In order to be commercially successful, most ideas need to be properly developed and marketed and team and execution are usually the most important factors. However, protecting the idea with available intellectual property rights is often a critical initial step and typically requires preparing, filing and prosecuting one or more patent applications.

Deciding which law firm or patent attorney to work with is often a challenge. Here are some tips to consider:

1. Avoid the “idea marketing” firms often listed in Google searches. As stated by the US Patent Office “Every year invention promotion scams cost U.S. inventors an estimated $200 million”. Beware.

2. Find a patent attorney or agent who has written many patent applications and request samples. If the invention is important, an experienced patent attorney is recommended.

3. Find a patent attorney or agent who has written patent applications in related technologies by searching published applications and patents on the uspto.gov website. You can often determine the attorney who drafted and filed the application from the submissions or published applications.

4. Find a nearby patent attorney or agent if you are more comfortable working face-to-face. You can search for patent attorney’s in your area using the US Patent Office website here.

5. Cost should always be a factor, but like anything else, “you get what you pay for”. If possible, use a cost-effective law firm with an entrepreneurial spirit and ask about rates and who will actually be doing the work.

Good Luck.

On June 9, 2011, the U.S. Supreme Court affirmed the Federal Circuit’s judgment, which had affirmed the district court’s judgment that awarded i4i $240 million for Microsoft’s infringement of U.S. Patent No. 5,787,449.

The Supreme Court stated: “We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.”

The Court continued: “According to its settled meaning, a defendant raising an invalidity defense bore ‘a heavy burden of persuasion,’ requiring proof of the defense by clear and convincing evidence. That is, the presumption encompassed not only an allocation of the burden of proof but also an imposition of a heightened standard of proof.”

Thus, by a unanimous decision, the Supreme Court rejected Microsoft’s argument and affirmed the Federal Circuit’s strong presumption of proof that granted U.S. patents are valid.

Patents have many legitimate strategic uses, which seem great until you receive a letter or notice from someone claiming you are infringing one or more patent claims.

The following are some actions that can be taken by a business after receiving such a notice.

(1) Quick Check – Review the limitations of each asserted independent claim to determine if there are any required limitations clearly not found in your product or service. Although I recommend working with a patent attorney, the initial review can be done by someone familiar with both patents and the technology to determine if there may be a component or method step required by the claims and not found in your product or service. This will provide a quick assessment of the threat level and whether the letter is a mass mailing or something more serious.

(2) Design Around? – If No. (1) determines that the asserted independent claims may cover your product, determine whether there is an easy way to redesign your product to make it clearly non-infringing? Determining this early can help frame your strategy going forward.

(3) Ownership & Status? – Confirm who really owns, or has owned, the patent and whether there are co-owners. There may be another entity able and willing to license the patent to your company. For example, is there a listed inventor who didn’t work for the patent assignee and might not have assigned his or her IP rights to the entity asserting the patent? Or, was the patent acquired from another company that retained some IP rights including the ability to assign or sublicense to your company? Evaluating the chain of ownership can sometimes yield alternate paths to a license under the patent. Has the patent been maintained or has it been abandoned for failure to pay a fee? It’s rare, but easy to check and worth doing.

(4) Counterpunch – Does your company have any patent(s) that can be used to cross-license or counter-sue? If not determine whether your team can innovate ahead of one of the other company’s products (e.g., improve one of their important products and file a patent application for possible future cross-license) or try to acquire from a third party?

(5) Invalid? – Perform a thorough prior art search to determine if the asserted patent claims are valid. It’s important to keep in mind two things. First, patent examiners have very limited time to research whether a patent application is patentable so performing a more thorough search can sometimes yield “knock-out” prior art. Second, the standard for patentability has recently been changed by Supreme Court decisions. As a result, a patent granted several years ago under the old standards (e.g., the former standard for “obviousness”) might not be valid today under the new standard. Also review the claims for any other invalidating defects. Review the file history of the asserted patent for any vulnerabilities including reviewing any and all related applications. Not only does the US Patent Office sometimes make mistakes, so do inventors or those prosecuting the patent application.

One of the most critical actions, forming the right team, will be addressed in Part II.

This Article was originally posted on Rimon Law Group’s Blog.