Patents

Walls begin with the laying of a single “brick.”
For patent walls, your “ideas” are those bricks. Whether arising from a doctoral thesis or a single note jotted onto a napkin, at WPIP, we turn your “ideas” into patents. [1]

Thick walls stand the tests of time, thin walls don’t.
This principle applies to patents too.  Walls built in-depth, with multiple patents pursuing multiple ideas covering your innovations, often better withstand the test of time.

Yet, thick patent walls are often expensive.
At WPIP, our Multi-Patent Discount Program™ enables our clients to pursue thick patent walls efficiently.

Efficient Preparation = Smart Business

Industries and Technologies in which we practice include, amongst others:
Aerospace,  Alternative Energy, Business Methods, Computer Hardware,  Consumer Products, Electronics,  Energy,  Environmental, Information Technologies,  Internet, Manufacturing, Medical Devices, Mobile Applications, Mobile Devices, Semiconductors,  Software, Telecommunications and Transportation.

Mill worked bricks for physical walls – that is often fine.
For Patent Walls, each “brick” must be unique. 

Not only must each patent claim be uniquely different (with each claim covering a different invention), but, ideally each claim should be specifically tailored to fit a business goal or legal need.

Yet, the ability to craft and convince patent examiners why and how a patent claim fits into both a vast and ever expanding world of prior art references, while also furthering a client’s business goals and legal needs, often arises only with experience.  We call this ability, Effective Prosecution.

At WPIP, our client’s claims are crafted and prosecuted by experienced practitioners.  And, unlike many firms, where “effective prosecution”  and “efficient prosecution” are often in conflict, our low operating costs enable us to pass our savings on to our clients in the form of low, alternative and even fixed fee engagements [2]  – thereby providing both Efficient Preparation and Effective Prosecution.

Efficient Preparation + Effective Prosecution = Smart Business

Rapid Technology Δ ≠ Rapid Patent Δ.

Tomorrow’s technology is built on today’s technology. In the patent context, where patent rights may exist for at least 20 years, a great patent strategy recognizes this fundamental truth and seeks, through efficient preparation and effective prosecution, a portfolio of patent walls that fence in key technologies while also anticipating and covering the direction of future technologies.  Some call this strategizing.  At WPIP, we call this “Responsive Patenting” –  building Patent Walls that can withstand and adapt to market, legal and regulatory changes.

At WPIP, we provide our clients Responsive Patenting by seeking to know and understand their business, their industry and their technologies – where they have been, where they are and where they seek to be.  This holistic approach to strategic counseling enables us to focus not only on the matter at-hand, such as a single patent or a single patent claim, but, also on the building of Responsive Patent Walls.

For example, WPIP’s Multi-Patent Discount Program™ enables our clients to efficiently pursue patent pickets while realizing ever greater reductions in legal fees.

Effective + Efficient + Response Patenting = Smart Business

A wall built too late or across an unused path is often worthless.

Timely building and knowing where to build a patent wall is critical to a patent program’s success. Build the wall too late – prior art may knock you out. Build a shallow wall or in the wrong place – technology may easily bypass or design-around you.

In the U.S. today, the first person to file for a patent gets to both build the wall and pick where the wall is best built.  As such, the capturing and patenting of an employee’s ideas simply cannot wait.

To be effective, efficient and responsive, a patent program should:  address where the technology is going (e.g., is there a product roadmap?); capture  employee’s ideas for accomplishing such journey;  assess how such ideas fit into a worldwide patent strategy; and execute on the strategy both efficiently (i.e., within a budget), effectively (i.e., timely) and responsively (i.e., proactively).

At WPIP, we have years of experience helping our clients build and execute efficient, effective and responsive patent programs.  Whether it be designing an inventor incentive program, creating forms and processes for capturing employee invention submissions, training employees on patents and other IP, harvesting inventions, conducting invention disclosure review boards, monitoring and tracking patent efforts, managing multi-million dollar budgets, or otherwise, we have practically done it all.

Responsive Patent Programs = Smart Business

Two sets of eyes are better than one! 

 With WPIP, our eyes can be your second set of eyes.

Great lawyers have ultimate faith in their abilities and love to fight and win at all costs.  We know this first-hand.  For years, we have been in the trenches fighting epic patent battles with and against many of today’s top legal minds and patent assertion entities.

Simply put, patent litigation is difficult, time consuming, expensive and complex.  Unfortunately, patent plaintiffs and defendants are often left making decisions in the dark, having to often rely on only the singular viewpoint of their litigation counsel.  Many uncertainties and unanswered questions arise, such as:

How is the battle going?
Have we found the best prior art or argument?
Are there positions we have overlooked or on which we over rely?
Is the case today what we thought it was worth yesterday?
Should I settle now or later?

Yet, such complexities and uncertainties are not unique in the realm of human endeavors.   Often one’s understanding of  the complexities of medicine, auto-mechanics, taxes, and other fields are not blindly accepted or based on a single opinion.   Instead, secondary opinions are routinely sought.  We believe that as is the case there, so is the case here. A party to a patent litigations need not remain left out in the dark – a second look, a second opinion by an unbiased, experienced patent litigator can and should be sought. At WPIP, we have the experience you should seek.

Second Eyes = Smart Business

Fight the battle on the field of your choice – before the PTAB.

Today, many issues regarding a patent’s validity are commonly decided by the experienced Administrative Patent Law Judges of the U.S. Patent Office’s Patent Trial and Appeal Board (PTAB).  The PTAB addresses both the patentability of applications for patent on appeal and the validity of issued patents in trials.  PTAB trial options include Inter Partes Reviews (IPRs), Post-Grant Reviews (PGRs), Covered Business Method (CBM) reviews and Derivation proceedings (PTAB Reviews).

In existence since September 2012, the PTAB has proven to be an effective mechanism for alleged patent infringers to smash through other’s patent walls.  First, contested patent claims are interpreted under the broadest reasonable construction standard. Second, PTAB proceedings are typically resolved in less than 18 months. And, third, claim amendments are often difficult to obtain.  Yet, PTAB trials are not risk free, for example, they must be timely brought by the real parties in interest and any prior art references a defendant could have presented to the PTAB must be presented – such art being precluded from later reliance in any other judicial proceedings.

At WPIP, we advise and assist our clients with all aspects of PTAB Appeals and PTAB Reviews, including providing independent assessments of whether the “best” prior art has been found and is to be presented to the PTAB.

“The go-between wears out a thousand sandals.”  Japanese Proverb

At WPIP, we advise our clients to approach patent and trademark license negotiations as if one were preparing for a marathon.  In our experience, unless trivial amounts are at issue, negotiations require preparation and persistence.

First, the client should know what is at stake.  Is it millions of dollars, the continuation of a product or service, a brand identity?  Or is it something that can be easily discarded?

Second, what leverage can the client bring to the negotiating  table?  What are the relative strengths, weaknesses and defenses?  What are the possible counter-claims?

Third, clients should be willing to walk-away.  A bad deal is often worse than a litigation.

Last, some give and some take must be expected if a deal is ever to be done.  Given that most patent and trademark matters are settled short of trial, the end-game / the end-result acceptable to the client should be known as early in the dispute as is possible.  Whether your strategy is to fight to the end, or seek to minimize corporate disruptions for as little pain as possible, knowing your approach at an early stage of the dispute is often highly advantageous. It will inform your preparation and response options.

At WPIP, we have led licensing negotiations and provided legal counsel and support in numerous patent and trademark assertions.

“Diligence is the mother of good luck.”  Benjamin Franklin

As Benjamin Franklin so aptly noted, successful mergers and acquisitions (M&A) do not arise from luck, but from diligence.

At WPIP, we have years of examining the IP portfolios of target companies. Based on this learned experience, our recommended approach involves three steps.

First, determine what diligence is “due.”  Is the IP of the target acquisition a “must-have”,  is acquiring the IP the driving force for the transaction?  Or, is the IP perhaps a perceived liability that can be avoided through an acquisition? The basis for the transaction and the role the IP provides in such transaction should inform the scope and resources utilized to provide the diligence.

Second, once the diligence due is known, commensurate therewith fact investigation should occur.  The fact investigation may range from clearance (e.g., freedom-to-operate and design-around), to validity, enforceability, ownership, scope and other considerations.

Third, an analysis of the facts uncovered should be provided.  Such analysis may involve SWOT (strength, weakness, opportunity and threats) or simple risks and benefits analysis.

Last, a due diligence investigation should empower the acquiring party, assuming a transaction is completed, to have a checklist and knowledge of the assets going forward. This knowledge can further and enhance the client’ goal of building efficient, effective and responsive IP walls.