Sunstein’s Approach to Patent Representation and Patent Portfolio Development

Patents provide leverage. To do so, they must be attuned to your business and to the larger industry in which you participate. Sunstein can craft a patent strategy that advances the strategic goals of your business. Our patent work for technology-based clients involves these major activities:

  1. Identifying your business goals and areas of technology to be protected;
  2. Developing a patent strategy for protecting the technology in view of the your goals;
  3. Implementing the patent strategy and seeking meaningfully broad patent coverage when patent filings are made; and
  4. Managing your patent portfolio and reporting on the protection of the technology in the portfolio.

In addition, we often perform patent validity and infringement studies to help our clients assess transactional and market risks associated with technology transfers and product introductions. We also advise on the structure and terms of technology transfer arrangements, including the definition of the technology to be transferred, and the preparation of pertinent written documents.

Each of these activities is described in further detail below. We welcome the opportunity to meet with prospective clients to discuss their particular needs. If you are interested in discussing how Sunstein can assist you in connection with patent matters, please contact a member of our Patent Practice Group.

Identifying your business goals and the technology

Patent portfolio development takes into consideration the nature of the client’s business, the client’s competitive environment, and the business needs and goals of the client. These factors determine both the context in which the technology protection strategy must operate and the goals of such a strategy. Understanding the client’s business and the competitive environment helps us better assess the real-world value of the client’s inventions.

In honing the patent strategy, we meet regularly with a client team that typically includes marketing and business development personnel, as well as in-house counsel. These meetings provide an opportunity to review the patent portfolio on a systematic basis and to develop an agenda for expanding or refining the portfolio.

We often meet with technical personnel in order to identify areas of the client’s technology that should be the subject of patent applications or designated for other protective measures. Even where invention disclosure procedures have been implemented, it is common for technically creative personnel to either defer making appropriate disclosures, fail to recognize the availability of patent protection for inventions they consider unprotectable, or be unaware of the commercial potential of their work. Our meetings counteract these tendencies.

Developing a Strategy

Once the areas of technology have been identified, we assist our clients in tailoring a strategy for protecting their technology. This often-ignored step is of critical importance.

Although the strategy usually involves appropriate partitioning of the areas of innovation into specific inventions to be made the subject of patent applications, sometimes it is desirable to refrain from filing to protect an invention, unless the invention has been further developed or is about to be commercialized.

Additionally, foreign-filing considerations often affect the timing of filing of patent applications in the United States. For example, when a client has an ongoing development program in one area of technology, it may make sense to file an early United States provisional application to seek the first possible toehold for protecting such client’s innovations. However, before the first anniversary of this initial filing (when foreign filings must be made in order to obtain the benefit of the United States filing date), the client may be able to file an expanded United States application covering additional innovations since the initial filing, and then base its foreign filings on the expanded application rather than on the initial application. Such a strategy may enhance the opportunity for broad foreign coverage while maximizing the chances for significant and early domestic coverage.

When formulating a patent strategy, the business and technological objectives of our client are as important as the legal considerations. For instance, a client looking to license the technology will require a patent prosecution strategy different from that of a client seeking to prevent competitors from copying its technology. An elaborate foreign-filing strategy is worthless to a client whose budgetary constraints prohibit such expenditures. On the other hand, a client with only domestic product sales and no foreign sales ambitions might still benefit from foreign patent coverage if licensing of the technology or sale of the client’s business are reasonable prospects. Similarly, once the question is squarely posed, a client may decide that the commercial exploitation of a particular area of technology lies beyond its business mission and that it should concentrate its resources in protecting areas of technology closer to its core business. For some market-oriented clients, it is important to focus on developing a trademark portfolio in tandem with a patent portfolio. In each of these situations, we develop a budget for implementing a patent strategy that is consistent with our client’s business requirements.

Often, differing business requirements lead to differing patent strategies even where the legal and technological circumstances may appear to be similar. For example, one client having an invention in a technologically crowded field may decide that the dim prospect for broad patent coverage cannot justify the expense of preparation and prosecution of a patent application, whereas another client – perhaps with a desire to bring a new product into the marketplace – may decide that even relatively narrow patent coverage may give it a business edge over the competition.

Foreign Filing Strategy

The expense of pursuing foreign patents often makes it difficult to decide the countries in which to pursue protection. Some of this cost can be postponed by using the Patent Cooperation Treaty. A foreign filing strategy should consider the location and nature of potential licensees and potential defendants, and may focus on where an infringing product is likely to be made or where it is likely to be used. Any client considering filing patent applications abroad should pay strict attention to the applicable foreign filing deadlines, which are quite different from those in the United States. An aggressive foreign filing strategy for trademarks can sometimes be an effective complement to a foreign patent strategy.

In carrying out a foreign filing strategy, we typically make extensive use, where appropriate, of the Patent Cooperation Treaty (including Preliminary Examination under Chapter II when feasible) and the European Patent Convention, to delay and sometimes reduce the substantial expenses of filings overseas. Short-term savings, however, are not always in our clients’ best interests. For example, we have found that clients who file in a foreign country under the Patent Cooperation Treaty can afford the extra initial costs (some of which are recouped on a later filing in the European Patent Office) of having an international search conducted by the European Patent Office rather than by the United States Patent Office. This can present the advantage of locating prior art that otherwise might not turn up in prosecuting the corresponding domestic patent application until after issuance of the domestic patent.

Learning of this additional prior art in time to cite it to the United States Patent and Trademark Office can remove a basis for the subsequent invalidation by a court of key claims in the patent or for the assertion in licensing negotiations that the patent would not be considered valid by a competent court. Knowledge of the additional prior art can also provide an opportunity to refine or modify the foreign patent strategy before incurring the expense of “national phase” filings under the European Patent Convention or in individual foreign countries.

Implementing the Strategy

Once a patent strategy has been formulated, its implementation will depend in large part on the skill with which patent applications are prepared and prosecuted. Although it is often not difficult to obtain some patent coverage, there is nevertheless considerable challenge in obtaining meaningfully broad patent coverage. The scope of a patent is measured by the breadth of its claims, and consequently, we devote early and continuing attention to the scope of the claims in the application drafting process. While some individuals view a patent application as a technical disclosure to which claims have been added, we believe that the shape and wording of the claims affect the shape and wording of the technical description that forms a part of the application. We work to ensure therefore that the technical description not only is complete but also unfolds in a manner to suggest the importance of the subject matter of the invention as defined by the claims. This emphasis, which is maintained in prosecution of the patent application as well, has proven to be valuable in distinguishing the invention over the prior art and securing allowance of patent claims that are commensurate with the scope of the invention.

Managing the Patent Portfolio

As patent applications are filed and begin to mature into issued patents, it is important for our client to be able to track the status of its growing portfolio. One of the reasons patents are important is that a patent portfolio shows potential investors, customers, competitors and licensees that a business has taken steps to protect its investment in research and development. Indeed, without implementing some sort of intellectual property protection, a full return on a business’s investment in research and development will probably not be realized, as competitors can skip their own research and development costs and cut into the business’s profit margins.

Thus, a patent portfolio can be a prized property for a client and, like any valuable asset, should be carefully maintained. At Sunstein, we utilize sophisticated computer software to provide quick, meaningful reports to our clients of the status of all client inventions being handled by our office. Our reports can be generated in a variety of formats, but most commonly we use a “Docket Report” that charts essential data for each invention.

We use the patent portfolio listing as an essential tool in patent strategy meetings (described above) with heads of marketing business development, engineering and in-house legal department.

Patent Validity and Infringement Studies

The development and maintenance of a patent portfolio usually call for attention to potential licensing transactions in which technology is transferred either to our client (“licensing in”) or from our client (“licensing out”). Aside from the contractual and business issues in these types of transactions, important validity and infringement questions can arise. If our client is licensing out portions of its own patent portfolio, many, if not all, of the patent validity questions will generally have been addressed in one fashion or another in the course of prosecution of the patents. If our client is licensing in patents from a third party, however, and the payment of valuable consideration is involved, we will usually recommend that we conduct a study of the scope and validity of the patents involved. In this manner, our client, armed with additional knowledge of the legal and technical environment of the patents in question, can better assess the transactional risks and can often negotiate more favorable license terms.

Even in the absence of any specific licensing program, clients with a product orientation generally must address the risks that their products will be alleged to infringe patents held by third parties. In this connection, we work with our clients in identifying probable areas of risk and performing appropriate infringement studies. A client that is well prepared can often dramatically reduce the risks of patent infringement claims and lawsuits. Designing around a patent and obtaining a formal clearance opinion from a patent attorney are two ways of reducing the risk of a patent infringement claim. Sometimes, however, obtaining a license to the technology is the wisest course. If, despite such efforts, one becomes a party in a patent infringement suit, it is important to obtain counsel experienced in patent litigation. Sunstein has abundant experience both in defending and in bringing patent infringement suits.

Technology Transfer

When a technology transfer is in prospect, we commonly advise our client on the structure and terms for the transfer arrangement. Our experience in representing clients in general business, as well as intellectual property matters, affords us a broad perspective on the significance of the transfer to our client’s business goals. We can structure agreements that simultaneously involve transfers of restricted equity or debt securities, for example, and intellectual property rights, such as patents, trademarkscopyrights, and trade secrets. In almost all technology transfers, a critical question arises as to the definition of the technology being transferred, since what fits within the definition will be subject to transfer and what does not fit will not be transferred. The definition usually can be framed properly only on the basis of a detailed familiarity with the pertinent technology and with the status of its protection under the intellectual property laws. We are often called upon to prepare the operative agreements with respect to technology transfers. In some instances, such as when the agreements are being prepared by general counsel, we are asked to comment on the agreements and to prepare portions of the agreements defining the pertinent technology, the grant of license, and the intellectual property rights of the parties, as well as instruments of assignment where applicable.

Please contact an attorney in our Patent Practice Group if you are interested in exploring how we can assist you in connection with patent matters.