Patent Counseling and Portfolio Management

In today’s highly competitive business and economic environment, effective patent counseling and portfolio management is essential to the execution of a cost-effective patent strategy. Gone are the days when a company could file and maintain patent applications throughout the world on all of its developments. Careful and selective patent application filings based on a thorough business-focused patent strategy and coupled with periodic portfolio reviews to determine international filing and maintenance decisions are essential to make sure a company’s patent portfolio is focused on commercially-significant developments, and to maximize return from that patent investment. These services must be customized for each client, and Frost Brown Todd is well-positioned to provide its clients with these services. Several of our attorneys have in-house patent experience and they understand how an effective patent portfolio is developed, budgeted and maintained. For example, Ann Schoen served as in-house patent counsel at GE, and Steven Goldstein was a part of Procter & Gamble’s in-house legal team which developed state-of-the-art portfolio management techniques. Steven also served as world patent coordinator for P&G’s beauty care business unit.

We provide a wide array of patent counseling and portfolio management services to many of our clients. Examples of these services include:

Development of Communication Systems

  • Development of procedural guidelines and measures to facilitate disclosure and evaluation of new inventions
  • Development of extranet sites to facilitate access to and review of IP portfolio
  • Development of an IP review board to evaluate patent filing and maintenance decisions

Evaluating Patent Portfolios

  • Auditing R&D and manufacturing functions to determine what a company’s IP assets include
  • Evaluating the commercial importance of various technologies and specific countries for international filing
  • Developing international filing strategies and feedom-to-practice strategies for particular companies and business areas
  • Defining IP assets which can best be monetized by licensing without negative commercial impact

Protecting IP Assets

  • Setting up a cross-referencing system for preparing Information Disclosure Statements
  • Determining the best routes of IP protection for a particular client, technology, business area and product
  • Setting up a portfolio reporting system customized for the client’s particular needs

Education

  • Presenting on-site training for R&D or business staff (such as basic IP concepts or IP best practices,) developed to meet a company’s unique needs
  • Helping to identify infringers
  • Providing IP training for new hires
  • Facilitating regular client IP update/status review meetings

Practice Highlights

Worldwide Patent Portfolio Management

We currently manage and enforce worldwide intellectual property portfolio of  numerous clients including, among others,  the largest providers of automotive lifts worldwide; one of the largest providers of business process outsourcing services worldwide; one of the world’s largest providers of screens and related equipment to the aggregate and mining markets; one of the world’s largest providers of telecommunications towers; a major international fruit grower and processor; a major steel company; a developer and manufacturer of endoscopic surgery techniques and devices; a major multinational product manufacturer; and a major manufacturer of elevators and escalators. In doing this, we provide these clients with effective IP protection in a very cost-effective way. 

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