IP as a strategic business tool

U.S. companies are increasingly aware of the benefits and risks regarding intellectual property (IP) given the shift to a knowledge-based economy. While there are general approaches to the intellectual property strategy in each industry, The Dobrusin Law Firm works with clients who understand that a specifically tailored IP strategy is a critical part to successfully achieving the company’s corporate goals and objectives.

The firm works with clients who view IP as a strategic business tool and desire to be a technology leader in their market. The firm tailors its advice to fit the size, needs and subject matter of its clients. Practitioners at The Dobrusin Law Firm regularly work on extensive global patenting programs and provide opinions related to products in the manufacturing, materials, pharmaceutical, food and alternative energy industries. They regularly work with global clients with IP issues unique to the U.S.

Outside of the U.S., there is generally an absolute novelty requirement to obtain a valid patent grant. In the U.S. there is a twelvemonth grace period. Non-U.S. companies are advised to consider the potential that patent protection may still be available in the United States even if no longer available in their own country. The Dobrusin Law Firm can advise clients in determining whether valuable IP protection may still be available. The firm maintains excellent relationships with quality professionals around the world to make sure its strategies are current and effective with changes to laws in other countries.

The Dobrusin Law Firm helps its clients take advantage of the flexibility of the PCT in national phase filings. The firm advises clients to adapt their PCT applications to US practice and works proactively to prevent unnecessary problems. Recent U.S. Patent Office statistics indicate that PCT application filing rates are rising and the allowance rate for U.S. patent applications has risen a full 3 percentage points in the last year.

U.S. companies now fully embrace the PCT’s advantages even though the U.S. Patent Office acknowledges it can still significantly improve its handling of PCT applications and has announced specific changes. Companies need to be aware of these changes and the potential effects on their pending applications. Proposed changes with potential benefits include a three-track application process and broader implementation of the Patent Prosecution Highway program.

The U.S.’s version of a patent court (Federal Circuit) recently issued a significant holding (Pequignot v. Solo Cup) regarding the false marking of products with patent numbers. Implementing a process for properly managing product markings and obtaining an opinion of competent counsel are some steps that should be taken to limit a company’s risk exposure from a false patent marking lawsuit. The U.S. Supreme Court also recently issued its long-awaited decision regarding patentable subject matter (Bilski v. Kappos), such as a business method, and The Dobrusin Law Firm is counseling clients on how to manage the impacts in various fields such as medical diagnostics.