Value Enhancing Patent Prosecution Strategies: Non-Publication of US Applications

The non-publication procedure for certain US patent applications is one of the most under-utilized tools in the U.S. patent strategy toolkit. After 20+ years of experience as a patent attorney, the non-publication process is one of my go-to strategies for clients who wish to start the process of patenting their innovations without also prematurely disclosing their “secret sauce” to their competitors, as would normally be the case when filing a patent application that will publish in 18 months after filing if the standard application process is selected. In addition to allowing the information in a patent application to remain confidential from prying eyes for a longer time, this can strategy pay dividends as the patent examination process becomes more challenging or if your company pivots. In this regard, if your US patent application does not publish, you may retain the right to add new aspects of your innovation for a longer period of time, while still retaining the filing date

Value Enhancing Patent Strategies: Accelerated US and Foreign Patent Timelines

My many years of experience as an IP Strategist working with countless clients helps me hone keenly my effort to assist clients in utilizing various patent strategies available to them, including how to buck the trend of long patent pendency that can create business uncertainties. In this regard, you probably know the traditional patent acquisition timeline is typically 2.5-4 (or even more) years from US utility application filing to issuance. For clients seeking protection outside the US, the time can be twice as long. 

The time for obtaining US and non-US applications can be greatly reduced through use of acceleration techniques made available in recent years. I have obtained dozens of US utility applications for clients using the “Trackone” process. Using this mechanism, these clients have obtained notice of issuance within 1 year. Moreover, I often find the examinations using this process to be more thorough, which often results in a “cleaner” review by the examiner,

M&A Failure: When Patent Due Diligence is to Blame

Analysts say that 70% or more of corporate acquisitions will be judged “failures.” I believe that many of these failures can often be attributed to the failure of conventional due diligence processes to suitably account for the participation in patents in predicting long-term financial returns for the acquired company. One reason for this is that the due diligence process moves quickly as deals need to be closed, oftentimes sacrificing robust investigation of complex issues, such as patents. Also, you can’t see something that you’re not aware of, and I know that many business people are not aware of the value that patents bring to a company that is creating innovative products and technology.  

Notably, rarely, if ever, is an after-the-fact analysis conducted of what happened to cause M&A failure. It follows that inadequate patent due diligence would likely never be seen to be the cause if this subject is not on the “radar screen” of M

Protecting Valuable Innovations? Throw Out the Old Patent Playbook and Try Something New

In the usual situation, a patent attorney is the “ball carrier” for the inventor as a patent application moves through the Patent Office. Each “play” in the “patent game” is focused on getting a patent application to the goal line as the “win” of an issued patent. However, when the primary objective is on winning, the focus necessarily becomes the patent itself, not the reason why the “patent game” is being played in the first place. 

I have learned in my 20 + years as a business-focused patent attorney there is often a huge mismatch between the coverage of a patents and the business value that the patent creates for its owner. In other words, most clients look at the patent itself as a the “win,” and cannot articulate why they even played the patent game in the first place. When the patent is intended to protect valuable innovations, gaps in patent coverage and

Protecting Your Company’s Value – Think Beyond the “Usual IP Suspects”

It’s not uncommon for entrepreneurs to think about what I call “the Usual IP Suspects”--that is, patents, trademarks, copyrights and trade secrets--when they consider protection of their company’s value. I learned working as patent attorney at a prestigious IP law firm, and later in a corporate environment, that often a company’s value can exist in forms other than these most recognized forms of IP protection. Indeed, for many companies, a great deal of value can reside in the broad class of “intangible assets.” It is then important for company leaders to identify and protect these less recognizable forms of company value. The B-School types say, “what isn’t managed can’t be measured,” and this goes for intangible assets, too. But, you can’t manage something that you have not first identified as being part of your business from which you can derive value. 

I help clients think beyond “the Usual IP Suspects” to develop an inventory of intangible assets