There have been changes in the US patent system in recent years, and more than ever, you need to be on top of your intellectual property portfolio.
Waiting to file a patent application may no longer be a wise option. More interim filings may be appropriate. Do you have a strategy, or are you hoping and crossing your fingers?
Pinnacle IP can provide a multitude of services to small and medium sized enterprises (“SMEs”). Whether this is your first rodeo or whether you have an existing portfolio, we can attend to your patent needs.
Our expertise covers a wide range of fields based on formal education, business experience, patent experience and life experience. We have assisted clients with inventions in biotech, food science or technology, internet, business methods, medical or mechanical devices. We are not mindless patent drafters. Instead we will apply our expertise to help ensure your patent application gives you the opportunity for a full measure of protection.
After all, anybody can get you a patent if it is narrow enough, but if your patent is not useful to your business unless it can be used as a tool to keep competitors out or as an asset that can generate licensing fees. Otherwise, why bother?
We are also skilled at designing around existing patents. If you have found yourself in a situation where you cannot proceed without infringing, and you cannot obtain a license (or can’t get it at an affordable rate), we can work with your engineers and manufacturing to design-around existing patents to come up with non-infringing alternatives.
Here are some of our Patent-related services:
The process of patenting is straight forward but the strategic decisions are not without consequences. For the small to medium enterprise, and for the solo inventor, it is generally not prudent to patent every idea or invention you conceive or develop. While many companies and even patent attorneys will gladly take your money, the vast majority of patents are never issued, and of those that are issued, the vast majority are never commercialized. That means these inventions frequently die on the vine. It far more advantageous to receive detailed counseling to weigh out your decision to move forward with a patent or to consider your other options. Pinnacle IP Strategies offers strategic counseling for SME’s, solo inventors, and entrepreneurs to help you avoid pitfalls and make a fully informed decision regarding your invention.
Think of us as your “invention coach”. We want the best result for you and will push you, pull you, encourage you, and do whatever is needed to help you decide what your best options for your business or invention. If you utilize our counseling/consulting services, we’ll even give you a credit towards a patent application for your invention should you decide to move forward using our drafting services.
“Hire the best and cry only once. . .”
The first question most prospective clients ask is usually about price. That is understandable but pricing alone will probably not get the result you want.
Not all patents are drafted equally. Proper patent drafting is an art, not a science. Experience and creativity are highly valuable.
You only get one chance to submit your patent disclosure by a particular date. For the best results, you want to put a lot of time and thought into your invention writeup and you should expect your patent attorney or patent agent to do the same thing.
It should be drafted with one eye on the technology, and the other on the law, which often changes. And a third eye on the competitive or business environment for commercialization of the invention. That the most important aspect that so many people overlook.
We have had clients come to us to ask our opinion on their patent applications drafted by low-end providers. Fortunately, even the client realized the final drafts were not up to par.
Pinnacle IP provides high-end, professional, and solid patent advice and applications that are drafted with your business in mind. We work with you closely to get the best possible final product. We are not the most expensive firm for drafting your patent application but we are certainly not the cheapest.
We want clients who find our services to be a great value. There is nothing wrong with getting a good bargain, but some people are strictly price shoppers. If that is you, we wish you well but probably are not the right firm for you. We prefer the value proposition where you receive a great value and personalized service and we are compensated fairly.
Before you start manufacturing a new product or offering a service, a smart business person will want to ensure they are not infringing anyone else’s intellectual property rights that might result in a lawsuit, injunction, or massive financial liability. Or simply having to cease and desist after making substantial investments. In other words – you need to know if you are “free” to operate that business.
Of course, while there are always some risks in business, not all “new” products or services raise real questions regarding freedom to operate, but the consequences of patent infringement are potentially so damaging to a business that prudent business people ask the question “Am I free to enter this market?”
Is there a patent blocking your path to commercializing your invention or challenging a competitor? Perhaps designing around an existing patent would be right for you.
Designing around a patent means to develop technology or an approach that will solve the problem at hand, without infringing on the claims of the patent.
Some people ask “is it legal to design around a patent?” Not only is it legal, but it goes to the heart of patent system. Patents are given to encourage “promote science and the useful arts” – which means that are intended to stimulate MORE innovation. In fact, our laws provide patent ‘monopoly’ protection in exchange public disclosure of an invention so that the public can do exactly that. So the idea of designing around a patent is EXACTLY what companies should do under the right circumstances, e.g., if a license under a crucial patent is not available or is cost prohibitive, and the patent cannot be acquired.
Depending on the technology and the circumstances, sometimes a design-around is not evident, but often alternatives can be developed that will allow your company to proceed with a profitable venture.
Design around services generally require working together as a team with legal counsel who understands and analyzes the claims of a patent and the inventor(s) or technical team that are the subject matter experts. You will often want to include the marketing team or business executives to keep the process in line with the market and business needs as it progresses.
Designing around a patent requires a rational process that is deeply rewarding for a company and can produce amazing results in the market.
Call us to discuss your issue and we can help you to determine if a ‘design around’ approach is worth implementing.
To be patentable, and an invention must meet three simple requirements: (i) it must be useful; (ii) it must be novel (i.e. ‘new’); and (iii) it must not be ‘obvious’ in view of the related art.
In an ideal world, it would always be useful to know whether an invention is patentable prior to determining whether or not to seek patent protection. In a very practical sense, the investment in a full patentability analysis must be compared to the lesser step of having a ‘prior art’ search performed and looking for patents or article which disclose the full invention or something that is very close to it. Many larger companies still prefer patentability analysis but for smaller to medium size business it is a business that requires careful weighing of the costs, benefits, and risks.
The question of whether or not a particular invention is patentable has always involved opinions – some right and some wrong. There is technical analysis that is quite objective and can reveal if an identical invention has been patented or disclosed previously (i.e. is it novel?). But there is often a large subjective component – which addresses the question of the whether your invention is obvious in view of the related art. That subjective analysis involves both a technical and a legal analysis, and is as much art as science, and has become less certain in the last decade.
Finally, the determination of whether something is “useful” has become more a grey area in recent year for some inventions (e.g. especially for biotech and business methods, and software-related inventions). Changes in the law and a number of court decisions in recent years have made this previously straight-forward determination more challenging.
Whether or not you need to formally consider patentability is a question that is best addressed on a case-by-case. Call us at 920-474-6622 and we will be happy to discuss.
Pinnace IP can help you navigate proceedings at the USPTO such as appealing an examiner’s final rejection of your patent claims. While many small to medium enterprises do not pursue this option, Pinnacle IP can provide counseling and representation where appeals are appropriate or advisable. We can also help with less common proceedings at the USPTO involving third parties.