What does a person who works with intellectual property and is not an attorney do day to day? I work as a wireless patent forensic specialist. So what exactly does that mean?
Briefly, wireless technical intellectual property (IP) forensic analysis comprises the following activities: validity, invalidity, infringement, non-infringement, valuation, assertion targeting, acquisition due diligence, prior-art review, claim charts, Markman ruling assessment, Rule 11 preparation, claim construction, application ghost-writing, licensing carve-out language, and more.
More specifically the services I provide are as follows:
* Provide technical product insight to legal counsel for the protection of IP assets; serve as the technical liaison with outside law firms, for filing or protection in litigation, oppositions, and patent interferences.
* Participate / assist in worldwide patent application preparation and prosecution.
* Assist in preparation and prosecution patent applications before the USPTO.
* Review and conduct patent searches, and prior art searches for patents involving semiconductor technology and other technology related patents.
* Assist in the legal and factual research and, review and edit pleadings, applications and other technical and legal documents in connection with a variety of intellectual property issues.
* Assist in procuring rights to technology and participate in due diligence reviews.
* Assist in managing licensed-in filings from acquired companies; coordinate with licensor's attorneys to secure patents.
* Help analyze patents and prepare infringement, validity, and freedom-to-operate opinions, including working with outside counsel.
*Assist in developing clients' strategy on how they can develop an area, strengthen patents and work around roadblocks in patents.
* Counsel clients through participation in various levels of R&D and other cross-functional team meetings.
* Identify research subject to filing of patent applications.
* Conduct educational seminars with internal staff on technology and intellectual property.
* Help review agreements such as material transfer agreements.
As inferred, my daily life is basically a solitary activity using my resources gained from over two decades of experience in the wireless telecommunications industry. In a subsequent blog entry I will take a deeper dive showing the reader how I go about dissecting a patent for use by intellectual property attorneys use in offensive or defensive matters.