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Published byLucinda Pierce Modified over 9 years ago
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KramerAmado Clearance Studies Akron, Ohio on May 22, 2013 www.krameramado.com
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Overview Clearance generally The KramerAmado Difference AIA as applied to Clearance
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K&A Objectives Primary Objectives: Help in-house counsel advise internal clients with regard to Right-to-Market Identify risks early in the commercialization process Design-Around if possible Secondary Objectives: Competitor activity Prior art for patent applications Licensing targets
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Clearance Opinion Low-Risk Results Invalidity Opinion Non-Infringement Opinion Resolved Claims Clearance Flow-Chart High-Risk Results Clearance Study Clearance Study Non-Infringement Study Non-Infringement Study Notice From Patentee Invalidity Study Invalidity Study Unresolved Claims New/ Modified Product Direct Invalidity Investigation Non-Infringement Study Claim Construction Non-Infringement Analysis Design-Around Invalidity Study Claim Construction Invalidity Search Invalidity Analysis Clearance Study Product Description Clearance Search Results Analysis
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Benefits of Opinions Preemptively manage risk Minimizing enhanced damages Removing “unknowns” and streamlining product development Memorializing analysis for next-generation products Facilitating valuations for licensing
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The KramerAmado Difference Timeliness Certainty Guidance
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Timeliness Meet all deadlines Docketed Items Confirmation of product description Completion of in-house patent search Follow-up questions if necessary Preliminary Analysis/Opinion Written Opinion
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Certainty Technical Understanding Clear understanding of the product exemplified by the Product Description What are the features of the product and their alternatives? What are the end customer uses of the product? Market Understanding Who are the competitors in this field? Who are the main IP holders? Is there NPE activity in this technology area?
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Guidance Preliminary Analysis/Opinion Spin-off opinions if necessary Written Opinion Product description Search scope Classification search Keywords, assignees, inventor names Discussion of relevant documents including literal and DOE analysis Discussion of applications including current claims, status, and monitoring
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Guidance What is highlighted for discussion? Claims requiring interpretation Considerations for future designs Competitor assigned Expired patents disclosing technology Overly broad applications Brief discussion of prior art Monitoring
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AIA Monitoring technology sectors Preissuance submissions Must be filed by the later of 6 months after publication or first Office Action Anonymous Highlight prior art listed in IDS Claim chart Post-Grant Review Applications filed after March 16, 2013 Must be filed within 9 months of issue Ex parte Reexamination unchanged
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Questions? Thank you!
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