Recent Projects for SMEs

The new CEO of an established security hardware company engaged us to help generate IP protection that did more than just protect a new product. This savvy leader realized that the future revenues demanded by investors were at risk if he did not obtain robust IP protection on the company's break-through innovation. Instead of the typical process where the technical team inventors are the primary point of contact for patent drafting, we first worked closely with this CEO and the company's VP of Marketing to define the value proposition provided to the consumer by the new product. We then drafted a patent application that incorporated not only the specific product features (the "invention"), but, rather, the functionality that made it the product desirable to the consumer (the "innovation"). The resulting patent application covered not only the company's specific security hardware product, but also any competitive product that incorporates the same functional benefit to consumers. The CEO has engaged us for further projects to ensure creation and execution of an IP Strategy closely aligned with the company's 5 year innovation road map.
A startup CEO engaged us to work with his team to define broad patent protection for the company's disruptive technology that solved a long-unmet need in the construction industry. This serial entrepreneur understood that his startup company's ability to achieve a strong exit would depend on whether his patent rights "made it cheaper to go through them than around them." The rapidly developing nature of the underlying technology made this project particularly challenging, but also revealed that, if properly executed, broad patents would be available to this startup. The CEO and CTO of this startup company worked closely with us as they conducted customer discovery to ensure that the resulting patent application broadly covered the value provided to consumers by the promising new technology. We have also served as strategic in-house counsel for this company since its founding, where we have prepared additional strategic patent filings, selected and managed outside patent counsel, and acted as the go-to for advice involving business issues potentially affecting the startup's IP.
An experienced medical device entrepreneur engaged us to review a patent upon which a physician wished to build a new medical device company with our client as a business partner. The entrepreneur sought our advice as to whether the patent could serve as a strong foundation for the company. The patent was prepared by a well-known and highly competent patent attorney, costing the physician about $25K to obtain. The patent clearly indicated that the physician had generated a key insight to improving a common medical procedure that could improve outcomes if a device incorporated the new functionality. Unfortunately, however, the patent did not encompass the functionality but, rather, the specific features of a device that would provide the functionality. This meant that other companies could provide a non-infringing product that provided the same functional benefit. Because this meant that there was a high risk that the investment and effort needed to create a startup medical device company would not meet the entrepreneur's required ROI, he passed on the opportunity to partner with the physician.