Patent Strategy and Counseling

Patent counseling is a critical aspect of developing an IP portfolio. There are numerous options, including where and when to file, what countries to file in, what to claim, how much resources to sink into a project, and other considerations when developing an IP strategy. Smart business people address this issue very in the product development lifecycle. A competent patent attorney should be used to help you with this exercise.

A solid foundation for any business starts with a business plan. We are here to help with the IP aspects of that plan.

One of the first questions that should be addressed are whether you are developing a product that is patentable subject matter. And even if it is appropriate subject matter, would a patent application meet the other requirements of patentability, such as novelty and non-obviousness? The question of patentable subject matter can be answered by an expert such as myself. But the substantive questions of novelty and non-obviousness almost always require a patent search. It is very common to find that someone else made a public disclosure or filed a patent application on a very similar concept. A search can answer that question. These are the kinds of facts you want to know very early on in a project. Even if another disclosure has important differences, knowing these references helps the patent attorney draft the most effect claims that steer around prior art. Moreover, finding relevant prior art before a patent examiner does is always beneficial.

Patent counsel should be relied on determine, for example the scope of the claims, and the specificity provided in a patent application

Competent counsel can also help with budgeting for the patenting process. This is particularly important with international filings, which can easily rack up significant expenses. Deciding when and where to file is not minor consideration, but rather can have significant strategic implications for your business.

You can rely on us for this important aspect of your business.

Patent Prosecution

Patent prosecution is the task of preparing patent applications and negotiating with patent examiners to get issued patents. Patent prosecution is really our core function, and most of our other activities flow from our expertise in this area.

Patent Application Preparation

As an initial step, a patent application must be prepared. This is a crucial step that should done by an experienced professional. There are a number of formal requirements. But the key is language in the specification (i.e., the body of the patent application) and claims that will survive scrutiny by patent examiners, and get the inventor claims that protect the invention to the broadest extent possible, and that are defensible in court. The legal requirements in these aspects have shifted in recent years, and we are fully versed on getting patents that our clients need to move their business forward. We are experts at drafting patent applications and claims.

Patent Application Filing

This is a critical step with many formal requirements. There are numerous pitfalls here that we have years of experience with. Your application will be safely filed by me and my team.

Patent Prosecution

After a patent application is filed, patent prosecution is the process of navigating the substantive review by patent examiners. Every patent application is examined by a patent examiner for formal and substantive requirements. The substantive requirements of patentability are: (1) whether the invention qualifies as patentable subject matter; (2) whether the invention is novel; (3) whether the invention is non-obvious (called “inventive step” in some other countries); (4) and whether the invention meets the written description requirement, which means that the claims are supported by the specification, and that the claims are sufficiently definite and enabled.

Patent examiners generally will make one or more substantive arguments that an invention is not patentable. Its our job to respond with arguments that the invention is patentable. We have years of experience preparing these kinds of arguments and successfully getting issued patents. We also frequently engage patent examiners by telephone which can often resolve issues quickly and efficiently.

Look to me and my team to help you with this critical aspect of your intellectual property.


Opinions and Enforcement

After you have issued patents, you need to enforce them. The ultimate remedy for enforcement is litigation, but there are many steps you can take short of filing a lawsuit to enforce your patents and protect your property. This includes appropriately worded letters, negotiations, and license agreements that can satisfy all parties in a potential dispute.

On the flip side, we also help people who have been contacted (or sued) by a patent owner with an allegation that they are infringing a patent. We can help you analyze the issues and recommend a course of action, which may include a settlement, a license agreement, or a well-reasoned response.

If litigation is unavoidable, we have partners and affiliates with significant experience to handle the process.

Patent opinions are closely related to enforcement issues. Some of the questions address by patent opinions include:

  • Freedom to operate opinions. These opinions address the question of whether something can be manufactured and sold without infringing the valid patents of someone else.
  • Validity opinion. These opinions address the question of whether a particular patent is likely valid. A person who is concerned about the patents or a portfolio of a competitor may want this kind of opinion for peace of mind that if accused of infringement, they have solid arguments to use as a basis for a favorable settlement.

In the generic-drug space, we are experts at analyzing “Orange Book” listings for pharmaceutical products, and drafting the non-infringement/invalidity opinions these projects require. We also prepare “Paragraph IV” notice letters. Look to use for your Hatch-Waxman legal needs.

We are experts at the legal analysis these opinions require. You can rely on us to help you with this important strategic task.