Strong patent rights are powerful business tools for emerging and established businesses—providing access to capital, attracting merger partners and protecting investments and market share.
Business strategy. Our patent attorneys work closely with clients to understand and pursue their business objectives. We have earned a reputation for sophisticated and client-focused patent portfolio strategy, acquisition, management and deployment. We strive to find innovative ways to establish, protect and maximize the value of our clients’ technology with solid patent portfolios.
Valuable patents. Many of our patent attorneys both litigate and prosecute patents, and all have a science or engineering background, often with deep experience in the technologies our clients want to protect. Insight from litigation and technical or scientific experience informs our counsel during the invention and patenting processes, facilitating our ability to obtain appropriately broad, defensible patents. We do not work merely to “obtain many patents,” but to develop portfolios that are valuable offensive and defensive business assets.
Industry-experienced attorneys. Our patent prosecution and counseling attorneys have degrees in a variety of scientific areas and most have industry experience working as engineers, inventors, researchers and educators.Patent Prosecution
- Enhanced Prosecution techniques
Accelerated Examination (AE)
This U.S. Patent Office program pursues patent issuance within one year after filing. We have gotten patents issued in as little as 5 months using this program. AE incurs larger up-front costs, but reduces prosecution costs later. AE requires a patentability search and submission of an Examination Support Document explaining in detail how the claim elements distinguish the prior art found. This can create undesirable file history estoppel, but AE is useful in some circumstances, such as for pursuing narrowly tailored claims that are already infringed. http://www.uspto.gov/patents/process/file/accelerated/index.jsp
Track One Prioritized Examination (PE)
This Patent Office program seeks final disposition (allowance or final rejection) in one year. It requires payment of an extra fee of $4000 ($2000 for small entity), and the application is limited to four independent claims and 30 claims in total. Unlike AE, no search or Examination Support Document is required, thus reducing risk of file history estoppel. All responses must be filed quickly, without extensions of time. http://www.uspto.gov/patents/init_events/Track_One.jsp
Patent Prosecution Highway (PPH)
The PPH program allows fast track examination in the US where a claim has been allowed in a corresponding application in another participating country, based on the assumption that the US examiner can leverage the review done in the other country. One useful strategy is to first or simultaneously file in a country with faster examination, then petition to fast-track the US application when a claim is allowed in the faster patent office. No additional fee is required. We are careful to choose a “quick examination” country that is not only fast, but appropriate for the technology (e.g., Australia, not Europe, for software). http://www.uspto.gov/patents/init_events/pph/
First Office Action Interview Program
This program involves an Interview with the Examiner prior to the first office action. The examiner will conduct a prior art search and provide applicant with a condensed pre-interview communication (PIC) citing relevant prior art and identifying proposed rejections or objections. The PIC is a PCT style search report that is discussed in the interview, which is scheduled within 1-2 months. The application is limited to three Independent claims and 20 total claims. We have experienced a first action allowance rate three times the normal rate using this program. http://www.uspto.gov/patents/init_events/faipp_full.jsp
We recommend pre-filing patentability searches . Although this increases up-front costs, we find incurring those cost to be more than justified. Anticipating what the Examiner will find allows us to focus the claims early, saving money on unrealistically broad claims and increasing the chances of obtaining meaningful protection.
Other Enhanced Prosecution Techniques
Our prosecutors use an arsenal of other techniques to obtain patents faster and with broad claims. These include Petitions to Make Special due to age or health, examiner interviews, pilot programs (e.g., after final consideration pilot program: http://www.uspto.gov/patents/init_events/afcp.jsp), and concurrently filed U.S. and PCT applications..
- Patent Prosecution-Technologies
Mechanical Engineering and Medical Devices
We have deep experience prosecuting mechanical engineering and medical device patents. We represent the makers and sellers of medical devices, textiles, hand and power tools, packaging, paper products, automobiles and parts, food and food processing, manufacturing, sporting goods, appliances, building construction and many other mechanical devices.
Software and Electrical Engineering
We practice patent law on the cutting edge of technologies and legal issues relevant to our client's business pursuits. We represent some of the best known names in software, internet, electrical systems and computer technologies, as well as early stage and emerging technology firms. Our patent prosecution attorneys with degrees in computer science, computer engineering and electrical engineering work collaboratively with our top tier copyright and trademark attorneys to protect our clients' most valuable assets and guide them as they operate in an ever evolving marketplace. We have experience with power systems, electronics, control systems, signal processing, integrated circuits, telecommunications, open source software, microelectromechanical systems and biomedical engineering. We have extensive experience prosecuting and litigating business method patents, and have experience drafting application development agreements, technology transfer agreements and licensing agreements.
Biotechnology and Chemical
Our legal and scientific professionals have diverse professional backgrounds and real world experience as researchers, scientists and inventors. Many have advanced degrees in biology, biotechnology, biochemistry, organic and inorganic chemistry, chemical engineering, genetics and many related sciences. Our Health & Life Sciences practice takes an interdisciplinary approach to protecting and maximizing the value of our clients' scientific assets. By teaming with our corporate and litigation attorneys, we are able to serve all of the needs of our biotechnology and chemical clients.
Please click here to visit www.KilpatrickPostGrant.com and learn more about our Post-Grant Proceedings Practice.
- Design Patents
Value proposition Design patents are an inexpensive and quick way to obtain patent coverage that protects against copiers of the appearance of key features of your product. Design patents on the shape of the Apple iPhone figured prominently in Apple’s victory over Samsung. The term is shorter – 14/15 years. There are no maintenance or utility fees, and the deadline for a foreign priority filing is 6 months, as opposed to one year for utility patents. In addition to physical objects, design patents can product the appearance of a display of user interface features.
Avoid common pitfalls Our skilled professionals can guide the drafting of appropriate drawings for a design patent. Common mistakes include incorporating too much detail and showing the entire product, not just key features, which may allow a competitor to avoid the patent. Another pitfall is failing to prepare U.S. application drawings that will also meet the drawing requirements for filing in other regions or countries.
Valuable tool in some countries In China in particular, many local Chinese companies primarily use design patents to protect their products.
- Portfolio Management & Audits
Portfolio Management. We manage portfolios for clients that include overseeing applications being handled by other law firms or sole practitioners. This allows you to offload the management function, while maintaining a variety of choices. Or perhaps you want low budget attorneys for some inventions, while using Kilpatrick Townsend for the higher value assets where quality is more important.
Portfolio Audits. We can audit your patent portfolio and related procedures to ensure you are getting the value and efficiencies you want.
Portfolio pruning. Over time, budgets may need to be adjusted based on where new innovation is going, and patents can be dropped or sold in areas of discontinued products. We can also determine which patents have claims that are too narrow or obsolete to be useful.
Monetization. We can evaluate whether there are patents no longer needed to support your business, that can be sold or licensed to raise revenue.
Gap Analysis. We can determine where there are gaps or mismatches between your patents and your products and strategic direction.
Process optimization. We can review your disclosure process, incentive systems and tracking systems and make recommendations on improvements in accordance with current best practices.
Tax reduction. We can work with our tax attorneys to recommend ways to reduce tax liability, in particular by looking at which related company holds title.
- Freedom to Operate (Clearance)
What do you say? What do you say when your investors, business partners, customers of others ask whether your new product or service will be free from patent suits? What if an OEM, partner or customer asks about a particular patent when you start to roll-out a new product or service? What if your company gets sued after introducing a product, and your CEO asks what you know about the patent? You tell them you have a Freedom-to-Operate study done by Kilpatrick Townsend.
Navigating the minefield. A freedom-to-operate study (also called a right-to-use or clearance study) will determine if a new product or feature is likely to attract a patent infringement suit. It can be done for new products or features being developed, or products of an acquisition target. It allows problems to be identified in advance, with solutions including licensing, design-around, non-infringement and/or invalidity opinions (which can eliminate infringement by inducement) and factoring patent litigation costs into the product budget or acquisition costs.
Limited clearance for litigation, market entry. We can tailor the review to your budget, based on how significant the new product is. A limited clearance can include:
- Search for patent litigation
- Landscape picture of what competitors have how many patents in the technology area
- Limited key word patent search
Normal Clearance. This can also be tailored to an appropriate budget. It would include the limited clearance elements, plus
- Robust key word search, including international patents & applications
- Separate searches on separate features
- Deeper dive on identified risk patents – review file history, claim construction, infringement analysis, targeted validity review.
Triage approach. The review is normally staged. We can identify potentially problematic patents and check in with you re the budget for continued review. We can then do a deeper dive if needed on particular patents, analyzing file histories, determining claim construction and infringement risk, and doing targeted invalidity searching for identified patent risks.
Prosecution leverage. If our firm is also doing your prosecution, such studies can double as patentability studies, providing efficiencies and cost savings. Our familiarity with previous generations of products through our prosecution work gives us a head start with a basic knowledge of the technology area.
- Opinions – Willfulness, Inducement Protection
Willfulness. Since the Seagate decision was rejected by the Supreme Court Halo decision , there is a need again for a legal opinion to avoid willfulness. District courts under Halo are given wide latitude to award treble damages in their discretion when there has been “egregious” infringement behavior, and appeals from such an award are to be reviewed only for an abuse of discretion.
Inducement. Under recent case law, a non-infringement opinion can show there was no specific intent as required for an inducement claim, thus providing a weapon to not just limit damages, but show no infringement at all. This is particularly important where multiple parties perform different parts of the claim, often making inducement the only infringement risk (e.g., client-server claims).
Factors That Weigh in Favor of an Opinion:
- Notice Letters (Threats of Infringement, Offers to License, etc.)
- Defense relies on invalidity positions (including § 112), which generally require more careful analysis
- Non-infringement positions are not readily apparent
(e.g., rely on prosecution history estoppel or arguments against equivalency, depend on claim interpretation)
- Product Importance
- Infringement risk is due to possible inducement allegation
- Early Case Assessment – 2nd Opinion Review
Kilpatrick Townsend’s specialized early case assessment teams provide independent assessment of the strengths and weaknesses of your defense position in the initial stages of patent litigation. If litigation counsel has already been engaged and focused on actively litigating the matter, we are able to simultaneously provide a neutral assessment or second opinion of your company’s position. Our analysis can be handed over to litigation counsel to avoid duplication of costs.
Preliminary Assessment. A patent attorney familiar with the technology can do this review in a week or two without using an expert. We review the patent file history, likely claim interpretation and determine infringement risk. We can talk with your engineers to assess infringement risk and identify likely sources of prior art. We can also do a limited search for prior art.
More Thorough Assessment. This review adds a patent litigator familiar with how various defenses are likely to play out in court, and can be completed in a month or two. A more thorough review can be done, including a deeper dive and ranking of multiple possible defenses (e.g., inequitable conduct, divided infringement, abstract non-statutory subject matter – e.g., Business Method, elements performed outside country, non-enablement, etc.) This can include the amount of likely damages & the extent of any likely injunction. Finally, we can also evaluate the prospects for a Patent Office validity review and the odds of obtaining a stay of the litigation depending on the venue.
Deliverable. We can provide a presentation that provides your company’s decision makers with a reasonable assessment of the odds of success for various defenses and the likely amount of damages, which also can be used in assessing settlement options.
Related services for settlement leverage or a countersuit:
Own portfolio assessment - we can assess your company’s patent portfolio, looking for patents to assert in a countersuit or offer for a cross license.
Patent acquisition assessment – we can evaluate the possibility of acquiring a patent at a reasonable cost and asserting it against the plaintiff.
Design-around assessment – we can work with your company’s engineers to evaluate possible design-arounds. This doesn’t necessarily need to be implemented - it can be used to put a cap on the value of settlement in view of this possible alternative.
Patent Office Challenge. We can prepare an Inter Partes Review petition or other Patent Office challenge based on the assessment work, which can be used to bring down the settlement demand.