Patent Preparation + Prosecution

Case Studies

U.S. Patent Applications for Foreign Clients and Law Firms

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Non-U.S. IP firms and clients want their patent applications filed in the U.S. for a competitive fee and without the monthly billing that so often accompanies U.S. practice. Under a new program, Patterson + Sheridan receives applications and files them for a one-time flat fee, plus government expenses. The single fee covers everything associated with a patent application up to the first substantive action by the United States Patent and Trademark Office. The program results in a more predictable cost model, dramatically reducing time keeping and accounting activity and resulting in a model that more closely fits European practice.

Virtual Patent Counsel for Disk-Drive Technology Company

At its peak, the disk drive industry had more than 50 companies, including major players such as IBM, Samsung, Hitachi, Toshiba and others. Today, however, only three firms remain.

We worked with the company from its initial start-up, serving as its virtual in-house patent counsel, developing its patent portfolio, and helping to broadly license its technology. As the industry faced brutal competition and the technology evolved, we worked closely with our client to ensure its patent strategy helped position it for success.

Virtual Patent Counsel for Small Motor Leader

Long before fluid dynamic bearings became the popular motor for hard drives, Patterson + Sheridan began working with a client with aims to enter the small motor technology industry. We helped the company negotiate a patent license agreement with an established industry player, conducted due diligence on other industry competitors, advised on design modifications to avoid patent infringement, and prepared and prosecuted numerous patents for the company, filing nearly all the basic patents in this important field. The once-fledgling company is now the pioneer in fluid dynamic bearings for small motors.

Pushing Back to Patent Critical MEMS Technology

Even the most well-executed patent applications can be rejected based on the perspective of the examiner who processes them. In this case, our high-profile MEMS client received a rejection from the patent office for a semiconductor technology critical to its business operations and competitive advantage. 

Feeling strongly about the strength of our client’s position, former USPTO patent examiner Steve VerSteeg used his experience to successfully navigate the situation. Taking a collaborative approach, we held conference calls to further understand the examiner’s concerns. When that didn’t prove successful, we recommended an appeal, with which the examiner would have to defend a position before the United States Patent and Trademark Office’s Patent Trial and Appeal Board.

In lieu of appearing before the board, the examiner allowed one claim. Fully prepared to appeal, we pushed for more claims and finally came to a resolution with the examiner. Combining a collaborative and aggressive approach, we obtained a patent that covered all claims in a matter of months, instead of having to appeal, which could have taken years before a decision was reached. 

Drafting and Filing Five Patent Applications in Five Days

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One of our large Fortune 500 clients came to us with a unique problem — a new product was shipping in a week and not a single patent had been prepared or filed for this invention. Our team quickly responded by traveling to the client’s office to collaborate with the inventors and in-house counsel. The technical expertise of our IP attorneys made it easy to get up to speed on the complexities of this unique technology and devise a patent strategy with a clear understanding of the client’s objectives.

Between the initial draft, review by inventors and in-house counsel and revisions, writing one patent application usually takes about two to three months and more than 20 hours. Our team tenaciously worked to complete five applications in less than one week. All five applications were turned into patents and since that time, foreign patents have also been filed. The product shipped on schedule and fully protected.

Closely Partnering with our Client Leads to Multiple Patent Applications and Earlier Filing Dates

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One of our clients, a Fortune 500 equipment manufacturing company, regularly conducts engineering design review sessions that include Patterson + Sheridan attorneys. The client includes us in these sessions to utilize not only our expertise in patent law, but also to increase our understanding of the client’s portfolio as well as the client’s relevant competitors. During the sessions, we capture many concepts that may include patentable subject matter based on our knowledge of the existing art. Additionally, we ask probing questions of the engineers to identify key, distinguishing features that are of potential patentable interest. Based on the discussion from the sessions, we then present to the client multiple patentable concepts with a perspective on how these concepts fit into a larger patent strategy, e.g., alignment with the client’s products and services, as blocking patents, etc. In some cases, the concepts are broadly disclosed in previously filed applications. Therefore, we propose amended, and in some cases divisional, claims to the client. In other cases, we recommend filing new applications.

Our participation results in filing multiple patent applications covering the ideas generated in the brainstorming session. We are able to save money for the client and take advantage of earlier filing dates to block competitors using previously filed applications.

​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. 

Technical Knowledge, Team Approach Key in Managing Complex Patent Portfolio Transactions

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In today’s deal-driven technology sector, a transaction’s value rests heavily in a target’s active patent portfolio. Often, the portfolio is the competitive edge the acquiring company is after in the first place. With so much at stake, companies rely on patent counsel with both legal and technical backgrounds to properly assess and manage the transfer of these crucial IP assets.

Longstanding client relationship equals in-depth technical knowledge

For more than eight years, Patterson + Sheridan has represented a world leader in mobile wireless technology with respect to its complex and active patent portfolio. Due to this longstanding relationship, our attorneys have a deep understanding of the underlying technology.

Thus, when the client decided to undergo a series of transactions that involved complex active patent portfolios, our main company contact knew there was no time to spare for educating patent counsel, and enlisted Patterson + Sheridan to manage the integration of the incoming portfolios.

Acquisition of multiple patent portfolios

Our integrated team acted quickly and seamlessly, working directly with the acquired company, its inventors, and domestic and international patent counsel to:

  • Assess portfolios, including both U.S. and international patents, drawing upon the firm’s experienced docketing and paralegal team to ensure the complex process went smoothly
  • Identify issues, including inventions not yet protected by patent applications. We quickly filed these applications to ensure crucial rights were protected
  • Develop solutions, in all assisting the client with a series of three transactions over two years

During the process, we assessed hundreds of patents, filed countless applications and protected the client’s significant investment. These transactions were key to the company’s success in a very competitive market, and Patterson + Sheridan served as a trusted ally throughout. 

Patterson + Sheridan Speeds Time to Market for Fortune 100 Client’s New Polymer

During product research, one of our Fortune 100 technology clients created a new polymer with durable qualities. This meant the new polymer would be highly valuable across a wide range of applications. It was critical to protect this new invention. To do so, the USPTO had to classify it as a new molecule.

Deep chemistry and chemical engineering experience came into play as our team worked with the client’s chemists to gather comprehensive information to draft more than 80 patent applications related to this product. By asking the right questions about the client’s researched chemical reactions, performance methods, products and other possible variations, we translated the scientific language into patent applications that were clear and thorough.

Of the more than 80 patent applications we filed for the client, about half were immediately granted without receiving rejections or changes from the patent office. In a rare case, an examiner misunderstood comparison to prior art, and our attorneys quickly and effectively explained the difference and issued the patent.

Our attention to detail and keen understanding of the complex chemical compound empowered the client to go to market faster with a large volume of patent applications, many of which were issued in just eight months. 

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.

3 Reasons In-person Client Meetings Produce Stronger Patent Applications

The key to developing a strong patent application? Understanding an invention from the inside out. Our secret weapon to truly understanding a new invention? Complimentary in-person client input meetings.

Over the years, we’ve learned that meeting with clients in-person — versus learning about a new invention over the phone — results in the strongest patent applications. Here’s why:

1. We create “whiteboard moments” to craft stronger applications

Meeting in-person allows our team to understand an invention thoroughly. These sessions usually result in the inventor at a whiteboard teaching us about the intricacies of their technology instead of trying to explain them over the phone.

We ask probing questions that make inventors consider factors they may have left out of the disclosure, questions that push them to use pictures instead of just words. By getting them to think about their invention from different perspectives, we help inventors discover new ways a competitor could potentially design around their patent — leading to a stronger application.

In one case, our in-person meeting with a Silicon Valley-based semiconductor company led the inventor to realize an alternate method of designing the technology he had developed.

2. It saves the client time (and money)

We don’t charge clients for our travel to initial development meetings — we view it as a worthwhile investment that benefits us both. These meetings typically last about an hour, but they can save up to four hours in the drafting process. By getting a better understanding of the invention, these meetings reduce the number of rewrites and the amount of back-and-forth to finalize an application.

3. Meeting face-to-face builds trust and motivation

An in-person meeting shows clients that we’re invested in their success and that their invention matters. This personal touch creates a connection with inventors: Placing a face to a name helps them be more responsive and motivates our attorneys to be that much more invested in the person behind the technology.

Leaders at that Silicon Valley semiconductor company said we were the first attorneys to ever come meet them in-person — not even their outside counsel based in their own city.

Our commitment to in-person meetings isn’t just something that sets us apart from other IP law firms across the country, it’s infused in our culture of providing the best work product as efficiently as possible.

Resolving a Reissue Standoff: Proving Patent Eligibility in the Face of the ‘Abstract Idea’ Argument

The owner of a 3D printing company found himself in a bind when applying for a reissue of the patent central to his business. Originally filed a decade earlier before the widespread growth of 3D printing, the patent now had some issues that required correcting. However, the view of the law had since changed, and the reissue process hit a standstill.

Fighting for patent eligibility in a changing technology landscape

Statutory law (§35 U.S.C. 101) and case law is limited in defining qualifications for patentable subject matter, particularly in a digital age dominated by software and intangible technology. Legal precedent is scarce, the issue is fluid and examiners are hesitant to pass muster on software-related patents.

In the case of this 3D printing company, the United States Patent Office (USPTO) examiner argued that the basis of the business was too general of an abstract idea to qualify for a patent. (The company offers a user-friendly software that allows consumers to design items to be 3D printed.) The application for reissue stalled — and that’s where the Patterson + Sheridan team came in.

Collaboration, research and a team of uniquely experienced IP lawyers seal the deal

Our attorneys took over the case and got to work immediately, spending hours on the phone with the USPTO examiners. We continually monitor case law to stay on top of new rulings and present new arguments accordingly, and this matter was no different.

This particular patent was a blend of both software (the design program) and manufacturing (the 3D printing), which made it unique. Despite its manufacturing component, the application was still rejected under §35 U.S.C. 101, which is typically reserved for abstract ideas, software and algorithms. Therefore, this type of technology was outside the wheelhouse of the traditional 101 examiners, and it wasn’t the typical patent most manufacturing-focused IP attorneys handle.

However, thanks to our firm’s deep bench of attorneys across a wide range of disciplines, we were able to collaborate and convince the examiners that our client’s idea was indeed patentable subject matter. The patent was allowed and has now been twice examined by the USPTO, making it that much stronger if it’s ever litigated in the future.

3 Ways Patterson + Sheridan Helps a Fortune 50 Tech Company Develop the Highest Quality Patents

When clients turn to Patterson + Sheridan, our attorneys go “all in” to deliver the highest quality strategic counseling and most thorough patent applications. Sometimes that means flying across the country to brainstorm with inventors or dedicating time to stay on the cutting-edge of our clients’ industries.

One Fortune 50 technology company relies on our firm to grow and protect their intellectual property, and in today’s fast-paced market, they can’t miss a beat when it comes to their inventions. Here are three ways we help them stay ahead.

1. Conducting “mining sessions” to extract and develop patentable ideas

Several of our attorneys recently traveled to meet with inventors and identify patentable ideas. By asking the right questions and brainstorming in a one-on-one environment, our team developed robust patent disclosure documents in conjunction with the inventors.

The result: 25 submissions to the company’s patent review board in a 48-hour period. These mining sessions expedite the process of turning half-baked ideas into potential patent applications, providing tremendous value for the client in more ways than one.

2. Assisting with patent pitching events to create a more efficient filing process

Typically, inventors draft disclosure documents themselves and submit them to their company’s patent review board, a process that can take months, if not longer.

To generate ideas more efficiently, our client periodically hosts a two-day workshop where dozens of inventors from across the company pitch their ideas. Our attorneys are invited to sit on the panel that hears proposals in order to provide feedback and identify the strongest candidates.

Once those winners are approved, we get to preparing patent applications. These events streamline an otherwise tedious process and afford our team the unique experience of working closely with in-house experts and generating a high volume of patents quickly.

3. Attending educational workshops to stay ahead of the latest industry developments

Our North Carolina office recently dedicated an entire day to attend a technical workshop, learning about machine learning and artificial intelligence with an expert PhD engineer. The goal? Gain a greater understanding of the latest advancements in this technology so our attorneys can better add value when handling related cases.

At Patterson + Sheridan, we pride ourselves on being forward-looking. Staying current with the technical aspects of our clients’ industries is just as important as continually honing our legal skills. When we understand the technology better, we can do better work.

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.

Protecting AI-Based Inventions Despite Recent Legal Hurdles

The next wave in technological advancement

Artificial intelligence (AI) is redefining the next technological age. It’s estimated that 38 percent of all businesses are implementing AI in some form, and that adoption rate is expected to increase to 62 percent in 2018. Plus, global revenue from AI-based systems is forecasted to grow from nearly $8 billion in 2016 to more than $47 billion in 2020.

Interest in protecting these inventions is skyrocketing as well. From 2012 to 2017, the USPTO saw a 500-percent increase in the number of patents issuing to class 706 — a classification exclusively designated for AI. But how do you ensure this emerging technology is protected properly?

Overcoming legal hurdles with tailored, detailed patents

Despite recent hurdles put in place by the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, AI-based inventions can be protected if you have a knowledgeable, experienced IP legal team focused on this developing market.

At Patterson + Sheridan, we protect AI-based technology by drafting strong patents tailored for these unique inventions. For example, new applications should specifically address the technical problem and technical solution. This is critical to overcome the “significantly more” hurdle in Alice.

Also, when describing the invention in the application, it is crucial to be means-oriented, not only ends-oriented. We avoid the “black box” logic of “input data, processing data, output data,” and instead, provide practical implementation details, such as specifics of the model design. It’s also important to include claim elements that recite specific uses of resulting data, not just the generation of the data.

The right patent attorney makes all the difference

Some are already referring to AI as the “Fourth Industrial Revolution.” This is a pivotal time for software and technology companies who are pioneering in this space — safeguarding those inventions is crucial. Like the revolutionaries who have come before, the leading innovators of this coming revolution should continue to pursue protection of their AI-based intellectual property.

The IP lawyers at Patterson + Sheridan understand the unique challenges of protecting AI technology, and clients appreciate our relentless, hands-on approach. For more of our detailed insights into this topic, read "Smart Strategies for Protecting AI-Based Inventions."