In-House Patent Program Support

MKW offers patent program support services for small, medium, and large companies.  A patent program is a systemized, ongoing approach to developing an optimal portfolio of patents, customized to a company’s technology and business goals.  Using MKW for these services allows a company to leverage decades of collective industry patent experience without having to rely solely on existing or newly added employees to serve critical in-house patent needs.  Furthermore, an effective in-house program is critical to leveraging outside counsel services cost-efficiently, allowing a company to get the most out of its patent budget.

MKW attorneys have experience as in-house patent counsel at large technology companies.  Notably, MKW partner James Woods spent several years as a member of Yahoo! Inc.’s Patent Asset Development team.  Mr. Woods helped design, establish and rapidly build the patent program at Yahoo!.  This program ultimately led to a portfolio of thousands of patent assets that has generated hundreds of millions of dollars in revenue.  As another example, MKW attorney Elaine Lee has over a decade of in-house program experience on patent/IP teams at Sun Microsystems, Inc., Altera Corporation, and Hewlett-Packard.

MKW offers the following specific services:

• Customized design of the overall patent program for the company.
• Initial assessment of the company’s immediate patent application needs and a strategy for addressing them.
• Education and training of company managers and technologists on the value of patents, the patenting process, and the company’s patent program.
• Development of an Invention Disclosure Form tailored to company needs to allow managers and technologists to submit descriptions and information regarding inventions to be considered for potential patenting.
• Setting up of a system for company review, approval and prioritization of inventions for the patenting process.
• Developing a “patent incentive program” to reward inventors for participation in the company’s patenting program.
• Arranging and managing relationships with one or more patent law firms to prepare and prosecute patent applications on approved inventions.
• Setting up a company-internal database to track, manage, and search for company patent applications and patents.