Longwood Gardens, Kennett Square, PA
I am pleased to offer a variety of services to corporate clients, each centered around the firm's objective of helping clients increase the value of their intellectual property, with a particular emphasis on alignment of intellectual property related activties with your company's broader strategic objectives and plans. In short, I am available to provide the services of an in-house patent counsel to companies on an as-needed basis, including:
1. Review of existing policies and procedures
During my time as in-house patent counsel for two global corporations, I have developed an understanding of which policies and procedures pertaining to management of intellectual property work and which do not work. While certain elements are critical, flexibility is needed to accommodate the specific nature of your business and the industry in which you compete. I can provide a review of your existing intellectual property related policies and procedures, and offer recommendations for improvements, as needed.
2. Training of personnel
A high level of involvement of engineering and marketing personnel in the patent process is typically desirable and advantageous for your company. I can provide training services of personnel in patent mining, prior art searching, identification of potential claims, mapping of claims to marketing objectives and preparation of robust invention disclosures. In particular, I can assist with intensive training of select engineering personnel to help groom "patent engineers" in your organization.
3. Portfolio review
I am available to provide an objective review of your current patent portfolio and its effectiveness in view of your company's strategic business objectives.
4. Competitor portfolio review
I am available to provide an objective review of your competitor’s patent portfolio and help your engineering and marketing personnel make a competitive business assessment.
5. Invention disclosure review and evaluation
I am available to participate in the invention disclosure review process at your company and assist with application filing decisions. As I do not prepare, file or prosecute patent applications, I have no vested interest in whether a decision is taken to file an application.
6. Patent prosecution management
I am available to support company personnel in the management of patent prosecution activities, including, for example, analysis of cited prior art and recommendations regarding responses to Office Actions
7. License agreement drafting and negotiation
I am available to assist with drafting and negotiation of incoming or outgoing intellectual property licenses.
8. Due diligence and agreements associated with mergers & acquisitions activity
In addition to assistance with drafting and negotiation of agreements relating to the purchase or sale of intellectual property, I am also available to undertake a business-oriented assessment of a patent portfolio to be acquired.
9. Litigation consulting
I am available to support personnel at your company in managing litigation counsel in patent infringement lawsuits.
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