Patent Portfolio Development

Patent Preparation and Prosecution

We have substantial expertise in preparation and prosecution of patent applications across a broad range of technologies in the electrical engineering, computer science and life science arts. Specifically, we have experience in procuring patents in the fields of:

  • Internet-enabled Technologies
  • Analog & RF Technologies
  • Storage Solutions
  • Networking
  • Internet-based Marketing and Advertising
  • Software
  • Communications
  • Genomics and Bioinformatics
  • Semiconductors

John Stattler has experience as a full practice patent attorney including experience in patent drafting and prosecution, patent analysis, licensing and litigation. His full practice background supports an approach to patent procurement that leads to commercially valuable and enforceable patents. He also has business and entrepreneurial experience that he brings to bear in counseling and developing IP assets that complement and enhance business value.

Mr. Stattler’s full law practice and business experience, along with our Proprietary Patent Analytics technology, makes our practice particularly suitable for developing strategic patent assets from pending patent applications. We bring a strategic focus to create valuable patent assets by ensuring that claims presented in continuation applications, as well as those amended during the course of prosecution, are done with consideration of a broad range of legal and business issues. For example, we use our Proprietary Patent Analytics technology to identify potential targets and then strategically draft patent claims with an eye on monetization and enforcement.

Software Patents in a Post Alice World

The Supreme Court's decision in Alice Corp. v. CLS Bank International increased the level of scrutiny regarding patent eligibility for algorithmic-based and software patents. Not only has the Alice decision changed how the US Patent Office reviews software patent applications, but it also changes how issued patents are challenged for subject matter eligibility in both federal district courts and at the Patent Trial and Appeals Board (PTAB). In federal district court litigation, challenges may be brought early in the proceedings, and if successful, knock out a patent solely on the grounds of patent eligibility. This shift and emphasis on patent subject matter eligibility brings front and center the issue of whether an issued patent or pending patent application will withstand this challenge.

Patent application claims and specification must be drafted in a manner that will withstand the subject matter eligibility challenge. The days of disclosing only functional steps with mere block diagram figures and obtaining functional only claims have come to an end. Many pending patent applications and issued patents have only basic functions disclosed and claimed. These patents and patent applications are extremely vulnerable in this post Alice world. Our approach is to prepare patent applications with proper claims and supporting disclosures that provide sufficient detail, typically in the form of specific algorithm implementations, to withstand a subject matter eligibility challenge.

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