Is your client...

  • developing a new product?

    What’s on the horizon?

  • developing new, or adapting existing, technology to provide new services?

    How did they acquire this technology?

  • utilizing an in-house research and development (R&D) group?

    What products/services are in development?

    Are employment agreements in line with current practices regarding patents?

    Have inventing employees received patent 101 training?

  • commissioning/outsourcing their R&D?

    How do they handle those relationships?

    Do they have agreements to ensure inventive ownership transfers to them?

  • manufacturing or selling products in foreign countries?

    Do they have their patent protection in that country and their downstream markets to protect against counterfeiting?

  • purchasing a company/patent/technology?

    What is the nature of the transaction? Is it a license agreement, an acquisition, a merger, an investment or an IPO?

    Is there a specific technology or a product line driving this deal? Has it been patented? Has a patent landscape clearance/ intellectual property (IP) due diligence been performed?

  • maintaining a patent portfolio?

    Do they nature and strength of their patent filings as a right to exclude?

IPP-At-a-Glance
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52 Attorneys

  • Representative Clients

    Alphatec Spine

    Corning

    CR Bard

    Crown Equipment

    Ferno-Washington

    General Electric

    Hill-Rom Kraft Foods Global

    KSR Technologies

    LexisNexis

    Reed-Elsevier

    Roche

    Saudi Aramco

    Thor Industries (Airstream)

    Toyota

  • What We Do

    Patent Prosecution

    Patent Litigation

    Opinions and Counseling

    Due Diligence

    Portfolio Management

    Patent Mining and Mapping

    Patent Reexamination/Post Grant Review

    International Business

    Technology Licensing

  • IPP By-The-Numbers

    8,258 +

    filed since 2009

     

    1,598+

    U.S. patent applications filed in 2015

    Nearly half of our patent attorneys 
    hold a Master’s or Ph.D. in an engineering or science field

  • Concentration Areas

    Bio/Pharma

    Chemical

    Electrical

    Mechanical

    New Media

    Optical

    Software

  • Industry Focus

    Agriculture

    Automotive

    Aviation

    Consumer Products

    Energy

    Health Care

    Life Sciences: Biotech/Chemical/Medical Device/Pharmaceutical

    Advance Materials

    Manufacturing

    University Research

  • Creating Value

    Our patent professionals are trained and experienced
    in all major technical disciplines, and pride themselves as being subject matter experts, knowledgeable about our clients’ businesses and technology.

    Unique approach to the patent process is a distinct advantage to clients

    Drawing on our experience with the process and our relationships with the USPTO, we strive to interview every office action, which lessens the pendency time, reduces the total number of office actions and decreases legal fees. In utilizing this approach, our clients have enjoyed tremendous success in obtaining patents and reducing legal spend.

    PatentAdvisor system

    This system enables attorneys to compile and analyze detailed information relating to a company’s patent portfolio, including numbers of granted and pending applications, average number of office actions between filing date and patent issuance/abandonment, average time between first office action and patent issuance/abandonment, and percentage of applications with at least one interview before patent issuance/abandonment. In addition, this system enables our attorneys to forecast and recommend prosecution strategies specific to an application based on the statistical patterns for its assigned examiner to help our clients improve their patent prosecution outcomes and gain a competitive advantage.In-house counsel experience with major companies.

    Unique approach to the patent process is a distinct advantage to clients
    Many of our patent attorneys worked initially in the corporate world, bringing with them unique business experiences.  Infused with their knowledge, our attorneys possess the needed perspective to help clients navigate the patent landscape and contribute to their success by addressing and managing exposure to patent risk for their business efforts as an interrelated risk portfolio rather than as individual “silos”.

    Flat-Fee Model
    Nearly 75% of the patent prosecution matters we perform for clients are done on a fixed fee basis.  We have developed a process-oriented structure to build in efficiencies, significantly reduce pendency from filing to issue, and achieve a much more concise file wrapper, all while reducing in-house burden. We focus on communication, and develop “subject matter experts” who are knowledgeable about the technology and the body of prior art.  We also work with clients to develop tailored processes consistent with the client’s goals and organizations structure.

     

Experience Highlights
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  • Corning:  IP Portfolio Including Patent Prosecution

    We handle numerous intellectual property matters for the high technology glass manufacturer. Our role includes advising on patent preparation and prosecution, as well as managing their IP portfolio. We have secured a large number of patents for the client involving sophisticated technology and advanced components representing a significant portion of the company’s revenue and helped our client to remain a global leader in their industry.

  • Ball Metal Beverages: Patent Prosecution

    We defended Ball Metal Beverages against patent infringement claims relating to the design, construction and use of metal beverage can lids. We were awarded summary judgment of non-infringement by the district court, and the decision was affirmed by the U.S. Court of Appeals for the Federal Circuit.

  • Reed Elsevier: Patent Prosecution

    We have worked with Reed Elsevier for nearly a decade to advise on various intellectual property matters, including the preparation and prosecution of patent applications related to numerous technologies in its portfolio. In this time we have helped Reed Elsevier file and prosecute hundreds of U.S. and international patent applications. Our understanding of their business, technology and IP portfolio coupled with our strong relationships with its engineers and in-house counsel enables us to continue to develop cost-effective strategies that optimize protection, process and costs.

  • CR Bard: Patent Prosecution

    Our role has included advising on patent landscape studies and freedom-to-operate studies. We also serve as due diligence patent counsel with regard to potential acquisitions. Our role includes reviewing companies targeted by the client and evaluating and offering opinions on their intellectual property, freedom to operate, patentability and other related intellectual property matters. We recently worked with the client on a $325+ million acquisition, including initially developing a patent landscape study for the business development team, evaluating the strength of the target’s patent portfolio, and maintaining freedom to operate studies related to the acquired company’s medical devices. Since the completion of the acquisition, we have assisted the client in getting over a dozen new patents granted.

  • TEMA: Intelligent Object Recognition

    We have worked with Dr. Yasuhiro Ota and the Partner Robot group in preparing patent applications directed to object recognition and classification in robotics applications for TEMA (Toyota Motor Engineering & Manufacturing North America, Inc.).  Particularly, our experience in this area relates to the automatic detection and classification of objects within an environment using image data, which directly correlates to autonomous vehicle applications.

Attorney Roster
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DINSMORE & SHOHL LLP | LEGAL COUNSEL

 

FOR INTERNAL USE ONLY. Nothing in this presentation should be construed or is intended to be legal advice.  All images, videos, copyrights, and trademarks used in the presentation are property of their respective owners.  Copyright 2017. All rights reserved.