Partnering with in-house patent counsel

Partnering with in-house patent counsel

Partnering with in-house patent counsel

We work with in-house patent teams as an extension of their existing operations, adapting our practice to the client’s prosecution strategy, procedures, and preferred level of outside-counsel involvement. Our goal is to build long-term relationships in which the attorneys handling a client’s matters develop a meaningful understanding of its technologies, portfolio, business priorities, and prosecution preferences.

Continuity and senior-attorney involvement

Our practice is built around experienced patent practitioners doing the work, rather than a leverage model in which matters move through layers of junior attorneys. Clients work regularly with the same attorneys, allowing knowledge of the client’s technologies, products, competitors, and prosecution history to accumulate rather than being repeatedly relearned.


That continuity also means direct access to the attorneys actually responsible for the work. As the firm grows, our objective is to preserve that model by adding experienced practitioners who can develop and maintain the same long-term client relationships.

Portfolio-aware, cost-effective prosecution

An application rarely exists in isolation. When drafting and prosecuting applications, we can consider the role each matter plays within the broader portfolio—where broader coverage is important, where narrower claims may be commercially sufficient, where continuation practice may be valuable, and where additional prosecution may not justify its cost.

 

We likewise consider prosecution cost over the life of an application, rather than simply the cost of the next transaction. When responding to prior-art rejections, for example, the objective is not merely to distinguish the cited references, but to pursue an amendment or argument that has a realistic path toward meaningful allowable scope and avoids unnecessary prosecution cycles.

The level of involvement you want

Different in-house teams want different things from outside counsel. Some provide detailed filing and prosecution instructions and want those instructions executed efficiently. Others want outside counsel to analyze the issues, recommend strategy, and exercise greater independent judgment.

 

We are comfortable with either model—and with the many variations between them. As the relationship develops, we learn when simply to execute and when an issue is sufficiently important to bring to the client’s attention.

Your procedures, not ours

We adapt our docketing, reporting, billing, prosecution, and communication practices to the client’s established procedures rather than expecting the client’s patent department to accommodate ours. Our systems are intentionally designed to support that flexibility, including client-specific docketing and workflow requirements.

What we do differently

A long-term outside-counsel relationship creates institutional knowledge that can materially improve patent prosecution. The attorney responding to an office action years after filing may already understand the underlying technology, why the application was filed, how it relates to other portfolio assets, and what the client was trying to protect.

 

As a smaller firm, we can build our practice around preserving those relationships. The objective is not simply to process applications and office actions efficiently, but to become a reliable extension of the client’s patent team—combining continuity and senior-attorney judgment with predictable, cost-conscious prosecution.

Handling low-to-high-volume US filings and prosecution for foreign-origin applications

Handling low-to-high-volume US filings and prosecution for foreign-origin applications

Handling low-to-high-volume US filings and prosecution for foreign-origin applications

We work with foreign companies and their chosen law firms to handle US patent filings and prosecution at any volume, from individual matters to substantial portfolios. For clients that have established prosecution strategies and prefer to provide instructions, we execute those instructions efficiently and cost-effectively. For clients seeking greater US counsel involvement, we can provide strategic input at the filing stage and throughout prosecution.

Choosing the right US filing strategy

For PCT and other foreign-origin applications, the routine filing route is not necessarily the best route for every case. In addition to conventional national-stage entry under 35 USC § 371 and direct filings claiming foreign priority under § 119, we can evaluate whether alternatives such as a bypass continuation or continuation-in-part would better serve the application.


This can be particularly important for software, AI, and business-method inventions, where US subject-matter eligibility requirements may warrant changes to the specification or claims before substantive prosecution begins. Identifying those issues before filing can avoid prosecution difficulties that are much more expensive to address later.

A flexible approach to US prosecution

Our office-action practice is designed to accommodate different levels of client involvement. We routinely prepare responses from detailed instructions supplied by foreign counsel, but can also review those instructions and suggest improvements, or develop the US response and prosecution strategy ourselves.


Even when working on an instruction-based basis, we can, at the client's discretion, flag issues that may affect prosecution efficiency or the ultimate value of the patent – for example, claim amendments that address an immediate rejection but are unlikely to advance the application toward allowance, unnecessary limitations, or claim language that creates structural or interpretation problems.

What we do differently

High-volume US prosecution does not have to mean mechanical prosecution. Our goal is to provide the efficiency and predictable cost structure expected for portfolio work while retaining the judgment of experienced US patent counsel when it matters.


For clients who want straightforward execution, we provide it. For clients who want us to identify opportunities for a better filing or prosecution approach, we do that as well. In either model, the objective is not simply to complete the next filing or office-action response, but to move each application toward commercially useful patent protection as efficiently as possible.

Advising founders and early stage companies

Advising founders and early stage companies

Advising founders and early stage companies

For an early-stage company, a patent strategy should begin with the business, not with a patent application. We want to understand what you are building, how you expect the business to develop, where its competitive advantages lie, and what you expect your intellectual property to accomplish. From there, we can develop a patent strategy that provides meaningful protection while recognizing the very real budget constraints facing a growing company.

 

Our goal is not simply to file patent applications. It is to become a trusted partner in building an intellectual property portfolio that supports the company’s business.

Understanding what — and what not — to patent

Not every new idea should or can become a patent application. We work with founders and technical teams to identify the innovations that are important to the business and determine which can be patented and warrant patent protection, which may be better maintained as trade secrets, and which may not justify the cost of pursuing formal protection. The objective is to spend the company’s IP budget where it can create the most value.

Building a portfolio, not mindlessly collecting patents

We can help determine the number and types of applications appropriate for the business, how they should relate to one another, and when they should be filed. That means considering not only what the company has invented today, but where its technology and products are headed and where meaningful protection is needed. A smaller, strategically constructed portfolio can be more valuable than a larger collection of patents that does not protect what matters.

Making the patent process understandable

Founders should understand what their company is spending money on and why. We walk clients through the patent process — from invention disclosure and initial filing through examination and issuance — and explain the decisions that arise along the way. Our role is to provide the information and recommendations needed to make informed business decisions, not simply to send a series of filings and legal bills.

Using provisional applications strategically

A provisional application can establish an early US filing date while postponing many of the costs associated with a regular patent application. It generally provides a 12-month period in which the company can further develop its technology, assess its commercial direction, and decide how extensively to pursue protection before a non-provisional application should be filed.

 

Provisionals are not merely inexpensive placeholders, however. The earlier filing only protects subject matter adequately disclosed in it. We therefore approach provisional applications strategically — balancing cost and speed against the importance of creating a disclosure capable of supporting the claims the company may ultimately need.

Filing when it makes business sense

There is no requirement to wait 12 months after a provisional filing before filing a non-provisional. Depending on the technology and business circumstances, it may make sense to proceed quickly; in other cases, much of the 12-month period can be used to refine the technology, evaluate the market, obtain more data, or conserve capital. We help clients determine when additional filings make sense as the technology and business evolve.

Planning for US and international protection

Not every company needs patents throughout the world. We help clients consider where protection is commercially justified based on anticipated markets, competitors, manufacturing, licensing opportunities, and budget.

 

When international protection is appropriate, a PCT application can preserve the ability to pursue patents in many countries while postponing the substantial expense of individual foreign filings. We can manage the PCT process and, when the time comes to enter individual countries, coordinate prosecution with our network of trusted foreign firms.

What we do differently

Start-ups face a problem that established companies often do not: the need for meaningful patent protection is greatest at precisely the time when capital is most constrained. Simply filing an application for every idea is rarely sensible. Neither is postponing filings until the company has more money — by then, rights may have been lost.

 

The answer is strategy. That may mean filing a carefully prepared provisional application now and a non-provisional later. It may mean filing a non-provisional immediately for a core technology, while deferring other expenditures. It may mean protecting one aspect of the business with patents and another as a trade secret. And it may mean pursuing protection internationally for one invention while keeping another US-only.

 

As a company grows, that strategy should grow with it. New products, new technical developments, fundraising, competitive developments, and changing business objectives can all affect what should be protected and when.

 

We want to understand the business behind the inventions — and help build the patent portfolio the business actually needs.