Steve Finch and Tu Nguyen can provide a variety
of services related to the development of an intellectual
property portfolio.
Services typically vary depending on the specific
needs of the client, but some of the general services
available are outlined below.
Patent Procurement
Patent procurement is the process of protecting an idea by
turning it into a piece of intellectual property. The process
includes interviewing prospective inventors and taking invention
disclosures, drafting provisional and non-provisional patent
applications, filing patent applications, recording assignment
documents, responding to Office Actions and paying maintenance
and annuity fees. Applications can be filed as United States
applications or as international applications under the Patent Cooperation Treaty. Docketing of patent cases is performed using Foundation
IP™, a service that supplies detailed tracking of all
pending and issued cases and can provide authorized individuals
with 24 hour online secure access to the docket.
Patent Portfolio Management
Steve and Tu work with clients to determine the most cost
efficient program for building a successful national
or worldwide patent portfolio within provided budget
constraints. Strategies are client-specific and may include prioritization
of patent applications, determination of the useful
life of a patent, working with licensees to share
expenses and employing techniques for postponing
costs until a technology has proven its value.
Patentability Opinions
Prior to filing a patent application it is important to evaluate
the proposed invention in light of what has already been done.
Is the invention likely patentable? And, if patentable, will
the patent have enough value to justify its procurement cost?
Answering these questions early can result in a stronger patent portfolio at reduced expense.
Freedom to Operate
We can’t forget that the other guy has patents too. So
before a client brings a product to market it is often suggested
that a freedom to operate study, or clearance opinion, be provided
in order to review the landscape of patents owned by others that
could block a successful launch of the new product. When done
in a timely manner, many patent infringement issues can be avoided
by implementing minor changes in the design of the proposed product.
The same can be said about the launch of a new trademark.
Agreements
Written agreements
regarding confidentiality, licensing, product
testing, technology transfer and joint development
are often important pieces of a business plan. Steve and
Tu can advise clients in these and related areas
to provide clients with piece of mind regarding
their business relationships with other parties.
Monitoring Services
Defensively, a “patent watch” service can provide
timely notification of any patents or patent applications that
are published in a competitor’s name. Offensively, competitors
can be monitored at trade shows and in publications to determine
if there is any planned release of a product that would infringe
a client’s intellectual property rights.
Licensing
Licensing out of patents can provide a source of income from
an asset that would otherwise lie dormant. Licensing
of intellectual property can also provide leverage
when negotiating an agreement concerning a competitor’s
patent. Licensing the patents of others in specific
fields of interest can also provide a competitive
advantage over competitors who do not have access to the same
technology.
Client Education
At a client’s request, Steve and Tu provide semi-annual
in-house seminars to company management and employees.
Topics can include, for example:
Intellectual Property Primer
Protection of Trade Secrets
What Inventors Need to Know About Patents Before They
Invent
Protecting Intellectual Property in a Global Marketplace
and
Proper Use of Trademarks
Typically, seminars are hybrids of one or more topics and are
developed in response to specific client requests.
Please contact Steve Finch or Tu Nguyen by phone or use the Contact
Form to determine how they can work to develop your company’s
intellectual property assets. Client references
and published patents can be provided upon request. |