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KramerAmado Clearance Studies

KramerAmado Clearance Studies. Akron, Ohio on May 22, 2013. Overview. Clearance generally The KramerAmado Difference AIA as applied to Clearance. K&A Objectives. Primary Objectives: Help in-house counsel advise internal clients with regard to Right-to-Market

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KramerAmado Clearance Studies

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  1. KramerAmado Clearance Studies Akron, Ohio on May 22, 2013 www.krameramado.com

  2. Overview • Clearance generally • The KramerAmado Difference • AIA as applied to Clearance

  3. 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

  4. Clearance Study Non-Infringement Study Invalidity Study Product Description Claim Construction Claim Construction Clearance Search Non-Infringement Analysis Invalidity Search Low-RiskResults Resolved Claims Results Analysis Design-Around Invalidity Analysis Clearance Opinion Non-Infringement Opinion Invalidity Opinion Clearance Flow-Chart Direct Invalidity Investigation New/ Modified Product Notice From Patentee Clearance Study Non-Infringement Study Invalidity Study High-RiskResults Unresolved Claims

  5. 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

  6. The KramerAmado Difference • Timeliness • Certainty • Guidance

  7. 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

  8. 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?

  9. 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

  10. 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

  11. 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

  12. Questions? • Thank you!

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