Services

Patent Strategy and Counseling

In this age of information, ideas and innovation are further becoming the principal drivers of economic growth. In nascent and rapidly growing industries, such as software and applications of artificial intelligence, protecting intellectual property (IP) is of utmost importance. Patent strategies are now widely used as business tools to help companies turn their innovations into intellectual capital, determining a company’s survival or failure. A well-thought-out patent portfolio and IP strategy not only can effectively protect a company’s freedom to operate, but also minimize the cost to build up its patent portfolio and roadmap for future commercialization and revenue generation.

In providing patent strategy and counseling, we become our client’s trusted consulting partner and contributor to the growth of their company. Our typical patent strategy project includes a three-phase consulting engagement structure including identifying key patent filing areas, building a detailed corporate IP strategy and implementation plan, and helping our client’s IP strategy stay on track as they grow. We further help our clients make smart business decisions in their investments. For example, our team often participates in our client’s patent review committees, evaluating each patent disclosure for technical strength, patentability, future commercial value. These are only examples of our patent strategy services, which can also be custom-made to your company’s specific needs.

Patent Filing and Prosecution

Patent filing and prosecution is a process for securing a company’s patent assets and calls for a combined technological, business, and legal expertise. This includes drafting and filing a patent application, and subsequently receiving and responding to USPTO Office Actions, until the patent is granted. Our services aim to obtain high-quality patent assets that become an economic driver and revenue generator based on the client’s innovations, rather than become a financial burden for the client. A high-quality patent starts with a well-prepared application that aims not only to be approved, but also to protect the core innovative concepts of the invention to enable the client to maintain a competitive edge in the market against future infringers and design-around. A high-quality patent also ought to withstand potential legal challenges on the validity of the patent.

We pride ourselves in possessing the expertise required for high-quality patent filing and prosecution services based on rigid training of our counsel in large international law firms and extensive training as engineers and inventors. Our technological experiences enable us to quickly grasp the gist of the client’s technologies and determine the scope of protection around them. Our legal experiences enable us to avoid pitfalls that could be detrimental to the patent’s value when drafting and prosecuting a patent application for our clients. Our business experiences in patent monetization and licensing enable us to continue aligning our strategies with the business objectives of the clients during all phases of the patent prosecution. 

Freedom-to-Operate Study and Litigation Support

A freedom-to-operate (FTO) study includes assessment of risks of a company in infringing on a third party’s patent(s). It is usually conducted when a company has decided to launch a new product. It requires an intensive patent search focused on understanding the claims of relevant third-party patent(s) and their relation to our clients’ products. FTO studies may need to be very thorough depending on how crowded the technological field of the new product is and how litigious the competitors in that field are. FTO is often one of the last items on a late-stage investor’s checklist, which may make it appear less important. However, when FTO is taken lightly, issues may come up at a much later stage that are near impossible to mitigate.

In FTO studies, there is no size that fits all! We encourage clients to conduct the FTO study early on, and we work with our clients to develop an FTO plan that may best suit their needs. Our FTO services can be tailored towards different scales and at different budgets, from a knock-out FTO to a light, full FTO, or a pre-litigation FTO.

We also help our clients develop non-infringement and invalidity positions with respect to third-party patents often in the context of cease-and-desist letter or in response to a suit. Our trusted and experienced lawyers from other firms, such as ConnerIP, are ready to co-counsel with us in providing full in-depth litigation counseling and support on appropriate matters.

Patent Acquisition and Licensing Due Diligence

Patent acquisition and licensing is a common business model for monetizing a company’s IP asset and capitalizing its return of investment.  However, the due diligence process, whether for a single patent or a patent portfolio, is complex and lengthy such that it requires a comprehensive evaluation of the patent asset and calls for a sophisticated team of experts from different professional areas.

Our typical patent acquisition and licensing services include three stages: strategy development (e.g., identify patent asset and monetization methodology), evaluation (e.g., assess the quality and value of the patent asset), and transaction (e.g., work with global brokers and act as intermediary to protect the anonymity of sellers or buyers).

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