Building a defensible patent portfolio
Filing more is not the objective. Filing with a clear view of ownership, secrecy, budget, licensing and possible litigation is. This programme coordinates the lawyer, 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 as they go, invention by invention, without the question of their future usefulness ever being asked. The day the company needs to sue for infringement, negotiate a licence or raise funds, the claims prove hard to enforce, the ownership of employee inventions is uncertain and the research agreements did not provide for the fate of the results. The programme acts upstream, while these choices are still open, respecting the role of the patent attorney, who keeps the technical drafting and the filing procedure.
What the client receives
- Before filing: the qualification of each result as secret, patent, publication or a combination, the verification of inventors and ownership, the identification of disclosures and urgent matters, help in choosing a patent attorney suited to the technology.
- During and after: a country-by-country roadmap, a timetable and a budget, documented decisions, a re-reading 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 diagnosis, support for the invention up to filing, a litigation-oriented re-reading of the claims, and annual portfolio coordination. Each format is the subject of a written proposal with a time cap.
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 in the event of later litigation?
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.
To arrange a first diagnosis, contact the firm.