IP Strategy and Risk Management

RatnerPrestia’s IP Strategy & Risk Management Practice creates value by creatively and efficiently producing plans to minimize and control risk in the ever more complicated IP world.

Clients everywhere are facing tougher competition as technology continues to be developed at increased rates and in places that, until recently, were not driving technological advances as they are today. This increased pace of development makes it more difficult than ever for our clients to stay ahead. And with this seemingly seamless interplay of R&D, manufacturing, IP development and protection, comes the inevitable change to U.S. IP law, necessary in this new age to address the new realities of our global marketplace. Both the U.S. Supreme Court and Congress continue to show unprecedented levels of activity in responding to the changing economic climate. This activity, both technological and legal, can leave even the most sophisticated company wondering where it can turn and what it can do to gain and maintain a competitive edge.

RatnerPrestia has been ahead of this curve, historically taking a very proactive approach to counseling our clients, both offensively and defensively, with sound legal expertise, combined with a reasonable business approach to the reality of IP risks and rewards. The bulk of the IP Strategy & Risk Management Practice focuses on freedom-to-operate studies and opinions, infringement/noninfringement evaluations, patent scope, enforceability advice, and post-grant review and re-examination strategies. The group has also seen a rise in the need for counseling clients on international activities as those activities relate to exposure in the U.S.

Defensive Risk Management

Freedom-to-operate studies (also referred to by some as “Right-to-Use” or “Clearance” opinions) require a complete understanding of the product or process sought to be used by the client. From there, a search of appropriate scope and depth is designed and our lawyers work closely with the searcher, whether it be in-house or outsourced, to insure effective results. Then, appropriate and efficient review of the sometimes hundreds of patents is conducted to reach a “shortlist” of risk-generating references. These references are then studied further through a review of their respective file histories. This process may result in a number of possible outcomes. The desired outcome, of course, is the clearance position. Sometimes a design change is explored with the client. Other times, a validity study of a patent or two is undertaken. Sometimes the result is a combination and/or iteration of the above. Post-grant review and re-examination strategies may also be explored at this point. In any event, and in all cases, client contact and technical information exchange is necessary. Through a close relationship with clients, an understanding of their technology, their competitors, and their business needs is reached. It is through this type of relationship that RP’s IP Strategy & Risk Management Practice Group is best able to serve our clients.

The same close relationship is emphasized in the other areas of expertise within the IP Strategy & Risk Management Practice Group. Specific patent scope and enforceability studies are performed routinely. As an aspect of due diligence, our Practice Group works closely with the firm’s Transactional Practice Group to determine IP strengths and weaknesses of the IP of others.

Offensive Risk Management

While many think that risk management is a primarily defensive-minded area of practice, we routinely deal with offensive risk management. Determining whether a client’s competitor is infringing a client’s patent, and what the client should do if such a finding is determined, is within our expert skill set. Particularly in light of case law at both the Court of Appeals for the Federal Circuit and The Supreme Court, the mishandling of a charge of infringement can quickly lead to undesired consequences for a client. Even license negotiations, if not handled properly, can expose a client to unwanted vulnerability if not handled carefully.

Another strategic use of risk assessment includes identifying blocking positions for a client. Using offensive positions developed by a thorough look at a client’s own portfolio is one way of neutralizing what may seem to be a competitors IP advantage. This strategy can be undertaken progressively or in response to a specific legal threat from a competitor.

Why Choose RatnerPrestia To Help Manage Your Risk?

The lawyers comprising the IP Strategy & Risk Management Practice Group specialize in this legally sophisticated area because of their interest in, and understanding of, the business reality that follows a legal conclusion. They understand the difference between a mere legal conclusion and the impact of that conclusion on a business decision. Each lawyer has both an exceptional technical background and experience in patent preparation and prosecution, coupled with experience and training in how the legal conclusion plays out if and when tested in litigation.