The document discusses strategies for building a strong patent portfolio in the United States. It introduces Lowe Hauptman & Ham LLP as a full-service IP law firm located near the USPTO. The firm offers cost-effective patent prosecution services through various fee structures. It emphasizes the importance of claim drafting, revision services, utilizing the micro entity status, track one prioritized examination, and interviews to obtain high quality patents quickly and cost-effectively.

1. Strategies
for
Building a Strong Patent Portfolio
in the United States
Stanley Kang
Lowe Hauptman & Ham LLP
Suite 1400
2318 Mill Road
Alexandria VA 22314
Tel. (703) 684-1111
Fax. (703) 518-5499
www.ipfirm.com
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2. Introduction of LHH
Computers & Software Group
Electronics
& Semiconductors Group
Chemistry
& Biotechnology Group
Litigation Group
Mechanical Group
⇒ LHH is ranked 28th out of the 500 top Intellectual Property Law Firms in
the United States (IP Today 2012), and is among the top 10 IP firms
specializing exclusively in patent prosecution, licensing, opinion drafting
and trademark matters.
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3. Introduction of LHH
√ Ultimate Responsibilities
√ Full Service IP Law Firm
√ Expedited Services
USPTO
√ Cost Effectiveness
LHH
√ Flexible Fee Arrangement
“a short 3-minute walk from
the United States Patent & Trademark Office”
- Hourly Based
- Fixed Fee Based on Schedule of Fee
- Contingency
- Hybrid
√ Client Practice Group
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4. Patent for Start-ups
Reasonability
Budget Constraint
Enforceability
Timeliness
Expedite Progress
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Broad claim scope

5. Case Study
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6. Patent vs. Knowhow
Pros
- Cost Saving
- Confidentiality
Cons
- Unprotectable from Imitations
- Difficult for Licensing
Knowhow
V.S.
Pros
- Protectable from Imitations
- Easy for Licensing
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Cons
- Cost
- Open to Public

7. Expense + Quality + Speed
-> Liable Representative
√ Effective Communication
√ Reasonable Service Fees
√ Real Working Group
√ Outstanding and Well-Trained Staff
√ Reputation and Legal Training
√ Innovative service solutions
√ Strategic Location
√ Multiple Language Capabilities
√ Balanced Client base
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8. Quality
-> Claim Drafting I
1. Should include claims that literally cover
commercializable product/process
Can be a separate set of a narrow independent claim
and several dependent “picture” claims
Increase the likelihood of 1st action allowance “with
full equivalent range”
Avoid Festo: File narrow claims, then broaden during
prosecution or in continuation
Cited prior art can be used as roadmap for drafting broader
claims
US examiners are unhappy if claims are broadened after 1st
action  continuation is recommended
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9. Quality
-> Claim Drafting II
2. Attempt to claim all disclosed inventions/embodiments
Subject matter disclosed but not claimed in application is dedicated
to public
•
Johnson & Johnson. v. R.E. Serv. Co., 285 F.3d 1046 (Fed. Cir. 2002)
– Patent disclosed the use of Al and other materials for a substrate
of a PCB, including stainless steel, but claimed only Al.
– Accused infringer used stainless steel
– Trial court found infringement under Doctrine of Equivalents
(DOE)
– Fed Cir. reversed: stainless steel as disclosed but unclaimed
subject matter has been dedicated to public
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10. Quality
-> Claim Drafting
US 13/975,923
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1. An apparatus, comprising:
a first circuit board having a
first side, a second side opposite the
first side, a first end and a second
end opposite the first end;
a first connector mounted to
one of the first side and the second
side of the first circuit board; and
a second connector mounted
to one of the first end and the second
end of the first circuit board, the first
connector including at least one
conductor configured to engage a
conductor on a connector coupled to
a second circuit board, the second
connector including at least one
conductor configured to engage a
conductor on a connector coupled to
a third circuit board.

11. Quality
-> Claim Drafting
US 13/767,836
50 Drawings
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1. An activity monitoring system comprising:
a plurality of fixtures,
wherein each fixture includes a physical size and shape
that is adapted to couple to an associated location on the body
of the user;
a portable monitoring device adapted to separately and
physically engage each fixture of the plurality of fixtures, the
portable monitoring device including:
a housing to separately and physically engage each
fixture;
an activity sensor, disposed in the housing, to detect
activity of the user and, in response thereto, to generate data
which is representative of the activity of the user; and
processing circuitry, disposed in the housing and
coupled to the activity sensor, to calculate one or more activityrelated quantities of the user using the data which is
representative of the activity of the user,
wherein the processing circuitry:
automatically determines a particular fixture of the plurality of
fixtures is physically engaging the portable monitoring device,
and calculates at least one activity-related quantity of the user
which is associated with the particular fixture.

12. Quality
-> Claim Drafting
US 13/167,044
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1. A biofeedback device comprising
a heart rate measuring apparatus comprising
a reflected infrared sensor,
the sensor including
a sensor base having a first end and a second
end,
an infrared light emitter and an infrared light
receiver,
the infrared light emitter being coupled to the
sensor base at a first selected angle in relation to an
axis running from the first end to the second end of the
sensor base, and
the infrared light receiver being coupled to the
sensor base at a second selected angle in relation to
said axis, and
the infrared light emitter and the infrared
light receiver being spaced apart from each other at a
selected distance determined by the target reflection
point; and
a power source in electrical communication with the
heart rate measuring apparatus.

13. Expense + Quality + Speed
-> Revision
√ Full Review & Revision
- Claim, Specification, and
Drawing
- $2,000 ~ $4,000
√ Benefits
- Preventing 112 Rejection
- Minimizing Estoppel
- Reducing Expense
- Strong Patent Right
Worth more than $5,000
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14. Expense
-> Micro Entity (effective Mar. 19, 2013)
√ Benefits
- only 25% of the governmental fees compared to
large companies
- Gross Income Basis
- Satisfying Small Entity Requirement
- Gross income should be less than $153,051
- Less than 4 patent applications (provisional don’t count)
- Don’t assign patent rights to a non-micro entity.
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15. Expenses
-> Micro Entity (effective Mar. 19, 2013)
Y*** Client
Total $400 Governmental fees
S*** Client
Total $1,400 Governmental fees
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(Incl. Track One fee)

16. Speed
-> Track One Prioritized Examination
√ Benefits
- Faster time to first action, which currently less than 5 months
- No additional examination-related support documents
- 4/30 claims
- Prioritization fee: $4,000 ($2,000 small, $1,000 micro)
- Limited to 10,000 applications per fiscal year
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17. Speed
-> Track One Prioritized Examination
US 13/570,188
2012/8/8 Filing/Request
2012/10/22 OA
2012/12/27 NoA
4 Months!!!
US 13/767,836
2013/2/14 Filing/Request
2013/5/24 NoA
*No Office Action has been issued
3 Months!!!
Over 80% of Start-ups
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use Track One Exam
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18. Expense + Quality + Speed
-> Interview
√ In-Person Interview
- $500 ~ $1,000 Service fee
√ Benefits
- Clarifying Scope of claims
- Concentrating on an Issue
- Minimizing Estoppel
- Only substantial issues are summarized
Summarized in 2~3 Lines
in an Interview Summary
- Strong Patent Right
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19. Expense + Quality + Speed
-> Interview
US 13/531,486
2013/2/26 Interview
2013/5/7 NoA
3 Months!!!
Interview Summary
US 13/094,500
2013/3/18 Interview
2013/6/25 NoA
3 Months!!!
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Interview Summary

20. Further Information
• Patent Pharos : www.patentpharos.com
• Email : Skang@ipfirm.com
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21. Q&A
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