140218 seminar with blt and roa-syk_updated

Strategies for

Building a Strong Patent Portfolio in the United States

Stanley KangLowe Hauptman & Ham LLP

Suite 1400 2318 Mill Road

Alexandria VA 22314 Tel. (703) 684-1111 Fax. (703) 518-5499

www.ipfirm.com

©2014—Lowe Hauptman & Ham , LLP - All Rights Reserved

Introduction of LHH


⇒ LHH is ranked 28th out of the 500 top Intellectual Property Law Firms in the United States (IP Today 2012), and is among the top 10 IP firms specializing exclusively in patent prosecution, licensing, opinion drafting and trademark matters.

Electronics& Semiconductors Group

Chemistry & Biotechnology Group

Computers & Software Group

Litigation Group Mechanical Group

Introduction of LHH


USPTOLHH

“a short 3-minute walk from the United States Patent & Trademark Office”

√ Ultimate Responsibilities

√ Flexible Fee Arrangement- Hourly Based- Fixed Fee Based on Schedule of Fee- Contingency- Hybrid

√ Expedited Services

√ Cost Effectiveness

√ Full Service IP Law Firm

√ Client Practice Group


Patent for Start-ups

Budget Constraint

Reasonability

Enforceability

Broad claim scopeTimeliness

Expedite Progress

Case Study


Patent vs. Knowhow


Knowhow

ConsPros- Cost Saving- Confidentiality

- Unprotectable from Imitations- Difficult for Licensing

Pros- Protectable from Imitations- Easy for Licensing

Cons- Cost- Open to Public

V.S.

Expense + Quality + Speed -> Liable Representative

√ Effective Communication√ Reasonable Service Fees√ Real Working Group√ Outstanding and Well-Trained Staff√ Reputation and Legal Training√ Innovative service solutions√ Strategic Location√ Multiple Language Capabilities√ Balanced Client base


Quality-> Claim Drafting I


1. Should include claims that literally cover commercializable product/process

Can be a separate set of a narrow independent claim and several dependent “picture” claimsIncrease the likelihood of 1st action allowance “with full equivalent range”Avoid Festo: File narrow claims, then broaden during prosecution or in continuation

Cited prior art can be used as roadmap for drafting broader claimsUS examiners are unhappy if claims are broadened after 1st action continuation is recommended

Quality-> Claim Drafting II


2. Attempt to claim all disclosed inventions/embodiments

Subject matter disclosed but not claimed in application is dedicated to public

• Johnson & Johnson. v. R.E. Serv. Co., 285 F.3d 1046 (Fed. Cir. 2002)– Patent disclosed the use of Al and other materials for a substrate

of a PCB, including stainless steel, but claimed only Al. – Accused infringer used stainless steel– Trial court found infringement under Doctrine of Equivalents

(DOE)– Fed Cir. reversed: stainless steel as disclosed but unclaimed

subject matter has been dedicated to public

Quality-> Claim Drafting


1. An apparatus, comprising: a first circuit board having a first side, a second side opposite the first side, a first end and a second end opposite the first end; a first connector mounted to one of the first side and the second side of the first circuit board; and a second connector mounted to one of the first end and the second end of the first circuit board, the first connector including at least one conductor configured to engage a conductor on a connector coupled to a second circuit board, the second connector including at least one conductor configured to engage a conductor on a connector coupled to a third circuit board.

US 13/975,923



1. An activity monitoring system comprising: a plurality of fixtures, wherein each fixture includes a physical size and shape that is adapted to couple to an associated location on the body of the user; a portable monitoring device adapted to separately and physically engage each fixture of the plurality of fixtures, the portable monitoring device including: a housing to separately and physically engage each fixture; an activity sensor, disposed in the housing, to detect activity of the user and, in response thereto, to generate data which is representative of the activity of the user; and processing circuitry, disposed in the housing and coupled to the activity sensor, to calculate one or more activity-related quantities of the user using the data which is representative of the activity of the user,

wherein the processing circuitry: automatically determines a particular fixture of the plurality of fixtures is physically engaging the portable monitoring device, and calculates at least one activity-related quantity of the user which is associated with the particular fixture.

US 13/767,836

50 Drawings



1. A biofeedback device comprising a heart rate measuring apparatus comprising a reflected infrared sensor, the sensor including a sensor base having a first end and a second end,

an infrared light emitter and an infrared light receiver, the infrared light emitter being coupled to the sensor base at a first selected angle in relation to an axis running from the first end to the second end of the sensor base, and the infrared light receiver being coupled to the sensor base at a second selected angle in relation to said axis, and the infrared light emitter and the infrared light receiver being spaced apart from each other at a selected distance determined by the target reflection point; and a power source in electrical communication with the heart rate measuring apparatus.

US 13/167,044

Expense + Quality + Speed -> Revision

√ Full Review & Revision - Claim, Specification, and

Drawing - $2,000 ~ $4,000

√ Benefits - Preventing 112 Rejection - Minimizing Estoppel - Reducing Expense - Strong Patent Right


Worth more than $5,000

Expense -> Micro Entity (effective Mar. 19, 2013)

√ Benefits - only 25% of the governmental fees compared to large

companies - Gross Income Basis - Satisfying Small Entity Requirement - Gross income should be less than $153,051 - Less than 4 patent applications (provisional don’t count)

- Don’t assign patent rights to a non-micro entity.©2014—Lowe Hauptman & Ham , LLP - All

Rights Reserved

Expenses -> Micro Entity (effective Mar. 19, 2013)


Total $400 Governmental fees

Total $1,400 Governmental fees(Incl. Track One fee)

Y*** Client

S*** Client

Speed -> Track One Prioritized Examination

√ Benefits - Faster time to first action, which currently less than 5 months - No additional examination-related support documents - 4/30 claims - Prioritization fee: $4,000 ($2,000 small, $1,000 micro) - Limited to 10,000 applications per fiscal year


Speed -> Track One Prioritized Examination


2012/8/8 Filing/Request 2012/12/27 NoA2012/10/22 OA

4 Months!!!

US 13/570,188

2013/2/14 Filing/Request 2013/5/24 NoA

3 Months!!!

US 13/767,836

*No Office Action has been issued

Over 80% of Start-ups use Track One Exam

Expense + Quality + Speed -> Interview

√ In-Person Interview - $500 ~ $1,000 Service fee

√ Benefits - Clarifying Scope of claims - Concentrating on an Issue - Minimizing Estoppel - Only substantial issues are summarized in an Interview Summary

- Strong Patent Right


Summarized in 2~3 Lines

Expense + Quality + Speed -> Interview


2013/2/26 Interview 2013/5/7 NoA

3 Months!!!

US 13/531,486

Interview Summary

2013/3/18 Interview 2013/6/25 NoA

3 Months!!!

US 13/094,500

Interview Summary

Further Information• Patent Pharos : www.patentpharos.com

• Email : [email protected]


Q&A


140218 seminar with blt and roa-syk_updated

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