Attorney-Client Interaction (From the Client Side)

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Presentation transcript:

Attorney-Client Interaction (From the Client Side) Pierre Varineau CTO/Patent Agent Advanced Analytical Technologies, Inc.

Advanced Analytical Privately-held instrumentation company, established in 1998 Sales/Technical/Manufacturing office in Ankeny, IA Sales/Technical office in Germany, France and United Kingdom Worldwide distribution network. > 100 Employees (2009 < 30)

Current Instruments Fluorescent-based Capillary Electrophoresis Multi-channel CE fluorescence detection system for dsDNA fragments, gDNA, NGS fragments, cfDNA, RNA (total, messenger and small) and plasmids. Fragment Analyzer™ Fragment Analyzer INFINITY™ ZAG™ FEMTO Pulse™ UV-based Capillary Electrophoresis OLIGO PRO II - Newly designed multi-channel parallel CE for size-based purity analysis of single stranded DNA and RNA oligonucleotides Full line of consumable products for each instrument pKa PRO placements - Pfizer; Merck; Roche; Sanofi-Aventis; Bayer; BASF; Abbott; Novartis; Elan; Eisai among others Oligo PRO Placements - Invitrogen/Life Technologies (4); Integrated DNA Technologies (6); Illumina (2); MWG (3); TIB (4); Merck (2); Alnylam (2); Takeda among others

Advanced Analytical Technologies… AATI: IP handled with external attorney/internal Patent Agent Agent: Continuous monitoring of patent strategy & portfolio Agent: Write complete patent application External Attorney (McKee,Voorhees & Sease) reviews & modifies as necessary External Attorney: (McKee,Voorhees & Sease)All subsequent prosecution. External Attorney: Monitors all fee schedules. Advantages: Speed (typically < 2 weeks to submit application) Cost—most patent drafting occurs internally at AATI—optimizing attorney fees. Provisionals handled internally. Expertise and guidance of expert patent attorney maintained at highest level. Internal knowledge of patent prosecution enhances client/attorney communication and teamwork.

General Observations of efficient Attorney/Client interaction Pick a single patent firm. Our experience working with multiple firms at once creates problems with tracking priority (and potentially generating troublesome priority issues). Use a firm that understands the agent/attorney advantage AND understands the product/business/technical area. Compile all questions/patent issues on a quarterly basis —in order to maximize face-to-face meeting productivity and billing efficiency If a company selects an internal individual to be an expert to handle the attorney/client relationship, they should become a patent agent. Allows for relevant, educated questions/guidance on Priority, prior art, patentability, “on-sale bar”, etc. Educated, informed monitoring of patent strategy and portfolio

External counsel is absolutely required (Value is Huge) Reputation & Experience 5 rounds of RCE as Patent Agent 1 round with External Attorney (1st try) Patent Agent: Design patent hell External Attorney—1st time, perfect Other major issues: Priority Citizen/country/origin of invention Patentability Appeal