“An inventor fails 999 times, and if he succeeds once, he's in. He treats his failures simply as practice shots."
Charles Kettering

Patent Services

We counsel clients in all aspects of patent matters from product development to the end of a product’s life cycle.  We participate in ideation sessions, conduct product clearance studies and assist in developing design around solutions, develop global patent filing strategies, prepare and prosecute patent applications and coordinate foreign filings, assert and defend against patent infringement claims, and manage patent portfolios.

Experience

We have over 20 years of experience preparing and prosecuting patent applications in mechanical and electro-mechanical arts, and software and business methods.  We have experience working with automotive technologies, including interior component parts, frames, axles, drive shafts, transmissions, braking and occupant safety systems; building materials, including insulation and roofing systems, composites solutions and asphalt products, as well as manufacturing processes, machines and tools; metal-cutting products, including drills, drill inserts and saws; medical products, including wheelchairs, walking aids, beds, respiratory products and daily living aids; and a host of other technologies.

Services

We counsel clients in all aspects of patent matters from product development to the end of a product’s life cycle.

Product Development

We work jointly with clients to participate in product development and identify inventions.  We participate in ideation (i.e., brainstorming) sessions with inventors, engineering directors, product developers and manufacturers.  We record inventions and develop invention disclosures.  We assist in scoring inventions based on feasibility, offensive and defensive value, and patent eligibility.  We develop strategies for protecting inventions.

Product Clearance

We conduct and/or order product clearance research.  We conduct non-infringement and invalidity studies and provide clearance, non-infringement and invalidity opinions.  We assist clients in developing design around solutions.  We provide patent watch services to aid in identifying new patents issued to our clients’ competitors for providing an ongoing post-opinion analysis.

Product clearance should also consider trade dress, which under the Lanham Act, may provide perpetual protection for the design of a product, if the design is a non-functional operation of the product.  Such a design may be protected only if it acquires secondary meaning (i.e., the public has come to associate and identify the product with the designer).  To show trade dress infringement, the owner of the design must show a likelihood of confusion.

Patentability Studies

We conduct and/or order a novelty search, which typically includes a careful review of every patent in the most relevant subclasses, a good keyword strategy, and often, an interview with one or more examiners to confirm the field of search.  We identify patentable subject matter and statutory bars that prohibit patent protection in the United States and abroad.  We provide patentability opinions, which often include one or more exemplary independent claims, which aid our clients in understanding the scope of protection that may be available in view of the search results and our clients’ intimate understanding of the state of the art.

Utility Patent Protection

Generally speaking, utility patents protect structural and functional aspects of inventions.  We counsel clients about the various types of utility patent applications that can be filed.  We prepare, file and prosecute utility patent applications for a broad range of technologies.  Our patent applications are drafted to include the broadest scope of protection to which our clients are entitled.  During prosecution, amendments and/or arguments may be required to overcome rejections.  Often an interview with the patent examiner is useful in resolving rejections.  During the prosecution, we keep clients informed about the status of applications and assist clients in assessing the value of the applications along the way.  An application that can easily be designed around may have little value.  So, it is particularly important to understand the value of allowed subject matter before making payment of an issue fee.

Design Patent Protection

Design patent applications protect the ornamental appearance (i.e., non-functional aspects) of inventions.  Although design patents are somewhat narrow in scope (i.e., what you see is what you get), they provide a very useful form of protection apart from utility patents.  We take the time to understand the point of novelty and exclude from the design any features that would unnecessarily limit the scope of protection.  Poor drawings may result in fatal rejections and a loss in patent rights.  We use patent draftsmen with a good track record for providing drawings acceptable to the USPTO to reduce the risk that fatal rejections will occur.  A good design application should only take a few hours to prepare, and if allowed, will generally mature into a patent in about eight months.

Patent Appeals

Applications are often subject to final rejections.  We counsel clients about the risks of appealing rejections, and the likelihood of succeeding on appeal.  Although we cannot guarantee the success of any appeal, we have a good track record for successfully appealing rejections before the Board of Patent Appeals and Interferences.

Post Issuance

Reissue applications, if filed within two years of the issue date of a patent, can be used by the patent owner to broaden the scope of an application which has claims that are unduly narrowed.  They can also be used by the patent owner beyond the two year period to correct defects in patents, but cannot be used beyond this period to broaden the scope of claims.   Reexamination applications can be used to initiate a reexamination proceeding to challenge the validity of patents.  We are experienced in filing reissue and reexamination applications.

Foreign Filings

Patent protection is territorial.  So, US patent protection does not extend beyond US boundaries.  If protection outside the United States is desired, applicants must seek foreign patent protection.  We aid clients in developing foreign filing strategies.  Such strategies consider where products and services are sold and manufactured.  We maintain records of US filings and apprise clients of foreign filing dates well in advance of due dates to maintain priority in earlier filed applications.  We have a network of foreign associates through which we coordinate foreign patent filings, and standby ready to file foreign origin applications in the US.

International PCT Applications

We counsel clients to aid them in making international filing decisions.  We prepare and file international PCT applications.  We docket the applications for entry in the national stage and keep clients informed of national stage filing deadlines.  We also file and prosecute national stage applications and coordinate the filing and prosecution of national stage applications abroad.

Portfolio Management

We also participate in strategic development meetings and management meetings with directors, officers, and general counsel to discuss patent portfolios and develop strategies for building and maintaining portfolios.  We aid clients in identifying offensive patents associated with products and defensive patents, and counsel clients about maintaining patents throughout product life cycles to assist clients in budgeting for their portfolio.