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.

An IP-driven approach to M&A: How we helped a Fortune 500 company seek out a strategic business partner

An IP-driven approach to M&A: How we helped a Fortune 500 company seek out a strategic business partner

A Fortune 500 global trading and investment company had an idea: a smart, internet-connected medical device for an underserved market. They were seeking a business partner with the technical know-how to develop the concept, and they turned to Patterson + Sheridan to help with their search.

The company knew our firm could help them accomplish two goals at once:

1. Identify potential partners — Rather than only targeting the obvious industries, our client needed help identifying companies in adjacent technologies that might have IP that could be repurposed to suit their needs, but they did not know how to find those companies. Thanks to Patterson + Sheridan’s breadth of work across a variety of industries, our science-savvy lawyers could think “outside the box,” broadening our search to cover several adjacent technologies that our client had not previously considered.

2. Analyze the risk landscape — By examining existing intellectual property surrounding the concept, our team could provide insight into what patents already exist and where, so that the company would not run afoul when bringing their own product to market.

Armed with the client’s desired vision and features for the smart device, the Patterson + Sheridan team conducted a global search, specifically targeting several countries identified as potentially viable markets for the product, while also performing an IP risk assessment along the way.

Our lawyers had to get creative, analyzing product sectors from medical devices for humans and animals to inkjet printers and more. After pouring through thousands of documents, we ranked the most viable candidates and presented the client with nearly two dozen companies possessing relevant intellectual property. (Several of the candidates would never have been identified if not for our extensive audit of published IP and patent portfolios.)

The result? Our client has since approached these companies to arrange exploratory meetings, and they’ve received numerous responses from both small and large businesses alike. Plus, they’re equipped with an IP risk analysis that will allow them to navigate the R&D process strategically moving forward.

At Patterson + Sheridan, we’re skilled lawyers with a knack for the hard sciences. We’re not just patent attorneys and litigators — we’re engineers and creative thinkers with backgrounds in chemistry, computer sciences, biotech and beyond. So what can our lawyers do for you?

Associated attorneys: Gero McClellan, Carleton Clauss

Associated practices: Consumer Products