfolio management with a focus on the technology areas of electrical, computer, networking, software and mechanical. Previously, Nate worked as a design engineer in the medical device and electronic data storage industries.
Marsha Pernat Joins SLW’s Minneapolis Office
We are pleased to welcome new associate Marsha Pernat. Her practice includes patent prosecution (US and Foreign), portfolio analysis, strategic counseling, and opinions, with emphasis on chemical engineering, chemical processing, materials science, medical devices, mechanical devices and biomedical technologies. Prior to joining SLW, Marsha was a patent prosecution associate at the intellectual property law firms Brooks, Cameron, & Huebsch and Shumaker & Sieffert.
Alison Sachs Joins SLW’s Minneapolis Office
SLW is pleased to welcome new associate Alison Sachs. At SLW, Alison’s practice will focus on various technology areas including chemical and mechanical arts and include patent prosecution, portfolio analysis, and freedom to operate. Alison most recently worked as an in-house IP lawyer at Cargill, and prior to that, as an associate at a Minneapolis IP law firm doing patent preparation and prosecution. Prior to attending law school, Alison worked at 3M as a manufacturing engineer and as a sourcing analyst.
SLW Welcomes a New Satellite Associate Tom DelRosario
SLW welcomes Tom DelRosario as a new satellite associate based in Arizona. Tom is a registered patent attorney with expertise in telecommunications, software, and computer hardware & design, and semiconductors. His practice includes patent prosecution, opinions, and patent portfolio strategy and management. Prior to coming to SLW, Tom served as in-house patent counsel for Marvell Semiconductor.
Rakesh Michael Is A New Associate in SLW’s San Jose Office
The SLW San Jose office continues to grow with the addition of new associate Rakesh Michael. Rakesh has an extensive background in intellectual property law focusing on U.S. patent prosecution as well as foreign intellectual property protection matters, generally in the technical areas of internet-based technologies, business methods, networking, software, electronics and computers. He interned as a Patent Examiner for the United States Patent & Trademark Office while completing his undergraduate degree, and prior to joining Schwegman, Lundberg & Woessner he was an associate at an IP boutique in New York City.
Ocean Tomo recently released its list of 300 companies with the strongest patent portfolios. Roughly 14% of the companies listed are currently represented by SLW.
Greg Gorrie Is SLW’s Newest Shareholder
Schwegman, Lundberg & Woessner is pleased to announce that Greg Gorrie has been made a shareholder of SLW. Greg started with SLW in May of 2001 and is a satellite attorney located in Arizona. Greg’s practice focuses on broadband and wireless communications, microwave and radar technology, satellite systems, IP networks, cryptographic and secure systems, military and government technology, software, and semiconductors.
Jim Shands is New Minneapolis Associate
SLW welcomes Jim Shands as an associate in our Minneapolis office. Jim is a registered patent attorney and has significant experience preparing and prosecuting U.S. and international patent applications in a variety of areas, including electrical circuits, software, wireless communication, networking, and medical devices. Jim has worked with startups and large corporations on issues of patent procurement, patent prosecution, patentability, technical analysis, and strategic counseling. Prior to his legal career, Jim worked as an electrical engineer in the systems protection and controls group at Baltimore Gas and Electric, and as a test engineer at Motorola and 3Com.
Robert Crist Is New Minneapolis Associate
SLW welcomes Robert Crist as an associate in our Minneapolis office. Robert is a registered patent attorney who has worked with large corporations, small businesses, and independent inventors on issues of patent procurement, patent prosecution, patentability, technical analysis, and strategic counseling. Robert has experience with various technology areas, including chemical processing, computer memory, computer software, semiconductor design and fabrication, and medical devices.
Kevin Greenleaf Joins SLW, Further Building SLW’s Reexamination Expertise
Kevin Greenleaf has joined SLW as a satellite associate patent attorney and an experienced member of our reexamination team. In addition to reexamination, Kevin’s practice includes patent procurement and post-grant review, portfolio analysis, technical analysis, and strategic counseling, with emphasis on computer architecture, software, circuit design, semiconductors, and microelectronic fabrication. In addition to several years experience at a Washington, D.C. area law firm, Kevin has several years of combined legal and technical experience at Intel Corporation, including as a Senior Component Design Engineer.
SLW Blogs Recognized As Top Blawgs
The Minnesota State Bar Association has named the Top 25 Minnesota Blawgs (law+blog = blawg). Warren Woessner’s blog (www.patents4life.com) was named as a top blawg and Patent Reforum (http://americainventsact.com/), a cooperative blog with SLW, Leonard, Street & Dienard and William Mitchell College of Law was also named as a top blawg.
Lissi Mojica Joins SLW’s Reexamination Team
Lissi Mojica has joined SLW as an officer and leading member of its reexamination team. Lissi is considered to be among the world’s foremost experts in reexamination procedures. Lissi helped establish the Central Reexamination Unit (CRU) of the United States Patent and Trademark Office (USPTO) and served as its first-ever director. Under Lissi’s direction, the USPTO experienced unprecedented use of the reexamination process. Lissi is experienced with interferences in the USPTO and was in charge of setting policies, standards, and procedures and developing Inter Partes and Ex Parte Reexamination training for CRU examiners. Additionally, she spearheaded many important Manual of Patent Examining Procedures (MPEP) revisions, implemented rule changes, and reviewed and ruled on petitions regarding reexamination. Before joining SLW, Lissi was a senior advisor and Associate Chair for the Post Grant Law/Patent Reexamination Practice Group of a Washington, D.C. patent law firm.
Gary Speier talks about patents and natural ingredients
SLW shareholder Gary Speier was interviewd by Nutra Ingredients-USA, a website that covers breaking news on supplements and nutrition, on the patentability of natural ingredients. The article can be found here.
SLW Attorneys are Editors-in-Chief of Patent Book
Steve Lundberg, Steve Durant, and Anne McCrackin are the Editors-in-Chief of Electronic and Software Patents: Law and Practice, Third Edition which is now part of a joint publishing venture between the AIPLA and BNA Books. The book is a step-by-step strategy guide to help practitioners with today’s lightning-paced technological developments, changes in USPTO policy, and pivotal court rulings.
Eric Andersland Joins SLW Team
Eric Andersland has joined SLW as an associate in our Minneapolis office. Eric brings substantial domestic and international patent prosecution, portfolio strategy, and management experience in a wide variety of technologies. Eric also brings significant technical domain expertise in computer engineering, telecommunications, internet, and software technologies, including over six years of industry engineering experience with Mangrove Systems, Inc., Tellabs, Inc., and Rockwell-Collins, Inc.
SLW’s San Jose Office Welcomes a New Associate
Michelle Esteban is a new associate in the Silicon Valley office. Michelle focuses her practice on strategic patent portfolio development with an emphasis on patent prosecution in the electronics and software industry areas. Michelle counsels clients in a variety of technology areas, including telecommunications and networking, semiconductor devices, computer architecture and storage systems, electronics, and software.
Schwegman, Lundberg & Woessner is pleased to announce that John Fischer, Greg Smock, Zhengnian Tang, and Paul Urbanski have been promoted to Officers. All four of our new Officers are all located in SLW’s Minneapolis office. Congratulations to John, Greg, Zhengnian, and Paul and thank you for all your hard work and dedication.
Two SLW Attorneys Elected to IIPLA Board
SLW Attorney and Officer Barbara Clark is now the President of the Iowa Intellectual Property Law Association (IIPLA) for the next term (Oct 2011 – Oct 2012). Jim Hallenbeck, also an SLW Attorney and Officer has been elected to serve on the IIPLA board for the next term. Congratulations to both Barbara and Jim on your election.
SLW Associate Spoke at AIPLA Annual Meeting
Matt Prater was on a panel organized by the Emerging Technologies committee of the AIPLA. The topic for discussion will be the America Invents Act and how it affects smaller entities. The other panelists were David Boundy, of Cantor Fitzgerald, and Roberto Capriotti, a partner at K&L Gates.
SLW Welcomes Luke Kuipers Back
SLW is pleased to have Luke Kuipers back with our firm as an associate in our Silicon Valley office. Luke’s practice focuses on patent prosecution and strategic patent portfolio development, with an emphasis on electronics and software. He has prosecuted patents for a wide range of technologies, including networking devices, computer architectures, payment systems, Internet technologies, and software systems. Prior to his career in law, Luke worked as an embedded software engineer with The Boeing Company and Analog Devices, where he contributed to the design and implementation of various communication systems, avionics systems, and development tools used in digital signal processing (DSP) systems
Schwegman, Lundberg & Woessner is pleased to welcome Michelle Esteban to our firm as an associate in our Silicon Valley office. Michelle focuses her practice on strategic patent portfolio development with an emphasis on patent prosecution in the electronics and software industry areas. Michelle counsels clients in a variety of technology areas, including telecommunications and networking, semiconductor devices, computer architecture and storage systems, electronics, and software.
One of the many changes introduced by the new America Invents Act (“AIA”) is an option for “prioritized examination.” Under the AIA, effective today, September 26, 2011, a new utility or plant patent application (which may also be a new continuing application) can be filed with a request for prioritized examination. The PTO issued rules just last Friday, September 23, clarifying the prioritized examination process under the AIA.
The PTO goal for prioritized examination is to provide a “final disposition” of the application within 12 months of prioritized status being granted. Such final disposition is achieved with an action ending prosecution before the examiner (such as mailing of a final Office Action or a Notice of Allowance, filing a Notice of Appeal, etc.). Prioritized examination, therefore, does not apply to any appeal or Request for Continued Examination.
Prioritized examination is limited to applications having no more than four independent claims and 30 total claims; and requires a request fee of $4,800 ($2,400 for small entities), and that the application be complete (with the declaration and all fees) at the time of filing. If an applicant at any point files a petition for an extension of time, prioritized examination is terminated.
Requests for prioritized examination are statutorily limited to a maximum of 10,000 applications in any PTO fiscal year, until the PTO issues rules establishing a different limit. PTO FY 2011 ends this Friday, September 30, and PTO FY 2012 begins October 1. We anticipate that there will be a strong demand for prioritized examination, and therefore the quota of 10,000 applications for FY 2012 could be reached fairly quickly. In view of this possibility, if you are considering prioritized examination for any applications, or need additional information regarding the process, you may wish to contact us soon.
SLW Associate Matt Prater has been named the Treasurer of the Twin Cities Chapter of SAE (Society of Automotive Engineers). SAE is a global association of more than 128,000 engineers and related technical experts in the aerospace, automotive and commercial-vehicle industries.
Two Appointments for Jim Nelson
Shareholder Jim Nelson has been appointed to the President’s Advisory Council for Iowa State University and to the Funding and Development Committee for the Minnesota Opera.
SLW Attorney Selected For Leadership Program
Jim Hallenbeck, an attorney and officer of Schwegman, Lundberg & Woessner, was selected for the Leadership Iowa program for 2011-12. You must first be nominated, invited to apply, apply and then be accepted. The purpose of the program is to identify up and coming leaders in Iowa and enhance their education on issues that are important to Iowa.
SLW Chosen As Top Minnesota IP Firm
Super Lawyers Business Edition has listed Schwegman, Lundberg & Woessner, as a top IP firm for Minnesota. The top firms were chosen based on the number of attorneys within the firm who were listed to 2010 Super Lawyers in business practice areas, in addition to a combination of metrics indicating the quality of those attorneys including: the number of years selected to the list, inclusion on a top list and their average blue ribbon panel scores.
Suneel Arora, Tim Bianchi, Brad Forrest, Steve Lundberg, Mike Schwegman, and Warren Woessner were all named 2010 Super Lawyers.