World Energy Systems, Inc. – Patent Portfolio Development
Patterson + Sheridan has secured numerous patents for World Energy Systems, Inc., a developer of enhanced oil & gas recovery technologies. During this process, we developed an in-depth knowledge of the company’s key technologies, markets, and competitive landscape and came to understand its business goals, including the company’s long-term plan to secure a major private funding partner.
Then, we proactively worked with World Energy Systems, Inc., to develop a robust patent strategy that includes identifying and developing key technologies, obtaining domestic and international protection of these key technologies, and avoiding third-party patent disputes. The portfolio now comprises numerous patents and pending patent applications in countries throughout the world. World Energy Systems, Inc. has also secured a key business relationship for obtaining potential funding partners.
Using Subject-Matter Eligibility as a Sword and Shield When Protecting Clients’ IP
Patent law is constantly evolving, due in large part to subject-matter eligibility. The latest Supreme Court decision on this subject, known as the “Alice” case (Alice Corp v CLS Bank), held that subject-matter eligibility for claims directed to abstract ideas is based on a two-part test:
- First: determine if the claims are directed to an abstract idea or general principle.
- Second: if so, evaluate all claim elements individually, and in combination, to determine if the claims include an inventive concept sufficient to ensure that the patent in practice amounts to “significantly more” than a patent upon the abstract idea itself.
As this area of patent law remains fluid, patent examiners are actively (and inconsistently) using subject-matter eligibility to examine applications. That’s where our vast experience on both sides of the IP process — preparation and prosecution and litigation — becomes a competitive advantage for our clients in industries ranging from computers, the internet, biotechnology, and oil and gas.
Our team has a deep understanding of the level of detail required to ensure a claim is valid when analyzed under the two-part subject-matter eligibility test — even if what we receive from the clients is a high-level description of the invention. We collaborate and dig deep to deliver a more holistic view of our clients’ inventions on the front end, and have developed an arsenal of strategies when drafting applications, including arguments and amendments should a rejection arise.
We’ve helped many of our clients address this issue for years, and their continued business is a testament to our track record in drafting patent applications that can withstand stringent and ever-changing subject-matter eligibility requirements.
Shutting down a patent troll before a costly trial
Building on our experience in drafting solid applications, we also leverage subject-matter eligibility knowledge to defend clients from frivolous infringement claims.
For example, our team represented one of the oil industry’s largest players as lead defense counsel in a multi-party infringement suit brought by a patent troll. Working alongside 12 other firms to represent more than 20 defendants, our deep understanding of subject-matter eligibility was brought to bear against the plaintiff’s broad claim related to “controlling a device over a network.”
Arguing the broadness of the claim and demonstrating that many everyday activities would infringe the plaintiff’s patent — from printing to a network printer to uploading photos to social media sites — our team successfully leveraged the plaintiff to voluntarily dismiss the case at the pleading stage, saving our client and the other defendants from a costly trial.
Strategic Patent Reviews Help an Oilfield Products Company Cut Costs and Streamline Portfolio
It’s not uncommon for a company to have a sizeable patent portfolio but not have an in-house intellectual property attorney. This was the case for one international oilfield products company that serves various sectors of the oil and natural gas industry. We helped the company cut costs and streamline its portfolio through strategic organization of its various patents. Here’s how we did it.
Managing a patchwork portfolio amid rapid growth and acquisitions
This particular company had grown quickly by acquiring a number of smaller tool companies — and its patent portfolio had grown with it. Many issues had to be addressed on a case-by-case basis as the company inherited numerous domestic and international patents that were often managed in different ways by the acquired company. Among some of the issues: critically analyzing how these new patents fit into their portfolio overall, or if older patents were still relevant as technology and the industry evolved.
For a fast-growing company, having a clear-cut strategy and structure for reviewing and maintaining its portfolio is paramount. A rapidly growing portfolio can become costly very quickly, especially when dealing with international patents.
Assess and organize: Creating a more efficient, streamlined patent portfolio
Our team helped the oilfield products company audit and restructure its portfolio by organizing its patents according to the company’s expanding and evolving product lines. We then partnered with their team to assign decision makers for each corresponding business group and establish quarterly patent committee review meetings.
The initial meeting of each group focused on educating the group about its breadth of patents and discussing next steps for each, such as:
- Should we maintain this patent?
- Do we need to pursue additional coverage?
- Should we abandon this patent because it’s no longer relevant?
- Are you aware of any third parties infringing on this patent?
Future meetings included examining any newly developed technologies or newly acquired patents to determine how those fit into the company’s portfolio.
Stronger IP protection and strategy
The biggest tangible result for our client was establishing a clear IP strategy, which resulted in a targeted, robust portfolio managed within an established budget that led to significant cost savings. Streamlining its portfolio also allowed the company to better identify potential infringements by third parties. Thanks to this new process, the company’s technologies and the innovative ideas of its engineers are now more protected than ever.