Intellectual Property Case Studies

Intellectual Solutions: Case Study 1

PROBLEM:

A start up company requiring patent protection on a critical portion of their technology had an outside law firm prepare and prosecute a patent application. The patent application had received an office action making a previous rejection final.

ACTIONS:

The case history was examined and it became apparent the rejections were based upon an unclear understanding of the technology and description of the invention. Additionally, the responses to the office actions were not persuasive or compelling. Review of the technology and case history with the attorney prosecuting the case allowed for formulation of stronger and more technologically insightful arguments. A teleconference between the attorney, examiner and Dr. Meirowitz served as a conduit for clear, concise and compelling information transfer.

RESULTS:

The office action making the previous rejection final was removed and the patent was allowed. All subsequent applications were jointly prosecuted and all applications jointly prosecuted were allowed.

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Intellectual Solutions: Case Study 2

PROBLEM:

An established leading company (in their field) was looking for growth through acquisition.  A company in England was identified as having brands and technology that would improve the corporate position.  In depth due diligence was required to confirm the potential acquisition’s technology, intellectual property portfolio strength, probability of successful technology transfer.

ACTIONS:

Dr. Meirowitz performed a Strengths, Weaknesses, Opportunities and Threats (SWOT) analysis of the potential acquisition’s patents, trade secrets, trademarks, publications and records.  This allowed for the determination of specifically what was owned and protected by the potential acquisition.  Additionally, the strength of what was owned relative to competitors and reverse engineering as well as, what information was in place to block others from patenting similar technology was quantified.  Dr. Meirowitz made multiple trips to England to assess the robustness and ease of technology transfer.  Additionally, the manufacture in England, of a new product developed in the states, was deemed feasible and begun.

RESULTS:

The potential acquisition was deemed sound and the company was purchased in July of 1995.  The new technology, manufacturing processes, products and intellectual property was successfully incorporated into the purchasing organization.

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Intellectual Solutions: Case Study 3

PROBLEM:

A patent infringement was alleged by a major wound dressing manufacturer.  The alleged infringer believed that their process did not infringe the patent.  Further since they felt they were following a procedure in a prior art patent that the cited patent as being infringes was invalid.

ACTIONS:

The patents, prosecution histories, prior art, processes in question were examined.  The plaintiff performed experiments to demonstrate that the prior art patent was not enabling and that the results described in the prior art could in fact not be achieved.   Dr. Meirowitz reviewed these experiments and in light of all information rendered an expert opinion regarding the patents and technology.  No agreement was reached between the companies and the case went to trial in the High Court in London.   Dr Meirowitz attended the entire trial and was an active member at the strategy sessions after each day’s proceedings.  Further Dr. Meirowitz testified as an expert witness on the technology

RESULTS:

The court ruled in favor of the defendant that there was no infringement and further that in light of the information presented that the plaintiff’s patent was invalid.

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