Practice Areas & Industries: Sunstein Kann Murphy & Timbers LLP

 




Patent Prosecution & Portfolio Development Return to Practice Areas & Industries

Group Profile Lawyers in this Group Offices Locations for this Group
 

Practice/Industry Group Overview

Our Patent Practice Group includes registered patent attorneys who help our clients create valuable patent portfolios with an eye toward advancing their business objectives. Our patent lawyers offer vast experience prosecuting applications in a wide variety of technical areas, including:

  • biochemistry
  • biofuels
  • bioinformatics
  • business methods
  • ceramics
  • computer hardware and software
  • data communications
  • electromechanical devices
  • electronic circuits and systems
  • fluid control systems
  • food processing
  • graphics, animation, and printing
  • industrial design and processes
  • instrumentation
  • Internet and other network systems, devices and methods
  • magnetic recording
  • medical devices
  • metallurgy
  • microprocessor controlled devices
  • molecular biology
  • motors
  • nanotechnology
  • pharmaceuticals
  • photonics
  • speech recognition
  • surgical devices
  • telecommunications
  • textiles
  • varied mechanical devices from furniture to engines
  • video, optics, imaging
  • x-ray systems

 

Sunstein's Approach to Patent Representation and Patent Portfolio Development

 

Patents provide leverage. To do so, they must be attuned to your business and to the larger industry in which you participate. Bromberg & Sunstein can craft a patent strategy that advances the strategic goals of your business. Our patent work for technology-based clients involves these major activities:

  1. Identifying your business goals and areas of technology to be protected;
  2. Developing a patent strategy for protecting the technology in view of the your goals;
  3. Implementing the patent strategy and seeking meaningfully broad patent coverage when patent filings are made; and
  4. Managing your patent portfolio and reporting on the protection of the technology in the portfolio.

 

In addition, we often perform patent validity and infringement studies to help our clients assess transactional and market risks associated with technology transfers and product introductions. We also advise on the structure and terms of technology transfer arrangements, including the definition of the technology to be transferred, and the preparation of pertinent written documents.

Each of these activities is described in further detail below. We welcome the opportunity to meet with prospective clients to discuss their particular needs. If you are interested in discussing how Bromberg & Sunstein can assist you in connection with patent matters, please contact a member of our Patent Practice Group.

Identifying your business goals and the technology

Patent portfolio development takes into consideration the nature of the client's business, the client's competitive environment, and the business needs and goals of the client. These factors determine both the context in which the technology protection strategy must operate and the goals of such a strategy. Understanding the client's business and the competitive environment helps us better assess the real-world value of the client's inventions.

In honing the patent strategy, we meet regularly with a client team that typically includes marketing and business development personnel, as well as in-house counsel. These meetings provide an opportunity to review the patent portfolio on a systematic basis and to develop an agenda for expanding or refining the portfolio.

We often meet with technical personnel in order to identify areas of the client's technology that should be the subject of patent applications or designated for other protective measures. Even where invention disclosure procedures have been implemented, it is common for technically creative personnel to either defer making appropriate disclosures, fail to recognize the availability of patent protection for inventions they consider unprotectable, or be unaware of the commercial potential of their work. Our meetings counteract these tendencies.

Developing a Strategy

Once the areas of technology have been identified, we assist our clients in tailoring a strategy for protecting their technology. This often-ignored step is of critical importance.

Although the strategy usually involves appropriate partitioning of the areas of innovation into specific inventions to be made the subject of patent applications, sometimes it is desirable to refrain from filing to protect an invention, unless the invention has been further developed or is about to be commercialized.

Additionally, foreign-filing considerations often affect the timing of filing of patent applications in the United States. For example, when a client has an ongoing development program in one area of technology, it may make sense to file an early United States provisional application to seek the first possible toehold for protecting such client's innovations. However, before the first anniversary of this initial filing (when foreign filings must be made in order to obtain the benefit of the United States filing date), the client may be able to file an expanded United States application covering additional innovations since the initial filing, and then base its foreign filings on the expanded application rather than on the initial application. Such a strategy may enhance the opportunity for broad foreign coverage while maximizing the chances for significant and early domestic coverage.

When formulating a patent strategy, the business and technological objectives of our client are as important as the legal considerations. For instance, a client looking to license the technology will require a patent prosecution strategy different from that of a client seeking to prevent competitors from copying its technology. An elaborate foreign-filing strategy is worthless to a client whose budgetary constraints prohibit such expenditures. On the other hand, a client with only domestic product sales and no foreign sales ambitions might still benefit from foreign patent coverage if licensing of the technology or sale of the client's business are reasonable prospects. Similarly, once the question is squarely posed, a client may decide that the commercial exploitation of a particular area of technology lies beyond its business mission and that it should concentrate its resources in protecting areas of technology closer to its core business. For some market-oriented clients, it is important to focus on developing a trademark portfolio in tandem with a patent portfolio. In each of these situations, we develop a budget for implementing a patent strategy that is consistent with our client's business requirements.

Often, differing business requirements lead to differing patent strategies even where the legal and technological circumstances may appear to be similar. For example, one client having an invention in a technologically crowded field may decide that the dim prospect for broad patent coverage cannot justify the expense of preparation and prosecution of a patent application, whereas another client - perhaps with a desire to bring a new product into the marketplace - may decide that even relatively narrow patent coverage may give it a business edge over the competition.

Foreign Filing Strategy

The expense of pursuing foreign patents often makes it difficult to decide the countries in which to pursue protection. Some of this cost can be postponed by using the Patent Cooperation Treaty. A foreign filing strategy should consider the location and nature of potential licensees and potential defendants, and may focus on where an infringing product is likely to be made or where it is likely to be used. Any client considering filing patent applications abroad should pay strict attention to the applicable foreign filing deadlines, which are quite different from those in the United States. An aggressive foreign filing strategy for trademarks can sometimes be an effective complement to a foreign patent strategy.

In carrying out a foreign filing strategy, we typically make extensive use, where appropriate, of the Patent Cooperation Treaty (including Preliminary Examination under Chapter II when feasible) and the European Patent Convention, to delay and sometimes reduce the substantial expenses of filings overseas. Short-term savings, however, are not always in our clients' best interests. For example, we have found that clients who file in a foreign country under the Patent Cooperation Treaty can afford the extra initial costs (some of which are recouped on a later filing in the European Patent Office) of having an international search conducted by the European Patent Office rather than by the United States Patent Office. This can present the advantage of locating prior art that otherwise might not turn up in prosecuting the corresponding domestic patent application until after issuance of the domestic patent.

Learning of this additional prior art in time to cite it to the United States Patent and Trademark Office can remove a basis for the subsequent invalidation by a court of key claims in the patent or for the assertion in licensing negotiations that the patent would not be considered valid by a competent court. Knowledge of the additional prior art can also provide an opportunity to refine or modify the foreign patent strategy before incurring the expense of "national phase" filings under the European Patent Convention or in individual foreign countries.

Implementing the Strategy

Once a patent strategy has been formulated, its implementation will depend in large part on the skill with which patent applications are prepared and prosecuted. Although it is often not difficult to obtain some patent coverage, there is nevertheless considerable challenge in obtaining meaningfully broad patent coverage. The scope of a patent is measured by the breadth of its claims, and consequently, we devote early and continuing attention to the scope of the claims in the application drafting process. While some individuals view a patent application as a technical disclosure to which claims have been added, we believe that the shape and wording of the claims affect the shape and wording of the technical description that forms a part of the application. We work to ensure therefore that the technical description not only is complete but also unfolds in a manner to suggest the importance of the subject matter of the invention as defined by the claims. This emphasis, which is maintained in prosecution of the patent application as well, has proven to be valuable in distinguishing the invention over the prior art and securing allowance of patent claims that are commensurate with the scope of the invention.

Managing the Patent Portfolio

As patent applications are filed and begin to mature into issued patents, it is important for our client to be able to track the status of its growing portfolio. One of the reasons patents are important is that a patent portfolio shows potential investors, customers, competitors and licensees that a business has taken steps to protect its investment in research and development. Indeed, without implementing some sort of intellectual property protection, a full return on a business's investment in research and development will probably not be realized, as competitors can skip their own research and development costs and cut into the business's profit margins.

Thus, a patent portfolio can be a prized property for a client and, like any valuable asset, should be carefully maintained. At Bromberg & Sunstein, we utilize sophisticated computer software to provide quick, meaningful reports to our clients of the status of all client inventions being handled by our office. Our reports can be generated in a variety of formats, but most commonly we use a "Docket Report" that charts essential data for each invention.

We use the patent portfolio listing as an essential tool in patent strategy meetings (described above) with heads of marketing business development, engineering and in-house legal department.

Patent Validity and Infringement Studies

The development and maintenance of a patent portfolio usually call for attention to potential licensing transactions in which technology is transferred either to our client ("licensing in") or from our client ("licensing out"). Aside from the contractual and business issues in these types of transactions, important validity and infringement questions can arise. If our client is licensing out portions of its own patent portfolio, many, if not all, of the patent validity questions will generally have been addressed in one fashion or another in the course of prosecution of the patents. If our client is licensing in patents from a third party, however, and the payment of valuable consideration is involved, we will usually recommend that we conduct a study of the scope and validity of the patents involved. In this manner, our client, armed with additional knowledge of the legal and technical environment of the patents in question, can better assess the transactional risks and can often negotiate more favorable license terms.

Even in the absence of any specific licensing program, clients with a product orientation generally must address the risks that their products will be alleged to infringe patents held by third parties. In this connection, we work with our clients in identifying probable areas of risk and performing appropriate infringement studies. A client that is well prepared can often dramatically reduce the risks of patent infringement claims and lawsuits. Designing around a patent and obtaining a formal clearance opinion from a patent attorney are two ways of reducing the risk of a patent infringement claim. Sometimes, however, obtaining a license to the technology is the wisest course. If, despite such efforts, one becomes a party in a patent infringement suit, it is important to obtain counsel experienced in patent litigation. Bromberg & Sunstein has abundant experience both in defending and in bringing patent infringement suits.

Technology Transfer

When a technology transfer is in prospect, we commonly advise our client on the structure and terms for the transfer arrangement. Our experience in representing clients in general business, as well as intellectual property matters, affords us a broad perspective on the significance of the transfer to our client's business goals. We can structure agreements that simultaneously involve transfers of restricted equity or debt securities, for example, and intellectual property rights, such as patents, trademarks, copyrights, and trade secrets. In almost all technology transfers, a critical question arises as to the definition of the technology being transferred, since what fits within the definition will be subject to transfer and what does not fit will not be transferred. The definition usually can be framed properly only on the basis of a detailed familiarity with the pertinent technology and with the status of its protection under the intellectual property laws. We are often called upon to prepare the operative agreements with respect to technology transfers. In some instances, such as when the agreements are being prepared by general counsel, we are asked to comment on the agreements and to prepare portions of the agreements defining the pertinent technology, the grant of license, and the intellectual property rights of the parties, as well as instruments of assignment where applicable.

Please contact an attorney in our Patent Practice Group if you are interested in exploring how we can assist you in connection with patent matters.

 

Our Approach to Patent Reexamination

 

A reexamination is initiated when a requester submits prior art patents or publications to the USPTO with an explanation of how they apply to the claims of the challenged patent. So long as a substantially new question of patentability is raised, the USPTO puts the patent through a second examination. A special corps of patent examiners have been assigned to give careful consideration to such requests. The reexamination procedures are available so that the PTO can participate in eliminating invalid patents and improving the quality of enforceable patents.

Reexaminations resemble the original patent prosecution, including office actions and responses, but with compressed response periods and no opportunity for continuation practice. An ex parte reexamination is handled by the patent examiner and the patent owner, without participation of the requester after the proceeding is underway. An inter partes reexamination, on the other hand, allows the requester to comment on all patent owner submissions and to appeal adverse decisions while limiting the patent owner to written communications with the patent examiner.

Our reexamination work takes advantage of several major strategies:

  1. Strengthen your own patent by putting it through ex parte reexamination or by filing for a reissue;
  2. Extinguish third party patent threats by anonymously requesting reexamination of a patent of concern;
  3. Defer or terminate litigation by filing an inter partes reexamination of a patent asserted against you.

 

In addition, we are often asked to represent patent owners who are faced with a patent reexamination. Each of these activities is described in further detail below.

We welcome the opportunity to discuss reexamination strategies with prospective clients who are contemplating patent litigation or who are facing the prospect of patent litigation. If you are interested in discussing how Bromberg & Sunstein can assist you in connection with patent reexamination, please contact a member of our Patent Practice Group.

Strengthen Your Own Patent

At Bromberg & Sunstein, our general approach to strengthening our clients' patent position involves filing continuation applications. Sometimes we encounter situations where a continuation application is not pending. Moreover, rule changes may create a time when continuations will not be as readily available in the USPTO.

Lacking a continuation application, a patent can be strengthened in a reexamination or by filing a reissue patent application. When our client becomes aware of prior art that may have an impact on the validity of its patent, we consider bringing the prior art to the attention of the USPTO for the purpose of obtaining a second review of the patent. It is more difficult to attack a patent in court if the prior art has already been reviewed by the USPTO. This is particularly true for a patent that has been twice approved by the USPTO. Reexamination and reissue both offer the possibility of this second stamp of approval.

Reexamination is limited in scope to review of prior art patents and publications. A patentee may pursue reexamination ex parte, that is without third party involvement. Advantageously, instituting the reexamination on certain issues raised by the prior art, should prevent third parties from seeking to bring a reexamination based on the same prior art. We work effectively with the patent examiner to maintain for our clients the broadest patent protection possible and to add additional claims when appropriate.

Another approach to strengthening your patent may involve the filing of a reissue application. A reissue application gives the patentee, if needed, the ability to fall back on a subsequent continuation or divisional application to further negotiate with the examiner for broad claim coverage. If the reissue is applied for within two years of issuance of the original patent, broader claims than those already issued may be sought. The filing of a reissue patent application requires identification of an error in the original patent such as claiming more or less than patentee had a right to claim. The scope of examination of a reissue patent application is more extensive than that of a reexamination. The USPTO may go beyond prior art patents and publications to address other issues of patentability as well. A patentee who survives reexamination or reissue gains enhanced prospects for litigation or licensing success.

Extinguish third party patent threats

For clients concerned about the patents of others, we have been able to use reexamination to disarm the patentee. Not wanting to brand our client as a target for patentee, an advantageous method of proceeding is to file an ex parte reexamination anonymously. Carefully prepared, strong, and extensive arguments are presented to the USPTO along with the closest prior art. This tactic is particularly effective early on in a long product development cycle so that consideration may be given to modifying the product depending on how the reexamination progresses. We have seen patents amended and narrowed on reexamination, thereby significantly reducing the risk of going forward with a product design.

Defer or terminate litigation

One of the most recent developments in reexamination practice is the advent of the inter partes reexamination. While use of this procedure has gotten off to a slow start, it has been very effective as can be seen in the table of pending inter partes reexaminations that our firm has created from USPTO data.

Early concerns that the third party requester was unfairly deprived of the right to appeal a USPTO adverse decision have been squelched by a change in the law. As of November 2, 2002, patentees and requesters both have the right to contest an inter partes reexamination to the USPTO Board of Appeals and to the Federal Circuit Court of Appeals.

Another concern with regard to inter partes reexamination is an estoppel that typically prevents relitigating validity of the patent with respect to prior art patent and publications. Inter partes reexamination requires a choice of forum for litigating these issues in the USPTO or the court. For many litigants, the millions of dollars to litigate these issues in a court is not a realistic option. For others, they may expect their strongest defense in court to be non-infringement. For both sets of litigants inter partes reexamination offers a relatively low cost option for possibly eliminating the patent or narrowing the patent. Narrowing due to amendment or arguments during the reexamination strengthens a non-infringement case. In view of growing experience with inter partes reexamination and the procedural advantages offered by inter partes reexamination, some clients may determine that their case would receive better treatment in such a reexamination.

Bromberg & Sunstein draws from its experience in patent practice and patent litigation to reach strategic decisions as to when to use inter partes reexamination. Many factors come into play including the prospects of success in the USPTO or the court, the timing, business considerations, the amount at stake, and the financial strengths of the parties. These and more are evaluated to arrive at a course of action most suitable for our client.

Representing Patent Owners

Patentees on the receiving end of a reexamination often come to Bromberg & Sunstein to marshall their patent through the process. We bring our expertise in both patent prosecution and patent litigation to bear on these reexaminations. Recognizing that amendments and statements made during reexamination may be used against the patentee, we work carefully on a strategy supportive of the patent's use in litigation. We coordinate the reexamination strategy with the litigation strategy. Typically, we avoid filing a patent owner's statement in ex parte reexaminations, thereby foreclosing further participation by the requester. In ex parte reexaminations, we generally meet with the examiners handling the case to facilitate reaching desirable claim coverage acceptable to our client and the USPTO.

 

Patent Prosecution Pointers

 

Many common pitfalls in the defense and enforcement of patent rights can be avoided through careful planning and early consultation with competent patent counsel. Although patent counsel will assess the needs of each client individually, the following practice tips are applicable to most companies or individuals who create patentable inventions. This material should be considered informational in nature, as it does not constitute legal advice. Please direct any specific questions to Bromberg & Sunstein's Patent Practice Group.


 
Group Presentations
  Discussion lead by Bruce Sunstein regarding Patents in relation to the design community, Wentworth Institute of Technology, 550 Huntington Avenue, Boston, October 4, 2007
Rule Changes for Continued Examination and Claims Practice, Boston, September 25, 2007