1 / 12

KramerAmado Clearance Studies

KramerAmado Clearance Studies. Akron, Ohio on May 22, 2013. Overview. Clearance generally The KramerAmado Difference AIA as applied to Clearance. K&A Objectives. Primary Objectives: Help in-house counsel advise internal clients with regard to Right-to-Market

asasia
Télécharger la présentation

KramerAmado Clearance Studies

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. KramerAmado Clearance Studies Akron, Ohio on May 22, 2013 www.krameramado.com

  2. Overview • Clearance generally • The KramerAmado Difference • AIA as applied to Clearance

  3. K&A Objectives • Primary Objectives: • Help in-house counsel advise internal clients with regard to Right-to-Market • Identify risks early in the commercialization process • Design-Around if possible • Secondary Objectives: • Competitor activity • Prior art for patent applications • Licensing targets

  4. Clearance Study Non-Infringement Study Invalidity Study Product Description Claim Construction Claim Construction Clearance Search Non-Infringement Analysis Invalidity Search Low-RiskResults Resolved Claims Results Analysis Design-Around Invalidity Analysis Clearance Opinion Non-Infringement Opinion Invalidity Opinion Clearance Flow-Chart Direct Invalidity Investigation New/ Modified Product Notice From Patentee Clearance Study Non-Infringement Study Invalidity Study High-RiskResults Unresolved Claims

  5. Benefits of Opinions • Preemptively manage risk • Minimizing enhanced damages • Removing “unknowns” and streamlining product development • Memorializing analysis for next-generation products • Facilitating valuations for licensing

  6. The KramerAmado Difference • Timeliness • Certainty • Guidance

  7. Timeliness • Meet all deadlines • Docketed Items • Confirmation of product description • Completion of in-house patent search • Follow-up questions if necessary • Preliminary Analysis/Opinion • Written Opinion

  8. Certainty • Technical Understanding • Clear understanding of the product exemplified by the Product Description • What are the features of the product and their alternatives? • What are the end customer uses of the product? • Market Understanding • Who are the competitors in this field? • Who are the main IP holders? • Is there NPE activity in this technology area?

  9. Guidance • Preliminary Analysis/Opinion • Spin-off opinions if necessary • Written Opinion • Product description • Search scope • Classification search • Keywords, assignees, inventor names • Discussion of relevant documents including literal and DOE analysis • Discussion of applications including current claims, status, and monitoring

  10. Guidance • What is highlighted for discussion? • Claims requiring interpretation • Considerations for future designs • Competitor assigned • Expired patents disclosing technology • Overly broad applications • Brief discussion of prior art • Monitoring

  11. AIA • Monitoring technology sectors • Preissuance submissions • Must be filed by the later of 6 months after publication or first Office Action • Anonymous • Highlight prior art listed in IDS • Claim chart • Post-Grant Review • Applications filed after March 16, 2013 • Must be filed within 9 months of issue • Ex parte Reexamination unchanged

  12. Questions? • Thank you!

More Related