Searching and Patentability
Even before filing a patent application, you may want some indication of its chances of being granted. One way to assess potential patentability is to see what other sorts of scientific studies, research studies, or published patent documents exist that are relevant to your invention. According to US patent law, an invention has to be novel and non-obvious in order to become patented. Most foreign countries have similar laws. Unfortunately, most fields have accumulated copious amounts of technical literature, some of which may be relevant to your invention. We can search through this literature, known in patent circles as “art,” to assess whether it might prevent you from getting patent coverage for your invention.
Patent Application Preparation and Prosecution
After you’ve created your invention, we can help you capture its description in a patent application, and we can draft claims in that application that cover the invention as broadly and accurately as possible. These claims are what the patent examiner considers when your application is filed. When your application is received at the U.S. Patent and Trademark Office, the Examiner reviews it to see whether there are deficiencies that need to be corrected. Then the Examiner conducts a search of the art to identify any references that might interfere with the patentability of the claims in your application. If your claims are rejected — and they most likely will be — you will have a chance to amend them and/or to argue about whether the rejection was proper. The Examiner will then respond to your amendments and arguments. This back-and-forth process, called patent prosecution, continues until your patent application is granted, or until it is finally rejected. Prosecution is complicated and can take years. With decades of prosecution experience, we will guide you through this complex process.
Due Diligence and Portfolio Management
When you’re investing in a company, you need to understand their IP portfolio. This process of assessing a company’s IP, called due diligence, is a core competency of our firm. We can help you ask the right questions and process the information, so you can reach an informed conclusion about the value of the company’s IP. If your company is facing due diligence, you’ll want us on your side. We’ve represented many investors over the years, so we know what questions they’ll be asking. We can help you organize your assets, present them to investors, and answer their questions during the diligence process. If your company wants to stay on top of its IP portfolio, we can help you manage it. You’ll want to know what you have already, how effective its protection is right now, and whether there are areas that need to be strengthened. You’ll also want to identify directions for expanding or improving your IP coverage. With effective portfolio management, you’re also more prepared for due diligence when an investor or an acquirer comes along. As your business grows, we’ll help you keep your IP portfolio in peak condition.
Landscape Studies and Freedom to Operate
No matter how innovative your technology, you know that your path forward may encounter obstacles. Wouldn’t it help to know where the dangers are? Before you develop your technology for commercialization, we can investigate the patent landscape for you to identify third-party patents that might be problems for you. A patent landscape study can help you navigate. As you prepare a product for the marketplace, be sure that your planned direction is a safe one.
It’s better to identify your competitors ahead of time so you can take business-savvy precautions, either to avoid them entirely, or to figure out ways to make deals with them. In either case, you’ll want to know what’s out there as you finalize your product. This is the role of a freedom to operate study. Whether it’s an informal search or a formal legal report, we can prepare you for what’s out there.