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Click on the case studies, listed below, for details.

Screening of Early-Stage Invention Ideas

Opportunity
An e-commerce-based company had an idea for new technology to improve a user’s experience on the company’s website. Before virtually any R&D occurred, the client sent me an invention disclosure, described as a near-theoretical framework of the technology.

Result
GMI performed an initial patent search, and found a virtual bull’s eye – a pending patent application broadly describing an identical invention from the multi-billion dollar leader in the market segment. While not yet in the marketplace and visible, the technology had been claimed.

Advantages
No R&D resources were consumed on what would ultimately be a dead-end idea – one which could have resulted in patent infringement (if the competitor’s pending application issued). Additionally, the cost to the client was only several hundred dollars, and performed in under 1 week. R&D could immediately begin pursuing other projects.

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IP Protection at the Speed of Business

Opportunity
A start-up in the solar energy field had piqued the interest of a venture capital group. They approached me eight days before a hard-to-schedule meeting with the VC group, needing to protect their IP worldwide before disclosing it.

Result
GMI worked closely with the lead development engineer to use his prototype drawings and invention disclosure as a foundation for drafting and filing a provisional patent application before the VC meeting.

Advantages
The start-up was able to rapidly protect their invention, timed to their own critical business demands.

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Helping The Cash-Strapped Inventor

Opportunity
An entrepreneur had drafted and filed his own patent application, and received a first response (“Office Action”) from the patent office (PTO), which rejected all of his claims and cited other problems with the application. He knew his invention included original elements and should be protectable.

Result
GMI worked with the inventor to help him craft rebuttals to the grounds for rejection from the PTO. Additionally, GMI drafted entirely new claims for his application, which met PTO specifications and protected his inventive elements. Several months later the application was allowed by the patent examiner and proceeding to issuance.

Advantages
By completing as much of the response to the PTO as possible by himself with our guidance, and GMI working largely on the patent-specific claim language, costs were as low as possible for the inventor. Best of all, the patent went to issue.

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Making The Market Drive the Patent

Opportunity
GMI identified a product need in the sports performance-monitoring segment, and assembled and led a three-person entrepreneurial venture to create technology for an optimum new product.

Result
Breakthrough technology was developed, patented, and worldwide IP rights licensed exclusively to a $200 million/year company, a brand which produces complementary, market-leading products.

Advantages
By blending the focused expertise of IP pros and the technical constraints of engineers with real-world business and market needs, the strongest possible technology was created. The finished consumer product has been highly successful, with sales volume #2 in the category.

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Efficiently Linking to Outside Counsel

Concern
An e-commerce-based company received a notice of patent infringement. Alarm bells rang loudly with company CEO and CTO – a company with no IP experience or patent counsel. They wanted swift, comprehensive analysis, with a response under the name of an attorney at a major law firm.

Result
GMI analyzed the claims of the issued patent(s), and examined the patent’s prosecution history. Working extensively with my client’s CTO, I created a highly detailed summary of their processes being accused of infringement. Under my guidance, the client then engaged the services of a large law firm that I work with and recommend, using my analysis for the firm’s assessment of infringement and risk.

Advantages
Our client had a response from a major IP law firm delivered to the accuser. But engaging me to summarize the patent claims in comparison to the client’s technology saved significant costs ($10,000-$20,000) over using the large law firm for the entire process. Additionally, the process was completed rapidly. Significantly, the accuser was not heard from again.

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Alan Coté
Registered Patent Agent
Williston, VT
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