Building a Ready for Action IP Portfolio                                          clients is key to building a strong     ...
About the IP Law Summit Spring 2013  The        Legal      Network           -  marcus evans Summits group                ...
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Building a Ready for Action IP Portfolio - Interview: Jeffrey Scott Leaning & Timothy B. Donaldson, MH2 Technology Law Group - IP Law Summit


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Jeffrey Scott Leaning and Timothy B. Donaldson Partners from MH2 Technology Law Group and a law firm at the marcus evans IP Law Summit Spring 2013, discuss what is key to managing an IP portfolio.

Join the 2015 Summit along with top IP Law executives and service providers in an intimate environment for a focused discussion of key new drivers shaping the legal industry today.
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Building a Ready for Action IP Portfolio - Interview: Jeffrey Scott Leaning & Timothy B. Donaldson, MH2 Technology Law Group - IP Law Summit

  1. 1. Building a Ready for Action IP Portfolio clients is key to building a strong Exelixis cases, as well as changes in business partnership. One way to keep United States Patent and Trademark clients informed about ongoing IP Office policy and rules, to maximize any prosecution is through the use of potential PTA and avoid unnecessarily regular status reports. losing valuable patent term during the course of prosecution. These reports can include budgetary information issues, upcoming due dates, Do you have any final thoughts? a summary of actions performed, or a projection of future action items, Jeffrey Scott Leaning: Managed legal and can be customized to a client’s services approaches are currently being specific needs. Fostering this business preferred as the law firm is closer in partnership through open communi- style to an in-house attorney, where a cation and recognizing a client’s specific partnership is formed between the client needs makes for the ideal management and the law firm. of an IP portfolio. A certain number of hours that expert Under a flat or fixed-fee arrangement, a attorneys should be on call every month team of attorneys can be assembled to for a fixed fee, would be part of the review and share expertise on individual agreement. cases. Each team member brings his or h e r o w n t e c h n i c a l , l e g a l , a nd A good relationship is vital here as more professional experiences to the table, time may be put into legal matters than making IP analysis more efficient and was originally thought. Having this productive. In addition, each team partnership model in place would be member becomes familiar with a client’s mutually beneficial and ensure that theInterview with: Jeffrey Scott technology and can be ready to respond client’s expectations are met.Leaning and Timothy B. Donaldson, as needs arise.Partners, MH2 Technology LawGroup In view of the American Invents Act, what patent filing strategies can you recommend?In-house counsel and clients would havea better relationship if attorneys sentclients Intellectual Property (IP) Jeffrey Scott Leaning: Clients should approach patent filing as if the US was Openreports on a more regular basis,according to Jeffrey Scott Leaning and an absolute novel country in this area. The ideal situation is that people who communicationTimothy B. Donaldson, Partners, MH2Technology Law Group . “Thispartnership makes for the ideal receive a disclosure should be under a confidentiality agreement. If this is not possible, the client should know who is betweenmanagement of an IP portfolio,” theyadd. going to be in the audience during disclosure. attorneysFrom a law firm attending the upcomingmarcus evans IP Law Summit What should legal departments and clients keep in mind when dealing withSpring 2013, in Colorado Springs,Colorado, March 21-23, Leaning and pharmaceutical patents? is keyDonaldson share their thoughts on why Timothy B. Donaldson: Patent termthe managed legal services approach is adjustments (PTAs) must not bemutually beneficial for attorneys and overlooked when it comes to theclients. pharmaceutical field.How can legal department Unlike other technologies, the term of amanagement increase operational pharmaceutical patent, including anyefficiency? PTA accrued during prosecution, can be critical to the patent’s ultimate value.Timothy B. Donaldson: Open Thus, the practitioner must keep upcommunication between attorneys and with current case law, like the recent
  2. 2. About the IP Law Summit Spring 2013 The Legal Network - marcus evans Summits group This unique forum will take place at The Broadmoor, Colorado Springs, Colorado, delivers peer-to-peer information March 21-23, 2013. Offering much more than any conference, exhibition or trade on strategic matters, professional show, this exclusive meeting will bring together esteemed industry thought leaders trends and breakthrough and solution providers to a highly focused and interactive networking event. The innovations. Summit includes presentations on strategic IP management and enforcement, online brand protection and defensive patent strategies. Please note that the Summit is a Contact closed business event and the Maria Gregoriou, Journalist, marcus evans, Summits Division number of participants strictly limited. Tel: + 357 22 849 400 Email: For more information please send an email to All rights reserved. The above content may be republished or reproduced. Kindly inform us by sending an email to press@marcusevanscy.comAbout MH2 Technology Law GroupMH2 Technology Law Group LLP is an intellectual property law firm specializing in practice before the US Patent and TrademarkOffice, strategic counselling, and patent portfolio management. We are committed to developing long-term, mutually beneficialrelationships with our clients though the use of seasoned attorneys, client-focused pricing, and a deep understanding of our clients’technologies and businesses.www.mh2law.comAbout marcus evans Summitsmarcus evans Summits are high level business forums for the world’s leading decision-makers to meet, learn and discussstrategies and solutions. Held at exclusive locations around the world, these events provide attendees with a unique opportunity toindividually tailor their schedules of keynote presentations, think tanks, seminars and one-on-one business meetings.For more information, please visit: www.marcusevans.comUpcoming EventsChief Litigation Officer Summit - www.chieflitigationofficersummit.comEuropean Corporate Counsel Summit - www.eccsummit.comIP Law European Summit - www.iplawsummiteurope.comLitigation Asia Summit - www.litigationasiasummit.comTo view the web version of this interview please click here: