Protecting Inventions
Susan Dierenfeldt-Troy provides comprehensive legal services related to patent procurement, patent monetization, and patent rights enforcement for both US and International clients. Her services are specifically tailored to her clients’ needs and objectives and include the following:
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Patentability Assessments
It is important to understand that the absence of a similar product in the marketplace does not mean that there is no existing prior art. Before investing time and money on patent applications, it is therefore highly recommended that a prior art search be conducted to understand whether the invention meets patentability requirements. Susan conducts prior art searches to evaluate the likelihood of a new invention’s patent claims being approved based on the prior art.
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Utility and Design Patent Application Prosecution
Susan drafts utility applications that define the invention’s uniqueness with the objective of maximizing the number claims that will be approved by the USPTO’s patent application examiner. For design patent applications, which consist of one claim, the objective is to ensure that the drawings clearly define the invention’s patentable aesthetic features which are being claimed. Should the patent application face patentability challenges from the examiner, she uses her experience and expertise to draft appropriate responses which may include claims amendments. Patent prosecution services may also include having an interview with the examiner to clarify the issues. She works closely with professional patent illustrators to ensure that the drawings to be submitted with a new utility or design patent application accurately define the invention and meet the USPTO’s drawing requirements.
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Post Patent Grant Management and USPTO Proceedings
Susan’s legal services include patent reissue and re-examination proceedings before the USPTO. Her services also include monitoring client patent portfolios to track patent maintenance fees due dates and the remaining lifetimes of patents.
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Patent Licensing & Monetization
Beyond obtaining patent protection, Susan also assists her patent clients in monetizing their patents. Monetization may involve the client’s own manufacturing/distribution of the patent’s underlying product/technology and/or the licensing of the patent. Here, Susan’s legal services involve drafting and negotiating appropriate contracts between the patentee and their monetization partners from contract manufacturers to suppliers to licensees. These services also include investor consultation services on matters related to patents and other types of IP.
