Patents

Develop an IP plan to facilitate your business plan

At Perkins Coie, we view intellectual property as a means to protect your valuable technology and branding and increase the value of your enterprise.  We work closely with you to understand your business strategy and tailor an IP program to match that strategy.  Whether your business plan calls for a quick market entry or a sustained technology development program, whether you are looking for private or public investment, whether you plan to expand on your own or merge or acquire, we will ensure that your IP plan parallels your business plan.

Identify your initial patent filings

We work with you to identify multiple aspects of the core technology you plan to develop and protect that technology from multiple angles to increase its value and optimize flexibility.  We use patentability searches to help you understand the technology landscape and craft high-quality patent applications that increase your potential for valuable patent protection and can withstand litigation.  We develop strategies to take advantage of government programs that expedite getting your patents to issue, particularly those that favor clean technology inventions.  We work with you to understand who your competitors are and where they are most active, and then tailor a domestic and international strategy to protect your technology.

Perform an initial clearance review

As part of your early business planning, we work with you to assess the strengths and weaknesses of your technology in light of other patent stakeholders in your technology area.  We provide patent clearance or "freedom to operate" reviews to help identify the risks associated with technology at an early point in the development process, and if necessary, help you develop commercially meaningful technology "design-arounds" when the landscape includes potentially blocking patents.

Prepare for financing

Whether your business plan calls for multiple private investment rounds, an IPO, a strategic merger or any of a variety of other growth strategies, we work with you to prepare your patent portfolio for investor review.  We help you prepare for the hard questions you may face in a due diligence inquiry and work with investors' counsel to resolve issues quickly.

Identify licensing opportunities

As we help develop your patent portfolio, we identify opportunities for you to obtain a revenue stream from your patent holdings via licensing.  We also develop cross-licensing strategies early on to expand your bargaining power if you encounter adversities with other patent holders.

Develop patent capture program

We work with your internal technical and legal leaders to develop programs for capturing intellectual property.  These can include employee incentive programs for identifying and encouraging new intellectual property development, assistance in selecting which IP assets hold the most potential benefits for the company, and selecting the best way to protect those assets.  We offer periodic educational seminars to your employees and management, as appropriate, to sustain the focus on IP.  If your company is developing technology jointly with other entities (governments, universities or companies), we work with you on agreements that enhance your IP position and protect your IP contributions.

Trademarks

Develop potential marks 

We will work with you to identify and clear your early-stage trademarks and domain names and protect those assets either as soon as or before your business operations begin. This way you can ensure that right from the start you are developing consumer goodwill in your brands that will carry you through to the later stages of your company's development. Utilizing clearance searches and counseling regarding the strength of your chosen brands we will help you make sound decisions about which marks best suit your short and long term business and marketing plans. We will also help you avoid choosing marks and domains that conflict with your competitor's and potential competitor's rights.

Mark availability clearance 

We recommend selecting your early-stage trademarks and domain names before you launch your website or open your doors for business and can help you develop a reasonable budget for this process. Through in-house and vendor-provided searching we will advise you regarding the availability of your chosen marks and provide a risk assessment for each potential mark to help you with the brand decisionmaking process. We provide several levels of searching to fit your budget and risk tolerance profile. We recommend all marks be cleared at least in the United States and, if there are clear international opportunities and plans for the distribution of your products and/or services, we recommend having them cleared internationally in your initial target countries.

Securing your trademark rights 

We recommend filing U.S. trademark applications to register your key brands as early as possible and ideally before your business operations begin. We will help you understand the benefits of trademark registration and explore the potential products and services that you intend to offer to ensure that your trademark applications broadly cover your initial plans while leaving room for expansion. We will also clearly explain the cost of U.S. trademark registration as well as the process, which is outlined in the diagram below, so that you will know what to expect both in terms of budgeting and the time frame.

Strengthen your blocking patents

As you prepare for commercial launch, we help strengthen your patent position to prevent competitors from easily copying your technology.  We help you develop and maintain appropriate patent marking programs that track your evolving patent assets.

Strengthen your cross-license potential and license position

We work with you to further improve your patent cross-license position should you become engaged in a patent dispute after entering the marketplace.  We can "mine" your early patent filings for intellectual property that provides value to other entities and enhances your bargaining position in such a dispute.

Update your patent filings to reflect technology progress

As you prepare to enter the market, we update your patent filings to capture your most recent developments and anticipate developments that you or your competitors may make after your product is launched.

Be prepared for litigation

Your visibility to competitors and other patent holders will of course increase significantly once you enter the market.  We work with you to prepare for possible patent disputes with the other stakeholders in your industry.  Our patent litigation attorneys provide timely up-to-date advice on a wide variety of strategies for managing litigation risks and costs while simultaneously protecting the IP position you have established.

Trademarks

Update filings to reflect product/service updates.

Update your patent capture program

As your company grows, we work with you to adjust your IP capture program.  We help you develop a patent review process to select the best IP developments emerging from your continued technology advances.  We help you develop agreements with the subcontractors and other entities with whom you work to protect your IP investments in the teaming arrangements you may enter into.

Develop IP to protect large-scale technology improvements

The challenge of providing products and services to your customers on a large scale can itself generate new technologies. We work with you to protect those technologies.  Your products and services will typically undergo improvements or shifts that enhance your competitive position – we work with you to protect those advances as well.

Update your patent filing strategy to capture international rights

As your business grows, your international patent filing strategy may need adjustments.  Countries that were not initially important marketplaces may become more relevant as your products and services gain greater acceptance.  At the same time, the competitive landscape, and the countries in which your competitors are active, may change.  We work with you to update your foreign patent strategy to account for these and other shifts in your business and your business environment.

Leverage your patent licensing opportunities

Your expanding patent portfolio can open new licensing opportunities.  We work with you to take advantage of these chances.

Manage, maintain and expand your IP portfolio

As your technology continues to develop, the value of some patent assets may shift.  Assets that at one time were of high value to the company may not be able to sustain their position, at least to your company.  We can work with you to find buyers for your assets and/or strategically prune assets.

Mergers and Acquisitions

You may buy other companies to shore up your market position, secure supply chains, secure additional IP assets, or achieve any of numerous other business goals.  On the other hand, your company may be bought by another company seeking to meet its goals.  We can help you evaluate the IP assets you may purchase, and/or increase your company's value to a purchaser by strengthening your patent portfolio.