PatentEsque Law Group offers legal services in the areas of Technology Transactions, Intellectual Property Strategy, and Patent Enforcement/Dispute Resolution.
Technology Transactions
IP Strategy
Patent Enforcement and Dispute Resolution
Technology Transactions

Many intellectual property counsel understand technology and IP law, but lack experience in commercial transactions. Conversely, many corporate counsel understand commercial transactions, but lack experience in technology and IP law.  As business lawyers with extensive hard-core IP experience, we have the expertise to operate at the critical intersection of these two areas.   

Negotiating & structuring agreements
Our experience includes representing companies in the computer, software, telecommunications, computer security, semiconductor, internet, satellite, financial, medical device, healthcare, and pharmaceutical industries in matters such as:

•        R&D, manufacturing, and supply agreements
•        technology transfer relationships
•        technology alliances and joint ventures
•        patent assertion/licensing initiatives
•        patent licensing and cross-licensing
•        advertising and marketing partnerships
•        university research collaborations
•        spin-off of a business division
•        cross-border joint development deals
•        hosting and outsourcing IT operations
•        establishing industry consortiums
•        licensing to/from standards groups
•        software community developer agreements
•        authoring policy & practices statements for digital certification authorities
•        IP asset auctions in bankruptcy
•        all kinds of web and ASP agreements

Intellectual property partnering and divestitures
We have served as lead or co-lead IP counsel on over one hundred technology collaborations, including mergers and acquisitions, contractual and entity-based joint ventures, participation in standards-setting organizations, and more.

We have special expertise in establishing IP rights frameworks for collaborative ventures, including negotiating licenses to utilize preexisting IP rights owned by the individual participants, as well allocating ownership and usage rights of newly-created IP rights arising in the course of the collaboration.  

We also assist companies (or their corporate counsel) by providing specialty advice in the area of corporate divestitures.   It is often relatively easy to allocate the business lines, products and services of the company between the retained business and the business to be sold.   However, intellectual property can be an entirely different matter.   Much of the IP will have varying degrees of applicability to the retained and sold businesses.   We have extensive experience in working out the appropriate combinations of ownership and grantbacks to give the retained and sold businesses the appropriate degree of exclusivity and freedom-to-use after the transition.

Intellectual property investments
We also help our clients evaluate potential investments in technologies and IP rights developed by others.   Our projects in this area have included evaluating target companies' IP portfolios, and/or actual or threatened IP threats against such companies, for venture capital financings, private equity investments, mergers or acquisitions, asset purchases, and patent auctions.  
Intellectual Property Strategy

For technology companies, patents are the most important type of intellectual property right, and our attorneys have been involved with thousands of patents in a wide variety of computer, software, semiconductor, e-commerce, internet, and consumer electronics technologies.  

Unlike traditional outside counsel who specialize in a single aspect of intellectual property law (e.g., preparing, licensing, or enforcement), we have extensive experience in the entire IP life cycle, including cases where we have prepared, licensed and enforced the same patents from beginning to end, as both inside and outside counsel.  

We use this breadth of experience to help companies integrate and synchronize their IP activities with their business strategies, and to strengthen and optimize their patent portfolios for exploitation, to maximize their value as core business assets.  

More specifically, our IP strategy practice includes the following areas:

Competitive patent portfolio assessment
We perform competitive assessments of existing patent portfolios, including breadth and depth of coverage, to identify key strengths and weaknesses relative to the industry and/or to specific competitors.  By uncovering gaps in the portfolio, we help focus future patent efforts on the areas of greatest need.  We also evaluate the quality of individual filings for consistency with best practices, such as tracking rapidly changing case law developments.  In this way, we help our clients to identify and retain outside patent preparation counsel that consistently provide the highest quality of work product.  

We also help companies expand their existing patent portfolios by identifying opportunities to specifically target their competitors' products and services, both during pendency of the original applications, and/or through a strategy of continuation filings.   This is also particularly useful in preparation for offensive licensing or enforcement campaigns.

Strategic portfolio development / targeted claiming
Most corporate patent programs operate in a haphazard fashion.   Patent disclosures are submitted by inventors who think certain technologies are “cool,” who want to collect patent plaques or filing bonuses, or whose managers want their divisions to have the highest numbers of filings.  While these are legitimate incentives, they rarely correlate with the company’s areas of strategic need.  

Even worse, once a disclosure is accepted, preparation and filing is delegated to outside patent attorney whose assignment is to “get a patent,” as quickly as possible, at an acceptable price.  The patent attorney is almost never told (and isn’t encouraged to ask) how the product is built and distributed, how money is made in the industry, or which third parties should be targeted as infringers – critical information for building a patent that can serve as a business asset.  Nor does the outside attorney have anyone to ask, since his/her only contacts are the company’s technologists (i.e., the inventor) and administrators (i.e., patent coordinators), as opposed to the company’s business strategists.  

The result is all too often an impressive technical document that has little real business value.  For example, we have seen entire families of patents relating to a client-server architecture that strongly protect the client application (which the company gives away for free), while disregarding the server application (which is where the company makes money).  

Our attorneys turn the traditional process on its head, by working with the company’s business and IP strategists to establish the legal framework of a patent before the case is delegated to the outside patent attorney (and the inventor) to flesh out the technical details.  More specifically, we first draft patent claims that embody the business strategy (e.g., targeting competitors' products and services, and tracking high/low value segments of the technology distribution chain), and then turn the patent claims over to the outside patent attorney to draft a supporting technical specification and file the application.  Significantly, we do not displace (or replace) the company’s outside patent attorneys, who will prepare and file the case as always.   However, by engaging in “directed claiming,” we are able to increase the relevancy and value of a company’s patent filings several times over for a relatively modest incremental effort.
Patent Enforcement and Dispute Resolution

We are experienced with all aspects of patent enforcement, both offensive and defensive, and although we do not directly provide litigation services, we are able to identify, coordinate with, and/or manage speciality litigation counsel, as appropriate for our clients' needs.

Patent enforcement (defensive)
We evaluate the risks posed by patent infringement assertions, and invitations to license, received by our clients from their competitors.  We then develop an appropriate strategic response that may, as appropriate, include design around, counter-assertions, licensing, cross-licensing, noninfringement/invalidity opinions, formulation of litigation strategies, and/or engagement of litigation counsel.   Our experience in assertion, licensing, enforcement, arbitration and settlement of patent disputes, both offensive and defensive, make us well suited to understand and respond to these kinds of situations.

Patent enforcement (offensive)
We also work with companies to select candidate patents for exploitation, to assess competitors’ technologies for infringement, and to plan and conduct patent sales, licensing, and/or cease-and-desist campaigns.  These activities can be conducted on a stand alone basis, or coordinated with other business deals such as cross-licensing, technology transfer.  Or, in more contentions matters, they can occur as a precursor of, pursuant to, or in settlement of litigation.  

Dispute resolution
We are also available to serve as mediators or arbitrators in matters relating to patent infringement and licensing disputes.


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