PATENT STRATEGIES FOR GROWING BUSINESSES
Are you developing new products or solving problems in a new way? Developing and maintaining a strategic patent portfolio is critical to the growth and survival of many companies. Patent portfolios are often the driving force behind venture capital investment, mergers and acquisitions, and strategic collaborations. A well developed patent portfolio addresses both near term and long term business objectives. Patents can help:
- PREVENT competitors from copying your product,
- GENERATE revenue by licensing the patent to others, and
- RAISE investment.
Since patent rights are granted to the FIRST inventor to file for a patent, inventors should move quickly to secure a priority date to the invention by filing a patent application. Waiting to act risks losing patent rights!
Once a patent application filed, the invention is considered "patent pending". The Patentee's filed patent application will become prior art against later filed patent applications by others. Not sure how to start? Below we provide our 3 Steps to Patent Pending approach for securing a prority date for inventions.
3 Steps to Patent Pending TM
Invention Disclosure Report
Based on your area of technology, we will assemble a Patent Team, which includes a senior patent attorney, to help you through the entire process. Your Patent Team will conduct an Inventor Interview to discuss the problem solved by your invention and how your invention solves the problem. We will also discuss any goals you wish to achieve. This interview can be in person or over the phone. Our Patent Team will then generate an Invention Disclosure Report summarizing the essential and optional features of your invention. You'll receive a copy for any further comment or changes.
This Invention Disclosure Report will be the preliminary guideline for a patent search and provides the basis upon which the patent application will be drafted. Therefore, any materials you have should be forwarded to the Patent Team.
Your Patent Team will provide the relevant details from your Invention Disclosure Report to a professional patent search firm experienced with your technology. A patentability search will be performed to identify the state of the art.
You will receive a complete copy of the Patent Search, which includes citations to specific passages that explain the relevancy of the identified document. Your Patent Attorney will review the search results, revisit the Invention Disclosure Report, and suggest a course of action for protecting your invention.
File a Patent Application
Your Patent Attorney will likely have a pre-application meeting to discuss the suggested course of action for protecting your invention and any concerns you may have. At this time, logistics will also be discussed, which includes the preparation of patent drawings and estimated project timelines.
First, you will then receive a set of patent claims. Patent claims define the property right being pursued. After a final claim set is agreed upon, the remaining patent specification and drawings are prepared. The patent application is filed together with the references identified in the patent search and any other references that might be relevant. Once the patent application is filed the invention as "patent pending"!
Our firm will monitor the progress of the patent applicatioin through the US Patent and Trademark Office and will be the agent through which all communciations are handled.
Please fill out the form below to request a patent consultation with a patent attorney.
Wagenknecht provides patentability searches to identify patentable components of inventions and freedom to operate (FTO) searches to identify patents that may block the launch of commercial products. By identifying competitor's patents early, strategies can be developed to carve around existing patents and to make needed changes to avoid infringement.Read More
US & International Patent Applications
A patent provides a right to exclude others from making, using, selling, offering for sale, and importing inventions. Wagenknecht patent attorneys advise clients on US and international patent application strategies and draft patent applications consistent with business objectives. During patent examination, Wagenknecht patent attorneys quickly identify patent scope acceptable by the US Patent Office, then depending on business objectives and constraints, can either quickly secure the patent or work with the patent examiner to expand coverage.Read More
Managing International Patent Portfolios
Extending patent protection beyond the US will inevitably involve working with law firms in foreign countries. Wagenknecht maintains close working relationships with patent specialists with different technical expertise throughout Europe, Canada, Japan, China, Hong Kong, Australia, Mexico, Brazil and more to oversee cost efficient patent services. Wagenknecht also oversees global maintenance and renewal requirements to ensure patents remain in force.Read More
Patent Valuation & Monetization
It's difficult to monetize what you cannot value. When seeking investment, effective patent valuation can increase corporate value. Wagenknecht's comprehensive patent valuation analysis includes factors such as commercial value, assertion value, blocking value, cross-licensing value, reputational value as well as patent invalidity risks and design around risks to determine the value of patents and other intellectual property. Patent valuation reports are designed for corporate executives and can play a vital role in mergers and acquisitions. Wagenknecht patent evaluation reports are available for start-ups and established corporations.Read More
Transferring Patent Rights
Patent rights can be sold using an assignment or can be leased or borrowed by way of a license. Licenses can be exclusive to one licensee or can be nonexclusive and therefore generate royalties from multiple licensees. Wagenknecht not only drafts license agreements but also conducts patent valuation and monetization analysis to help determine a fair and reasonable royalty.Read More
Before investing in tooling, manufacturing and packaging, a product clearance report can provide additional insurance against potential patent infringement. Our product clearance report includes a patent search, freedom to operate (FTO) analysis and non-infringement opinions if needed.Read More