Steve VerSteeg, Partner

Case Studies

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.

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. 

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.

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.