Fractional IP Counsel
Tech startups typically do not (and should not) hire a full-time in-house patent counsel in their early years. Yet patent portfolio creation and management requires an experienced patent eye, time, and an inside perspective. And a strong patent portfolio is often critical to attracting investment, supporting partnerships and commercialization, and securing long term value for the company’s most important assets. Given that adding internal patent counsel to early-stage head count is not viable, tech startups naturally turn to outside counsel for assistance. But typical “outside counsel” patent firms are not necessarily best positioned to efficiently handle patent management for startups. And startups need to understand those limitations and how to fill the gap.
Most patent firms are good at handling high volume patent drafting and prosecution. They have the infrastructure to scale prosecution operations, and, in turn, they need volume at scale to cover the infrastructure cost. However, in a high-volume environment, most law firm patent attorneys function best and most cost efficiently when the client can provide specific and clear directions informed by patent knowledge, including “patent-ready” invention disclosures as a starting point. It works best when the client can make strategic decisions informed by knowledge of the company’s full financial, product development, strategic positioning PLUS knowledge of the nuances, possibilities, and limits of patent protection. In sum, the typical law firm patent lawyer does the job best when a patent-savvy person at the client (e.g., an “in-house” patent counsel) is guiding the work.
But without an in-house patent counsel, a startup’s typical options for developing appropriate internal patent strategy and oversight include: (1) A co-founder such as a CTO or other key person spending significant and valuable time learning how to best build and manage the company’s patent portfolio; and (2) Outside counsel spending significant time at high billing rates to go beyond simply writing and prosecuting patent applications and provide the sort of in-depth analysis of the company’s business and technology to effectively guide the company’s patent decision-making.
Mauriel Patents offers another alternative. We can provide your company with an in-house patent counsel function on a limited, but consistent basis without adding to your company’s headcount. Instead of co-founders or other key early employees having to build and manage a patent portfolio, you can turn to Mauriel Patents to provide an experienced patent attorney who:
- Spends the time needed to learn your company’s technology and product strategy from the inside out.
- Works with you from an inside-the-company perspective to plan and execute a strong patent program including strategy, internal processes, developing invention disclosures, and, when necessary, selecting and overseeing the right outside counsel for your portfolio.
- Develops strong guidelines for outside counsel to follow that match your company’s needs and promotes efficient and effective portfolio building.
- Is readily available to consult with you on related IP matters including litigation, employment, licensing, due diligence, and freedom-to-operate.
- Provides an optional monthly fixed fee arrangement that allows you to leverage expertise at a fraction of the effectively hourly cost that typical outside patent firms would need to charge for an attorney with comparable skill and experience.
Patent Preparation and Prosecution
Mike Mauriel has prepared and/or prosecuted hundreds of patent applications in helping build patent portfolios for individual inventors, funded startups, major universities, and Fortune 500 companies.
Mauriel Patents handles patent prep and prosecution from initial invention harvesting to helping develop and refine invention disclosure materials, preparing applications, and prosecuting them through the USPTO including, if necessary, appeals and post-grant proceedings.
Patent Prep Approach
Mauriel Patents works closely with inventors to understand the invention, articulate the most critical details of the invention disclosure, and prepare a patent application with text and drawings that presents the invention clearly and directly for inventors, executives, investors, technology peers, patent examiners, judges, juries, strategic partners, and competitors in need of a license.
Guiding principles include:
- Understand the invention and its context. The patent application should not hand wave over difficult aspects of the disclosure.
- Prioritize clarity and readability. That gets the reader on the inventor’s side. Include various alternative implementations, but do not bury the invention amid a pile of boilerplate or contorted hedging. Writing that tries to cover everything ends up coverying nothing.
- Sculpt the independent claims down to the invention’s essence, layering the details in dependent claims.
- Write claims to cover single-entity infringement (if instead a claim’s elements require multiple entities acting together, enforcement might be difficult or impossible).
- Patents do not cover ideas. They cover implementations of ideas. Make sure the application has sufficient details supporting those implementations.
Patent Prosecution Approach
A patent examiner’s first office action usually rejects the claims. Most competent patent attorneys can readily refute a patent examiner’s position in a written response to that office action. But the examiner’s real thinking regarding the claims is often not discernible from the written office action. Conducting an effective Examiner Interview is often the difference between making meaningful progress towards allowance rather than continuing to spin wheels with repeated and expensive cycles of written response and patent office rejections. The skill of interacting productively with an examiner in real time during an Examiner Interview, honed through years of experience, helps separate the best patent prosecution attorneys from the others.
If the first response fails and a second rejection issues, it is often designated as a “Final Rejection.” But it is not in any sense “final.” In fact, so-called “after-final” practice might be the most important part of the prosecution process. While many attorneys and clients reflexively elect to file a “Request for Continued Examination” (RCE) as the next step to get additional rounds of consideration with the examiner, RCEs come with associated USPTO fees that have grown significantly in recent years. There are opportunities to leverage the after-final period through further responses, interactions with the examiner, and/or starting the appeal process. Effectively utilizing these “after-final” levers can either avoid an RCE or, if an RCE is eventually filed, help make further progress in the prosecution that enhances the likelihood that only one RCE will be needed before getting to allowance.
Mauriel Patents relies on years of experience navigating some of the USPTO’s most difficult art units to help clients achieve their goals effectively and efficiently. We work with examiners when possible and maximize procedural advantages when necessary. Most importantly, we take the time to understand the invention in view of the prior art so that we can help the examiner see the difference clearly.
Representative Work
- Field Programmable Gate Arrays. Wrote and prosecuted dozens of patents for Altera Corporation, later acquired by Intel.
- Scientific Instruments. Wrote and prosecuted dozens of patents for Thermo Fisher Scientific covering optical, microfluidic, computer, bioinformatic, and AI aspects of capillary electrophoresis, qPCR, and dPCR instruments and microarrays.
- Deep Learning / Machine Vision: Prepared foundational portfolio of patents covering AI-based medical image analysis for a global pharmaceutical company.
- Photonic Devices: Prepared and prosecuted a portfolio of patents for Duke University.
- Alternative Energy: Prepared and prosecuted patents related to hydropower and hydrogen generators.
- Media Monitoring: Prepared and prosecuted a small portfolio of patents on media monitoring technology that was recently used to obtain a $78.5 million damages award in district court.
- Medical Devices: Prosecuted a portfolio of hearing aid patents for a Bay Area startup, subsequently acquired by one of the Big Five tech companies.
- Superconductors: Prepared and prosecuted a portfolio of patents related to superconductors for the University of Rochester.
- Quantum Computing: Prepared several patent applications related to quantum computing hardware and software for Silicon Valley companies.
Opinions and Analysis
Mike has written formal patent opinions and provided patent analysis in the context of licensing negotiations, freedom-to-operate evaluations, litigation and pre-litigation activities. He has provided the substantive work to help clients assert patents, defend against patent assertions, improve settlement terms, and sell or otherwise monetize patent rights. He has also provided patent analysis in the context of due diligence for corporate acquisitions and for financing transactions including presenting client portfolios to potential investors.
Clients can turn to Mauriel Patents anytime the need for reliable patent analysis arises. Also, litigation counsel whose clients need independent formal opinions or analysis can turn to Mauriel Patents to provide thorough and credible guidance and work product.
Litigation Support
Mike has worked on more than twenty high-stakes patent cases, both as trusted outside co-counsel and as a member of litigation teams within his own firms. Litigation counsel rely on Mike to provide thorough and efficient substantive patent analysis that helps steer the case towards favorable resolution. Patent litigators have used Mike on high-stakes cases to, among other things:
- Develop non-infringement and invalidity positions against large patent portfolios.
- Lead client-side technical investigations for fact discovery and for internal evaluation of exposure risks.
- Identify, retain, and work with expert witnesses on technical issues relevant to invalidity and/or non-infringement issues.
- Work with technical experts providing testimony and help litigation counsel align substantive positions in court briefs to the expert testimony.
- Help expert witnesses prepare for depositions.
- Prepare lead counsel for oral arguments.
- Prepare invalidity contentions and non-infringement contentions.
- Draft substantive sections on invalidity and non-infringement for dispositive motions including motions for summary judgement.
- Work with joint defense counsel to develop invalidity positions including participating in and helping coordinate a joint defense group for one of the largest patent multi-district litigation cases in history.
- Prepare reexamination requests to invalidate patents and to provide leverage for favorable settlement.
- Explain non-infringement and/or invalidity positions to opposing counsel to promote favorable settlements.
Mauriel Patents can help big firm patent litigators deliver expertise and value to their clients. The most experienced attorneys at large firms have the highest billing rates. By adding Mauriel Patents as co-counsel, big-firm patent litigators can give clients an economically efficient way to add depth and experience to their case teams.