IP MANAGEMENT CATEGORY

• Invention Analysis– Sometimes the hardest choice is the initial decision to patent or not patent an invention. This service includes an initial evaluation of your invention disclosure and a recommendation on how to proceed based on available information.  Information we may provide in our recommendation includes:
  1. Patentability forecasting (note- this is not a prior art search and patent opinion, but rather an analysis of issues likely to be raised during examination);
  2. Market strengths and weaknesses of the invention;
  3. Prospective licensing opportunities;
  4. Potential return on investment that might be obtained;

• Patent Prosecution Management– Patent attorneys and agents are expensive. Sometimes it isn’t efficient to pay them to look at an office action before deciding how to proceed.  We can review office actions and provide an analysis on the likelihood of overcoming rejections, and the prospective scope and overall value of claims that may be obtained.  This can be done in advance of having legal professionals review the office action, potentially saving hundreds of dollars in attorney fees for each office action received.  We can also provide expert review and analysis of draft responses from legal counsel to ensure the responses are complete and respond adequately to current rejections.  Finally, we can coordinate with licensees to ensure compliance with any agreements, and to ensure the licensee remains satisfied that their concerns are heard.

• Patent Portfolio Auditing– Patent filing and prosecution strategies are easy when an invention is licensed. However, the waters quickly become murky when an unlicensed invention accumulates unreimbursed costs, and this is the most frequent situation.  National stage application costs quickly balloon, and annuities quickly add up.  It can be difficult to abandon a technology as these costs pile up, especially if the inventor is politically connected within your organization.  Having an independent consultant audit your patent portfolio provides an unbiased review of its strengths and weaknesses and can help avoid political fallout from an influential inventor. We can assist you in all aspects of auditing your patent portfolio to develop strategies to limit expenses on:
  1. Pending applications with little or no licensing interest;
  2. Issued patents that are accruing annuities without reimbursement; and
  3. Unlicensed pending and issued patents for inventors with strong political influence.

• Invention Marketing– Without commercial interest in your inventions, patents are little more than expensive trophies. Many academic institutions publish the availability of inventions on their own websites and use marketing sites to push their inventions in a similar manner.  Some academic institutions even have dedicated marketing departments that attempt to generate interest in technologies.  In each case, academic institutions are left waiting for responses that may never come.  SDC will use its proprietary strategic marketing tactics to either generate substantive commercial leads or establish that a technology has limited licensing potential, thereby allowing more informed patent management decisions.When SDC knows it will be handling subsequent steps, it can substantially advance the marketing process by suggesting terms that might be attainable during negotiations, thereby providing motivation for the interested party to act.  Therefore, SDC recommends combining its Invention Marketing, Technology Valuation, and Commercial/Internal Use Agreement Negotiation services to maximize client benefits.

Please contact us if you are interested in learning more about how SDC can help you achieve your technology transfer goals.