Portfolio Creation Methodology
Seamless Process: We have a time-tested process for harvesting inventions, preparing applications, and pushing them through the patent office for quick allowances. This process starts with one or two rounds of IP audits that identify and rank inventions, specify a timeline and budget for filing applications, identify teams of individuals for working on different applications, and specify a schedule for future patent meetings to continue the harvesting process. In preparing the applications, we are mindful of the limited time of the inventors. Thus, to make this process seamless, we keep our inventor meetings short by generating most of the materials for the inventor to review before the meeting. We have found that our simple formula often gets the inventors excited about working towards building the patent portfolio.
Big Picture: Many treat each patent application as a separate standalone document and approach writing the application as such. We recognize that a client’s patents must be viewed in light of each other, and draft the applications accordingly for thorough and comprehensive coverage that is expansive and not unnecessarily duplicative. This enables us to build portfolios with maximal value to their owners.
Complexities of Portfolio Management: Managing a large portfolio can be a complex task. We have seasoned attorneys and staff that are able to efficiently handle such portfolios’ administrative complexities, such as the uniform prosecution of related cases (both U.S. and foreign) and the preparation and submission of Information Disclosure Statements for the related cases
Approach
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Wide Range of Technology:
We provide patent prosecution services in a wide array of technology areas. These areas include computer hardware and software, electronic and semiconductor devices, software-defined networking and network virtualization, machine learning, wireless communication, electronic design automation, cloud computing, medical devices, medical information systems, medical imaging, computer graphics, video and coding, digital rights management, and data encryption, verification, and authentication.
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Technical and Business Considerations:
In creating patent portfolios, our focus is to fully capture the value proposition of a client’s technology and business. We believe that a well-designed IP portfolio is a strong business tool for our clients. Therefore, we consider both technical and business issues in developing patent strategies.
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Litigation, Licensing, and Foreign Implications:
Several of our attorneys have patent litigation and licensing experience. This background provides the perspective from which we create and manage patent portfolios with an eye towards maximizing the returns for our clients at various stages of their business. Our substantial experience in foreign prosecution also guides the manner with which we draft U.S. and PCT applications.
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Senior Review:
Many approach the task of drafting a patent application or response as a solitary practice driven by just one attorney. However, we strongly believe that such complex tasks require thorough, experienced review to ensure their proper execution. Such a review is also important for maintaining our own brand name. Accordingly, all patent prosecution work that is prepared by one of our associates is carefully reviewed by one of our partners.
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Active Prosecution:
We actively advanced the prosecution of an Application before the patent office by conducting Examiner interviews in person and by phone as often as possible. Whenever feasible, we try to arrange inventor presentations at the patent office for inventors that have multiple applications in a particular portfolio that is before one or two art units. Such presentations allow the Examiners to quickly familiarize themselves with the portfolios.
Standard Essential Patents
We have experience in prosecuting and procuring patents that will read on existing as well as proposed standards (e.g., for video codecs, mobile networks, etc.).
In addition, we have had success in preparing the claim charts and other material necessary for the patent pool licensors to accept our clients’ patents as standard essential.
Sample Portfolios
We have considerable expertise in building substantive patent portfolios. To date, we have built several patent portfolios that exceed 100 applications in a variety of fields, such as semiconductor devices, electronic design automation, and wireless communication. We take pride in creating patent portfolios that fully capture the value proposition of a client’s technology and business
