The Patent Law Institute live blog continues with coverage of the panel, “Patent Quality and Cost-Effectiveness: Views from In-House”. This panel’s featured panelists are Valerie Calloway, Serena Farquharson-Torres, and David M. Shofi. Together they share the in-house perspective on the strategies for enhancing the quality of a portfolio, and the strategic use of a portfolio to deter patent threats. Here are the highlights:
Serena Farquharson-Torres: It is a good strategy to make yourself available to the inventors that work for your client. Some of them may never have had experience with patents. As such, educate your client’s scientists as to what you do and what they can do to best facilitate your client’s patents. If you’re part of the in house inventor’s team, you’ll be more aware of when publications may be coming out and you’ll have a better chance of having a stronger application. It’s good to have brainstorming form a multidisciplinary group from your in-house team.
You want to have a strong portfolio when anticipating patent challenges. Make sure you have adequate disclosure and good patent litigation along the way. Patent searching will come into play when determining the scope of the strength of your patent application. Your publication strategy is also key because you want to make sure you don’t jeopardize what’s going on at all times with your patent application.
David Shofi: In house strategies can still assist outside counsel in being better attorneys for their own clients. Quality can mean different things to different compaines. The biggest issue is balancing quality with cost effectiveness.
You want to make the invention submission to be as easy as possible for your client’s team of inventors. It’s essential to have an IP liason to go back and forth between the R&D and the inventors and the legal team. Before you go ahead and file a patent that will ultimately publish, make sure there aren’t better alternatives first (i.e. trade secret).
The vehicle we use for filing is provisional filing. It makes a great opportunity to get your filing date, otherwise its really a non-provisional filing in disguise.
Valerie Calloway: Cutting costs and being cost effective is incredibly essential. Patent quality and cost effectiveness are not mutually exclusive. Inside counsel and outside counsel need to work better together – the ideal is to create a win-win scenario. Open dialogue and an overall increased transparency between the company and the inside counsel and inside and outside counsel can bring about an agreements for both sides. When each side has a stake to win, there is more of a concerned and vested interest.
Tags: David M. Shofi, in-house counsel, Patent Law Institute 2012, patent quality, PLI, Serena Farquharson-Torres, Valerie Calloway
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