Patent Legal Services at Integrity Intellectual Property
Patent Portfolio Development
A comprehensive patent portfolio may include multiple patents of varying scope -- and typically patents directed to machines (like hardware) and methods (sometimes like software). Where patents are carefully prepared in this manner to cooperate together, they can provide patent protection over an entire innovation field -- and that protection being enhanced by the cooperative nature of the individual patents from which the portfolio is comprised.
Patent portfolio strategy planning and execution require considerable appreciation of business objectives with an expert view to subject matter which is patentable. Generally speaking, a broad scope comprehensive application will serve as a patent portfolio 'anchor' and various (depending upon the nature of the inventions) scope follow-on patent applications which fall within the most general scope will further support and strengthen particular aspects of the bigger picture.
Patent expertise at Integrity IP is well aligned with this view of the corporate IP package. We will consider carefully your business objectives and the innovations you have created to devise that which will protect your future commercial interests in the most efficient ways. While it is easy to apply for a patent on every possible innovation, it is another matter entirely to carefully select those which can maximize returns thus avoiding unnecessary expense which can be considerable.
Patent Due Diligence
When an investor participates in a typical start-up project, the investment is not only directed to the management and their visions, but also the know-how, innovations, and invention. An investment due diligence effort should include an examination of existing patents as well as further appraisals of what intellectual property may exist uncovered, and the potential to make that into tangible assets. This quantification of IP value is sometimes included in a due diligence study in support of a financing event
At Integrity IP, we will work with you to plan a study and review of intellectual property assets. We can prepare a report regarding the state of the portfolio as well as the state intellectual property which exists but is not yet fully developed in a patent portfolio. Further, we can provide good and reliable estimates on the level of effort that would be required to bring those innovations into the current patent portfolio. These quantifications can be then used to more perfectly support a fair corporate valuation.
Patent Application / Prosecution
Integrity IP is primarily a 'patent prosecution' law firm. Patent prosecution is primarily concerned with the practice and procedure which starts at the moment of conception of a novel idea and ends with the grant of a patent. Patent prosecution includes activity such as patentability opinions, patent searching, patent application writing, patent examination defense, and patent application administration, among others. Further details about a few of the most important of these follow.
From initial conception, and invention follows an 'invention lifetime'. In a first most important step, an inventor describes the invention in an 'invention disclosure document'. In many cases, it is difficult to efficiently produce an invention disclosure document. While those highly skilled in their field easily describe their ideas in general, a patent disclosure demands a certain format and content. It is not plane nor straightforward what information is required for a good invention disclosure and many find it at least cumbersome and often exceedingly boring to write invention disclosures.
For this reason, integrity intellectual property offers a special services with attention to producing an invention disclosure as a collective effort. In face-to-face meeting(s) all pertinent questions can be visited and reviewed. This question/answer format makes it easy and indeed greatly accelerates the process of utilizing a highly effective and detailed description of the invention in a format most compatible with producing a patent application. This extra effort to step pays off in the long term as the resulting patent will reflect the greater understanding at the earliest stage.
A most critical part of any patent strategy includes very careful preparation of a patent application. An applicant for a patent is allowed to describe the invention with any words one chooses; thereafter the invention will be strictly limited to the meaning of those chosen words. Therefore, it is critical to choose every word with great care and assure all possible versions are included. If one says element A is coupled to element B by a screw, then screw it is. Competitors who weld or glue A to B do not infringe. Therefore, it is better to say "A is affixed to B". "Affixed" includes the screw as well as a wealth and blue adhesives. In this regard alone, a patent application can be a far broader than one with just a few words out of place. The art of patent application preparation includes tediously choosing words to impart a broadest possible meaning.
Patent prosecution refers to the processes and actions which are taken up from the filing of a patent application to the patent grant. Once a patent application is prepared and filed in the United States patent and trademark office, it is subject to examination.
Patent examination is a rigorous process most curiously characterized as an adversarial process. That is, it is the duty of the examiner to build as strong of a case against patentability as she can. In opposition, the applicant must denounce the examiner's position and provide argument in favor of patentability. If all goes well, the end result will be agreement between the examiner and applicant and finally a patent grant. An inventor should not be surprised when an examiner returns a first examination with substantial rejections -- this is normal.
In some cases, several round trips of examinations/response will occur before any "final action" is issued. In these cases, which sometimes involve argument around complex issues of law, for example "anticipation", and "obviousness", substantial effort to may be needed to get the application and the examiner's opinion into best condition for allowance. As such an applicant should plan to incur significant costs after the patent application is filed -- but these usually arrive 12 or more months after the initial filing.
Once a patent grants, a few important tasks remain. Integrity IP can help you bring about an effective plan to pay maintenance fees, monitor infringement possibilities, and further protect additional advances via continuation practice. When your patent grants, there is still work to be done to make the most of it.
While a 'patent application' may seem to be a highly discrete unit, indeed inventions typically 'spill-over' into several related applications. Even in the same application, claims are dynamic and may be changed in time to more perfectly specify the true nature of the invention with precision. In some cases, additional claims are pursued under separate cover in a "continuation" type application. When claims are grouped together in view of some common relationship, it is sometimes preferable, for example when patentability issues might apply to one group but not another, then these claims may be better pursued in a separate application -- and may indeed have a separate examiner, and certainly separate arguments for and against patentability. It is normal course to have several patents finally issue from the identical patent disclosure. This is why you can often find to issued patents with the same title, same description, but different patent number and different claims.
In addition, sometimes new inventive material is added to an existing specification to give rise to a "continuation in part" type application. A continuation in part application may have claims drawn to both previously disclosed material, the newly disclosed material, or even to combinations thereof.
In some cases, an examiner may opine a single application to include two distinct inventions. In this case, the examiner may suggest a divisional application where one (or more) separate applications be pursued for each distinct invention.
Patent Appeal Specialist
It is sometimes the case that an Examiner stands on his final position which is not well supported in law. In these cases, the USPTO has an exceptionally good system to provide a second look. The Board of Appeals allows applicants very comprehensive review of decisions by examiners. At Integrity IP, we have considerable experience and a very good success rate of wins on appeal.
Our solid background and very careful preparation of the file history during prosecution provides ample basis from which the appeal board will be able to reverse a stubborn examiner's position. We take every step at an early date to establish the firmest grounds from which such an appeal may rely. In this way, you are assured to not meet a negative patent result due to an unfair or unknowledgeable patent examiner. The appeal board will provide a final and true decision regarding patentability.
Patent re-examination has been a very useful tool established to improve our patent system by invalidating patents which are not properly entitled grant. Sometimes a patent examiner fails to do a perfect job and a patent improperly issues despite the existence of important related matter. In these cases, any person may bring the office's attention to prior art which existed before the filing date of the patent and ask for a re-examination. Where your competitors are asserting patents which you believe are not warranted, you can seek reexamination to cause another critical look at the patentability question. It is even permissible in some circumstances to remain anonymous while invoking this procedure.
Integrity IP can represent you in a patent reexamination process tabled against your competitor's patents. Please entrust us to search for and find art from which a re-examination may be based. We will then develop appropriate argument and submit the request to the USPTO. If there is a substantial new question of patentability, then the patent office will declare and conduct a new examination. In this way, we can keep the number of unfair and bogus patents at a minimum and further reduce patent litigation expense for everyone.
Post Grant Review
Similar to re-examination proceedings, a post grant review may also be brought against any patent which you believe to be improperly granted based upon patent law - other than patentability issues in view of prior art. Up to 9 months after a patent is granted, any person may petition the commissioner of patents to open a post grant review to reconsider evidence the patent does not meet requirements of law.
If you would like to bring a post grant review action against an issued patent, we invite you to contact us today in this regard. We are staying very closely abreast of this and all new provisions of the America Invents Act so that we may better serve your entire patent portfolio and strategy needs and objectives.
Patent Education Services
Integrity IP has invested considerably in providing good patent information to our clients. We continue to develop materials which better describe those patent processes and procedures which can be used to place our clients are further advantage. Please don't hesitate to ask when you have questions about any particular area of patent law. If we cannot provide a full and immediate answer, we know where to find that information and we are happy to get it for you. Please just let us know what concerns you.
While patent searching is sometimes little more than an insurance against spending effort in an area where the art is broad and well developed, it can also lead to important distinctions and clues to best position a new innovation. Therefore, in many cases a patent searching program is brought forth to form the foundation from which a patent application is drawn - thus providing many clear distinguishing elements. In all cases, an inventor is advised to have a clear picture of what lies before him in his field so that he can better explain that which he considers novel in his approach.
As part of our professional duty to provide legal services to those who cannot afford them at market prices, we have instituted a program to help young inventors and scientists by providing them patent prosecution services without charge. Where a clever and deserving student makes her case regarding an important invention and lack of ability to pay, we will endeavor to make possible a patent prosecution package suitable for protecting the invention. Please contact us in this regard if you believe you qualify.