Building a defensible patent portfolio | Dhenne Avocats
Filing more is not the objective. Filing with a clear view of ownership, secrecy, budget, licensing and possible litigation is. This programme coordinates the attorney, the patent attorney and the client to build a defensible patent portfolio, without duplication and without grey areas as to who does what.
The need
Many portfolios are built up as they go, invention by invention, without the question of their future use ever being asked. On the day when an infringement action has to be brought, a licence negotiated or funds raised, the claims prove hard to enforce, the ownership of the employee inventions is uncertain and the research contracts have made no provision for the results. The programme comes in upstream, while those choices are still open, respecting the role of the patent attorney, who retains the technical drafting and the filing procedure.
Deliverables
- Before filing: classifying each result between secrecy, patent, publication or a combination, checking inventors and ownership, identifying disclosures and urgencies, helping to choose a patent attorney suited to the technology.
- During and after: a country-by-country roadmap, a timetable and a budget, documented decisions, a review of the claims from the standpoint of evidence and infringement, and a bridge to audit, licensing, fundraising or litigation.
How we work
First, a collection of information, contracts, dates, inventors and objectives. Next, a qualification isolating the questions of ownership, secrecy, disclosure and future capacity to act. Then a three-way meeting between the client, the patent attorney and the firm, which sets the division of tasks and the timetable. The patent attorney drafts, the firm handles the legal questions and re-reads from a strategic standpoint. Finally, a one-page decision sheet allows the client to validate countries, budget and deadlines, and an annual review covers portfolio, contracts, costs, competition and capacity to license or litigate.
A rule of transparency
The client knows exactly who does what and who invoices what. The firm works with a non-exclusive panel of patent attorneys chosen for their technical expertise. It receives no referral fee, shares no fees and applies no mark-up on the patent attorney’s services.
Formats
The programme comes in four formats: an ownership and filing diagnostic, support for an invention through to filing, a litigation-oriented review of the claims, and annual coordination of the portfolio. Each format is the subject of a written proposal with a time cap.
A few matters that illustrate our practice
Drones: patent infringement action
Assisting a drone manufacturer in a patent infringement action before the Paris Judicial Court. Preparation of evidentiary measures, technical analysis, drafting of the pleadings on the merits and response to procedural incidents.
Medical devices: infringement action before the UPC
Representation of a medical device manufacturer in an infringement action before the Unified Patent Court, alongside a foreign firm. Work on the analysis of the patent, the demonstration of the alleged infringement and the remedies sought.
Analyses and publications to go further
Frequently asked questions
Do you replace our patent attorney?
No. The patent attorney keeps the drafting of applications and the procedure before the offices. The firm deals with ownership, contracts, secrecy, strategy and the litigation readability of the claims.
Is this programme reserved for large companies?
No. It is designed for innovative companies filing their first patents and for those whose portfolio has grown without governance. The formats are proportionate to the size of the portfolio.
What happens if a dispute arises later?
The firm then knows the portfolio, its strengths and its limits, which speeds up the decision to sue or to defend. The litigation engagement is the subject of a separate proposal.
Discuss your matter
To arrange a first diagnosis, contact the firm.