Imagine That IP Law Blog

For companies seeking patent protection in Germany, timing can be critical. An applicant may want rights in place quickly to strengthen its position against competitors, support licensing or investment discussions, or prepare for possible enforcement. But the fastest route is not always the same as the strongest or broadest form of protection. In Germany, applicants can choose among several options that balance speed, cost, and claim scope in different ways. In many cases, the most effective strategy is to combine short-term protection with a longer-term examined patent ... Read More ›

The United States Patent and Trademark Office (USPTO), led by Director John A. Squires, has issued a notice of proposed rulemaking to revise the rules governing inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). The proposed amendment would expand 37 C.F.R. § 42.108 by adding new subsections (d) through (g) to clarify when the Office may decline to institute an IPR, even when a petition otherwise meets statutory thresholds.

The proposed changes would narrow those IPR proceedings that are instituted. The Director aims to prevent IPRs from duplicating ... Read More ›

Let’s face it: patents are expensive and most fail to be profitable. For any typical patent portfolio, the challenge is to efficiently weed out the winners from the duds and then assert the winners strategically to effectively monetize the portfolio.

To successfully monetize a patent, one must: 1) prove infringement of one or more asserted claims, 2) defend the asserted claims against invalidity attacks, and 3) establish high-impact damages caused by the accused products’ infringement. So, how does one mine a portfolio for patents that are most likely to help achieve these ... Read More ›