Carleton Clauss, Partner

Case Studies

​Strategic Approach Enables Client to Dramatically Increase Annual Patent Filings

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Our clients’ patent filing expectations change each year. Sometimes, they can change dramatically in response to product releases, mergers, acquisitions and the like. Recently, a client drastically increased its annual filing target in two key technological areas and turned to us to achieve its goal.

Our plan included leveraging two of the firm’s offices located close to the client’s site and identifying a select team of six attorneys well-versed in the client’s technology and procedures.

Our hand-picked team of attorneys converged on the client’s site for multi-day visits with inventors to fully develop filing strategies based on existing invention disclosure documents. In addition, our attorneys conducted extensive mining sessions with technology group leaders to identify additional patentable subject matter in key technological areas. By using this two-prong approach, we were able to rapidly expand the client’s patent portfolio in the key areas to accomplish its strategic goals. 

How we helped a tech company protect a new revenue stream with a design patent

A Fortune 100 technology company was preparing to release a new wireless access point (WAP), and wanted to ensure they had filed patent applications that covered the various improvements over the state-of-the-art product before its launch deadline. Our lawyers worked with the development engineers to mine more than a dozen applications, but the engineers also wanted to patent an expansion interface that would allow users to customize the WAP by plugging in additional expansion modules that could include additional antennas, memory or power supplies.

The company wanted to prevent competitors from selling their own expansion modules for our client’s new WAP, but using expansion modules for customizing a computing system is a widespread practice — securing a utility patent on this general idea would be difficult. How could we legally protect this revenue stream?

Our creative solution was to seek a design patent for the expansion interface. While the interface itself is functional, its design is ornamental. If a competitor sold an expansion module to plug into the WAP’s unique interface, they would infringe the design patent.

The client liked our approach, and we successfully filed the utility and design applications for the new product in time for its launch. Not only was the company able to protect its intellectual property, but our strategy gave them the exclusive ability to sell expansion modules for the new WAP.