A primary area of the firm’s practice is the drafting and worldwide prosecution of patent applications. The firm engages in strategic procurement activities and not generating, narrow, commercially insignificant patents. Virtually every patent application the firm drafts and prosecutes is focused on a technology with a high likelihood of commercialization. As would be predicted, clients expect the firm’s practitioners to bring their best to the table every day; they do. …read more >>
The practice group forming Abel IP has drafted and prosecuted thousands of U.S. and foreign patent applications for US and international clients. The group has particular expertise in formulating patent applications that are optimized for worldwide prosecution, whether in front of the USPTO, EPO, JPO, or KIPO, or any other patent office throughout the world. Pending dockets of international applications and close cooperation with hand-picked foreign associates drive the group continually to improve and refine drafting and prosecution strategies to protect clients’ business operations. Despite the volume of patent preparation and prosecution matters the firm handles, the practitioners pride themselves on understanding the larger business plans of the firm’s clients and integrating those plans with the patenting process.
Over the last decade, clients have become increasingly cost-conscious with respect to patent procurement. Abel IP has implemented a host of strategic processes to meet clients’ demands for cost-effective services. For example, Abel IP has maintained low overhead and reasonable billing rates that allow senior attorneys sufficient time to handle a particular client matter by themselves, or closely supervise associates while staying within the client’s drafting and prosecution budget. The close supervision includes setting up the patent drafting and prosecution strategy, determining claim scope, and interfacing with inventors and USPTO examiners. Senior attorney involvement in every matter enhances the quality of legal services and ensures a consistent IP strategy across the entire patent portfolio of a given client.
Strategic Intellectual Property Counseling
Hallmarks of the firm’s practice include the development of a robust understanding of client business plans and client positioning in the marketplace. Development of such a relationship enables a tailor-made IP framework for each client.…read more >>
The group manages large (2000+ pending US and international patent applications) and small patent portfolios. Independent of size, each portfolio is designed to have maximum impact to strengthen clients’ business objectives through close cooperation with the firm’s practitioners. Portfolio development is but one tool in a client’s overall IP framework, and often the firm’s practitioners are called upon to provide advice on a wide variety of issues from IP Due Diligence and Patent Landscape and Freedom to Operate Analyses, to IP Audits and Legal Opinions.
In addition to traditional counseling roles the firm takes on in its representation of clients, Abel IP is called upon to function as in-house counsel for the firm’s clients. Practitioners of the firm have benefitted from previous in-house experience with large and small technology companies, and have the technical horsepower and business sophistication to assume those roles with ease. The firm takes great pride in being able to anticipate and meet the needs of the busiest and most sophisticated clients. Abel IP’s undeniable client focus and understanding contribute to notable reduction of transaction costs in consulting with outside counsel, in terms of actual costs and effort.
IP Due Diligence
Abel IP attorneys have experience in conducting both buyer-side and seller-side IP due diligence matters, including hands-on experience as both buyers and sellers of businesses and IP portfolios. Abel IP has conducted IP due diligence on transactions ranging from $300MM+ M&A deals, to venture capital-backed emerging technology companies and university spin-outs.…read more >>
In the context of buyer side IP due diligence, the group focuses on the impact of IP on commercial value of a target by reviewing its patents, trademarks, copyrights and trade secrets, and determining their potential contribution to competitive advantage in the market. The firm’s attorneys investigate the validity of the target’s patents and review the landscape of third party patents to evaluate potential blocking of the commercialization of the target’s products and/or services.
The IP due diligence process is different for every transaction. We tailor the due diligence process to the size and scope of each transaction. During the process, we focus on the value of the target’s IP portfolio, potential patent roadblocks to the target’s commercial activities, and any problems associated with IP agreements.
Patent Landscape and Freedom to Operate Analysis
Abel IP attorneys have significant experience in performing patent landscape and freedom-to-operate (FTO) analyses. The firm’s practitioners have well-developed search capabilities and, as-needed, proven, fully-vetted professional search firms can be employed secondarily to uncover third party patents that may be relevant to a client’s freedom to commercialize products and services. Abel IP has a particularly well-developed practice in the FTO space, driven by the firm’s client base that is quite active in exploring new product lines. FTO services have been provided in a wide range of technology areas, virtually spanning the entirety of technology practice areas.
IP Audits and Harvesting
IP audits are performed to enhance the value of the client’s IP and proactively to address any deficiencies in an existing patent portfolio. IP audits are oftentimes performed on internal IP assets prior to licensing efforts such as in a joint development or similar context, at the initiation of M&A activity, or at a new round of venture funding. Thus, an IP audit may be conducted as “reverse due diligence” to ensure that a client’s IP and other intangible asset values are optimized and presented in a way that is attractive to potential partners and investors.…read more >>
The firm’s attorneys are also skilled at conducting patent harvesting sessions, directed to encouraging a client’s employees to extend corporate patent assets. Harvesting sessions often reveal that even the most sophisticated clients are prone to leaving valuable technology unprotected, sometimes due to erroneous conclusions on patentability.
Abel IP attorneys have significant experience in rendering opinions of counsel. Such opinions capture infringement/non-infringement, invalidity, and unenforceability positions. Non-infringement, invalidity and unenforceability opinions memorialize reasons why a client’s products or services can be commercialized free of particular patent(s) and, in the US, can be used defensively against accusations of willful infringement. Infringement opinions generally investigate whether a third party may be infringing the claims of a client’s patent, and are useful in a pre-litigation context.…read more >>
Abel IP opinions are tailored to the business interest of the particular client and its specific budget. The firm has experience in rendering opinions ranging from formal opinions of counsel to less formal memos and oral opinions to assist firm clients in making important business decisions. To render competent opinions that will withstand the attack in litigation, the firm’s attorneys keep abreast of the current case law and rely on their deep understanding of patent law from complementary practice areas.