written by The Law Offices of James David Busch LLC. 

James is Licensed to Practice before the USPTO, in Illinois and Arizona.

Expediting Licensing Discussions Using Well-Timed Continuations and Information Disclosure Statements

While representing a client with a large patent portfolio relating to wireless communications technologies, a potential licensee filed requests for reexamination against two of our client’s patents.

Within three weeks of receiving notice that reexaminations were filed, we filed Information Disclosure Statements (IDSs) in already-pending continuation applications discussing the deficiencies of the art and arguments presented in the reexamination filings.

A few weeks later, we received a notice of allowance in one of the client’s pending case with claims drafted against the potential licensee’s products. The notice of allowance was received after the Examiner considered our IDS characterizing and providing the two reexamination requests.

The potential licensee’s strategy of filing reexaminations to stall and gain leverage in negotiations by creating uncertainty was ineffective, and a favorable license agreement was completed later in the month.

Six months later, the reexaminations were also decided in our client’s favor with all claims confirmed.

Preventing Patent Exhaustion When Licensing Multiple Levels of a Market

Saving a Client Money With a Patent Search Before Filing Patents Around the World