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

2. 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)

3. 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

4. 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.

5. 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

6. 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