Well tailored value creation methodology combined
with patent prosecution strategy can develop new patent portfolios for maximum
ROI from existing patents. Many patent applications and newly issued patents
can be further developed for creating new values by amending and creating claims
and generating family patents to encompass emerging technology and products/services
trends, market demands, and strategic exploitation goals (e.g. cross-licensing,
monetization etc.).
Step 1: Portfolio Review & Candidates Selection
Project
Scope
A client’s patents are reviewed and categorized
as standard relevant and application specific patents. The categorized patents
are evaluated to select good candidates for value creation.
Deliverables
Excel file for the relevant standards (e.g.
802.11, 3GPP LTE etc.) and applications (e.g. mobile health care, smart home
etc.) and list of candidates for value creation.
Step 2: Analysis for Selected Candidates
Project
Scope for Standard Relevant Patents
The selected
patents are further analyzed to find candidates for standard essential patents
(SEPs) and development as SEPs with respect to the specific standards. For the
SEPs candidates, the claim-standard specification mapping is performed to
generate EoU claim charts. For the development candidates as SEPs, the model
claims are constructed which can make a candidate as a SEP with respect to a
specific standard. Additional claims are constructed to capture the unclaimed
embodiments in the candidates’ detail descriptions.
Deliverables
EoU claim charts
for the SEPs candidates and model claim charts for the development candidates
as SEPs. Suggested claims that can capture the unclaimed embodiments.
Project
Scope for Application Specific Patents
The selected
patents are further analyzed to find candidates for commercial essential
patents (essential for commercial product/service implementation), patents for
market platforms (dominant designs), and patents for disruptive technologies
(for future market generation potential). Existing claims are amended and
additional claims are constructed to capture the unclaimed embodiments in the
candidates’ detail descriptions to reinforce the protectability (against
invalidation), enforceability (against potential infringement), and
marketability (for monetization, new products/services etc.)
Deliverables
Report for brief
explanations regarding candidates for commercial essential patents, patents for
market platforms, patents for disruptive technologies. Amended claims and
suggested claims that can create new values.
Step 3: Strategic Prosecution
In
collaboration with engineers, business professionals, in-house counsels, and
outside prosecution counsels, the optimal prosecution strategy is developed,
final claims and methods of prosecution (continuation, divisional, reissue
etc.) are devised, and all prosecution activities are managed and carried out.
Deliverables
Coordination of
prosecution processes.
TechIPm’s technology expertise includes:
Mobile Computing & Wireless Communications
Technology: LTE, CDMA (CDMA 2000, WCDMA, HSPA), WLAN, WPAN, RFID, NFC, WSN,
Cognitive Radio/SDR, Optical Wireless, Mobile TV, Mobile Cloud Computing, RF
MEMS, RFIC etc.
Smartphone Applications: Biometrics, Location
Base Services/Indoor Navigations, Mobile Payments, Augmented Reality,
Wireless/Mobile UI, IoT (Internet of Things) applications etc.
Green ICT: M2M, Smart Grids, Green Wireless
Technologies, Electric Cars etc.
Bio & Medical IT: Mobile Healthcare (IEEE
11073 PHD, WBAN), Biometrics, Digital Imaging and Communications in Medicine
(DICOM) etc.
For more information, please contact Dr. Alex
G. Lee at alexglee@techipm.com
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