The development of a patent portfolio is more than just managing the preparation and prosecution of applications and the maintenance of patents. Patents are not an end in themselves. They add value to an organisation. They help to maintain exclusivity by preventing competitors from using the invention. They may be monetised through sale or licensing.
We have broad experience and deep understanding in how patents are used by industry. We approach patent drafting with that knowledge in mind. It’s not merely about meeting the requirements of patentability and getting a patent application allowed. Well-crafted patents are written with one eye on how those patents may be used in the future.
The patents we secure for our clients are prepared with the aim of providing support for relevant aspects of the organisation’s business plan, be it first-to-market, technology leader, technology follower or simply added patented value.
We work with you to ensure that the filing of patent applications is an integral part of the company’s business strategy and not an afterthought.
Maintaining large patent portfolios can be expensive. Annuities or annual maintenance fees quickly add up. We work with you to identify key patents and applications and to focus resources on those.
Stress-testing key patent applications during the examination process enables the patent application to be refocussed before it is allowed. Withdrawing applications that are heading toward weaker protection than expected allows resources to be redirected to other inventions. Culling patents that are no longer fit for purpose – because the product has lived its useful life, or the technology has simply moved on – leads to a stronger portfolio and provides control over maintenance costs.
In fields where patenting activity is more intense, there may also be value in additional validity/infringement reviews during the examination process. Naturally, infringement and validity opinions also apply to other people’s patents. You may wish to know whether a competitor’s patent is valid and whether it will be infringed by your new product. Answers to these questions – including work arounds that avoid the patent and other solutions – are part of the strategic analysis we provide aimed at supporting your company’s business model.
Although patent offices have access to large databases of published documents, the information available to them is finite and less than complete. Patent examiners do the best they can with the resources available to them.
Most commercial prior art search providers use generalist searchers to search patent databases. In our experience, this is ineffective in all but this simplest of cases. We have found that using technical experts in the field of the patent to guide a search is far more effective than typing keywords into databases.
We aim to identify suitable experts in our network that meet our strict requirements. We commission them to work with our attorneys to develop search strategies that take account technical aspects – what is the invention about and what are its significant features – and legal considerations – how is the invention presented and defined in the patent. We arrange searches that cover far more than just patents including trade publications, conference proceedings and submissions technical Standards meetings.
In addition to extensive know-how in patent prosecution, our attorneys are certified in litigation management and advocacy up to and including the Supreme Court. We have many years of experience in litigation in national courts around the world and in oppositions and other validity challenges in various national and regional patent offices.