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Building a Patent Portfolio for Mechanical Devices
Client's Business Objective:
The client, a manufacturer of mechanical seals used for sealing fluids in a mechanical housing, sought to obtain a series of patents to maintain its market-leading position.
The Challenge:
There are a number of makers of mechanical seals, and due to the numerous patents in this area, issues of patentability are often raised. The client’s groundbreaking design of “split” mechanical seals and follow-on improvements, which allows service people to replace seals or service machines without taking them apart, was particularly coveted and had to be protected.
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What We Did:
Our team did a thorough cost-benefit analysis and an assessment of potential return on investment for various possible patent applications. We visited with the client’s engineers and participated in corporate patent strategy meetings in order to shape a patent prosecution strategy that would limit potential objections and rejections by the U.S. Patent and Trademark Office. Then we managed the process to protect the most important innovations as quickly as possible.
Results:
We developed a patent portfolio that protected the mechanical seal technology from attack. The client also reached a favorable settlement with one competitor that had developed a similar seal.
Key Takeaways:
In order to write patent claims covering key aspects of the invention, patent attorneys need to understand how the products are actually derived from the theoretical innovations. Look for lawyers who know how to communicate with engineers, designers, and executives and who can protect the critical competitive advantages of the products.
Patent Prosecution for Fuel Cell Technology
Client's Business Objective:
The client, a Japan-based automobile manufacturer, sought U.S. patent protection for its state-of-the-art hydrogen fuel cell technology, which uses oxygen and hydrogen ions to create clean power, with pure water as a waste product.
The Challenge:
The legal team had to work quickly but carefully and thoroughly. Fuel cell technology is still evolving, and there are many competitors in the field working on new fuel cell devices. Furthermore, those seeking to occupy this competitive space have filed many patents, necessitating a careful assessment and planning of all patent filings and claims.
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What We Did:
Our legal team worked closely with the client and filed hundreds of patent applications. Utilizing creative prosecution techniques, we worked closely with Patent and Trademark Office examiners to address their customary questions and objections.
Results:
We successfully prosecuted several hundred patents in a five-year period, securing comprehensive patent protection for the client’s fuel cell technology.
Key Takeaways:
When business objectives require swift action and careful patent positioning, it pays to have a legal team that is experienced in dealing with the U.S. Patent and Trademark Office, has a practical sense of how to manage patent prosecutions quickly and efficiently, and can chart a course for likely success.
Patenting Health Care Management Devices on a Limited Budget
Client's Business Objective:
The client, a maker of indoor positioning systems that chart human traffic flow and locate critical assets that are transported between rooms inside large hospitals, wanted to develop patent protection for its unique inventions.
The Challenge:
The client was going through a funding process that necessarily limited the budget for patent filings, and there was a business need to secure these filings as quickly as possible.
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What We Did:
Our legal team did a cost-benefit analysis on which patent claims would offer the greatest protection and return on investment for the client. Then we pursued those patent claims before the U.S. Patent and Trademark Office. We also devised an alternative fee arrangement that worked within client’s budget.
Results:
The client’s competitive position was secured and the patent work was accomplished within budget. With a strong patent portfolio, the client was able to secure additional rounds of funding.
Key Takeaways:
The ability to practically assess and devise alternative means of achieving patent objectives that are aligned with business objectives can pay dividends.
Quickly Securing Medical Device Patents to Facilitate Funding
Client's Business Objective:
The client, a start-up medical device company, had designed a medical device that works in conjunction with ventilators to stimulate effective expectoration and coughing for patients with various respiratory issues. The company needed to secure a U.S. patent on the device to get its next round of funding.
The Challenge:
The client had been unable to move from patent application to allowance, despite sustained efforts by its previous counsel over several years. Furthermore, the client needed to obtain the patent quickly in order to get its funding.
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What We Did:
We studied the history of actions by the Patent and Trademark Office on similar inventions, and arranged for the examiner to visit in person with the inventor of the device. The inventor provided a demonstration with explanations of the novel, non-obvious nature of the device, and we explained how applicable law supported a patent grant.
Results:
In just eight months we succeeded in procuring a patent, which facilitated our client’s next round of funding and its progress from prototype to product development ready for regulatory approval.
Key Takeaways:
When companies need to obtain a patent allowance quickly, it pays to invest in a personal visit to the U.S. Patent and Trademark Office after careful preparation and study of legal precedents.
Representing David v. Goliath in Out-licening Commercial Partnerships
Client's Business Objective:
The client, an individual inventor who developed magnetic resonance imaging (MRI) technology, sought to find a commercial partner that could develop and sell machines using the technology.
The Challenge:
The best prospective licensor, a major manufacturer, needed to move quickly in order to successfully commercialize this technology. Furthermore, the licensor argued that the inventor’s discovery would be a relatively minor part of any next-generation MRI production.
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What We Did:
Our legal team quickly documented the uniqueness and utility of the inventor’s contribution, demonstrating that significant royalties were typical for similar inventions. We also used the licensor’s need to move quickly to our advantage, persuading the inventor to take a firm stand in negotiations while politely advancing ideas for reaching the objectives of both parties.
Results:
In a matter of weeks, our client obtained an out-license agreement with a successful and credible manufacturer that was potentially worth several million dollars (much more than the licensor initially offered).
Key Takeaways:
When dealing with a large and sophisticated party on the other side of the table, it pays to have experienced lawyers who understand the thought processes and needs of major institutions.
Securing Patent Protections for a Medical Device
Client's Business Objective:
The client, which had invented a handheld laser device that noninvasively reduces and eliminates subcutaneous fat deposits associated with cellulite, sought to develop a patent portfolio protecting this product.
The Challenge:
It was necessary to conduct a landscape review of competitors’ positions and carve out a patent position for a new kind of product. This particular area was prone to litigation, and the start-up client could not afford a large patent prosecution or litigation budget.
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What We Did:
Our legal team, which had conducted due diligence in connection with client financing, performed a critical but measured analysis of competitive portfolios and identified potential land mines in the patent process. We also worked closely with the client’s design team to make modifications to the design, enabling the drafting of patentable claims. In later development of the product, as the client looked to additional rounds of venture financing, we assisted the design team in executing a number of design modifications that improved the product’s operation and further protected it from competitive attacks.
Results:
Within a relatively short time, the client secured patent coverage for the product and began distributing it to health spas and other customers, receiving accolades for the product’s performance and results.
Key Takeaways:
When counsel work closely with designers and engineers, it can help in expediting the patent application process and minimizing bumps along the way. Furthermore, in a crowded technology field, it is extremely valuable to investigate the patent landscape early in the design process, before forging ahead with a product that cannot be protected with patents and may be in danger of infringing competitor rights.
Securing Patents Involving Devices and Algorithms
Client's Business Objective:
The client, an international manufacturer of medical imaging devices for in utero observations of tissue abnormalities, sought to build out its international patent portfolio with U.S. patent protections.
The Challenge:
The client’s next round of funding was contingent on acquisition of U.S. patents, and there was a narrow window of opportunity to obtain the funding. Furthermore, the law had recently changed making patent procurement more difficult.
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What We Did:
Our legal team brought the inventor and a member of the client's board of directors to the Patent and Trademark Office for a personal explanation about the development of the device. We demonstrated how the inventor combined unique algorithms with imaging technologies to develop a device for predicting which changes in cellular tissue were likely to be cancerous or pre-cancerous. Our team also produced extensive clinical data and peer-reviewed publications to overcome new and higher hurdles to patent allowance.
Results:
The client received a notice of patent allowance within six months, paving the way for another round of funding and expansion into U.S. markets.
Key Takeaways:
Work with patent counsel to carefully study of legal precedents and prepare for meetings with Patent and Trademark Office examiners.
