Portfolio Development

Invention Harvesting

Having an invention harvesting system is important to any client that invests in research and development, but is particularly important for those involved in joint research (where staking ownership claims is often crucial) or government contracts (where reporting and handling subject inventions is crucial).

Kagan Binder helps clients implement systems that harvest inventions with a high capture rate and then screen these with budgeting in mind to pursue patent protection for commercially meaningful inventions or to implement other protection strategies, such as trade secret or contractual protections.  

Conventionally, companies ask their personnel to recognize and report their own inventions through writing and submitting records of inventions as a first step. With this conventional approach, too many inventions can be missed, and personnel may spend too much time writing unnecessary records of invention documents. The problem is that recognizing protectable inventions is not intuitive - but reporting on technical achievements and progress is. 

Kagan Binder can assist clients to implement a harvesting system where personnel report their technology achievements as a first step, rather than relying on the personnel to figure out what is and what is not a protectable invention. An intellectual property (IP) committee - which desirably includes a patent attorney to help protect the attorney-client privilege - uses such technical reporting to identify and capture those invention candidates that are commercially important to the business.  Personnel can then be directed to prepare records of inventions documents on the screened inventions so that preparation time is focused on the needs of the business.

Invention Review

Clients who engage in research and development, joint research and development with other companies, research and development with universities, or government contracts benefit significantly from an Invention Review System in which research and development progress is monitored to capture and identify protectable inventions that are commercially meaningful.   

Kagan Binder assists clients by working alongside key team members to develop a repeatable, reliable review process to review and evaluate inventions. In many cases, a company Intellectual Property Review Committee is set up, which often includes a technical manager, often at least one or two additional technical and business savvy personnel, and a patent attorney.   The patent attorney helps to asses if technical achievements are protectable, and the attorney’s participation helps to maximize protections under the attorney client privilege doctrine. 

The IP Review Committee decides on the next steps such as to pursue patent protection, to maintain as a trade secret, or to do further work and report back at the next milestone. We also help clients implement administrative systems for the IP Committee, which includes how records of invention are stored and made accessible in a manner to balance company against the need to protect these evaluations under the attorney client privilege doctrine.

Global Portfolio Administration

Kagan Binder helps clients to prepare, file, prosecute, and maintain patent protection in the U.S. and to use those U.S. rights as priority to pursue patent family counterparts all over the world.   Kagan Binder professionals have substantial experience pursuing international patent protection through the PCT authority or through direct filing in international countries or regions.  We also work with law firms and clients all over the world to pursue patent protection in the U.S. with respect to patent applications first filed in another country or region.  Our Global Portfolio Administration services involve:

• Helping clients pursue patent protection in the U.S. and around the world. 
• Accurately maintaining files, records, and docketing data for the global portfolio.