Fast, Effective and Unique Solutions to Protect Green Intellectual Property Assets
Personal touch, integrity and loyalty to our customers are part of our DNA
By Uri Schlesinger
"An Austrian company filed for a cleantech patent in Israel using a local patent attorneys firm. For unknown reasons, the application was handled by several patent attorneys in that firm, each with his own agenda and strategy, causing the case to be handled in a slow process. The Austrian patent attorneys office that handled the case for the Austrian company heard about our firm and decided, after a year of prosecution in the other firm, to retain our services and let us handle the case", recounts Amit Zuckerstein and Eyal Shilon*.
"The minute we got the case, we realized that we had to take a new approach to extricate it from the entanglement it was in. We decided not to start a new string of, often what might seem endless, correspondence with the Examiner of the case," recounts Zuckerstein. "Instead, we cinducted an interview with the Examiner to find out directly what, in his opinion, were the obstacles that prevented the registration of the patent. After we got to the root of the problem, we were able to explain and argue our claims, so that within a month of receiving the case to our office, the patent was granted."
Shilon and Zuckerstein explain the rapid allowance: "It was mostly our thorough understanding of the cleantech industry and the particularly the essence of the technology behind the patent application. In addition, we were able to identify the ‘blind spots’ of the examiner, where the Examiner could not recognize or understand the innovation of the technology, and so we were able to simplify and justify the arguments."
Shilon adds, "Our firm is a boutique firm, so naturally our work method is not an ‘assembly line.’ There is no generic process in our firm with predetermined steps when applying for a patent. We examine each case personally, every step and request, and decide according to the nature of the case and the client upon the most effective, quick, cost-effective and recommended path for this case and this client".
The Personal Touch
"As we are a boutique firm, the work method we developed includes one of the partners meeting with the client, not only at the first meeting but throughout the process. We, the partners, understand the unique demands of our clients and translate them into the ‘patent language' used in patent attorneys firms, all the while explaining the process to our clients in plain language. The same partner who first met with the client will accompany him during the entire process, whether it is related to patent applications, legal processes or court litigation," explains Shilon.
These standards ensure that it is almost never the case that only one pair of eyes approves any given decision or documents. At the office there is always a second person to check every document that goes out, whether it is one of the partners or one of the patent attorneys, depending on the nature of the procedure. If it is a procedure that patent attorneys don’t handle, it means that both partners have consulted on it. Every action is scrutinized by the other partner, the one who was not initially in charge of it.
"This unique way of doing things is part of our DNA," the partners say. "We do not give up on it, even though that is not common in the business.”
Creative Thinking and Customized Solutions
“A client in the cleantech industry, a wind turbine manufacturer, came to us one Thursday afternoon, a day before he was going to present his invention at a convention,” recounts Zuckerstein.
A basic rule in patent law is that in order to receive patent rights, an application must be filed with the patent office before the invention is revealed publicly. This rule has very few exceptions, most of them not relevant in that case. It was obvious that if this client had presented his invention at the convention, he would have risked losing all rights to his invention.
"We understood the delicate situation the client was in. We canceled all our appointments for that day and dedicated our time to the client,” Zuckerstein continues. “Within the short time we had, we analyzed, tighter with the client, the innovative nature of his invention and its technological issues. Since we are up to date with the technology in the cleantech field both in Israel and around the world, we were able, even within that very limited time, to formulate a 'security net', so to speak, in order to protect the client’s invention and the technology, as well as future directions for development. Late that night, we electronically filed the application with the USPTO” (US Patent and Trademark Office).
The Paris Convention allows applying for a patent in each of the member stated within one year from the date of filing of the priority application in a member state. This means that the client potentially gained protection for at least another year in every one of the other 173 member countries.
"Despite the tight schedule and the unusual work done on the case, we didn’t charge the client any exceptional rate because we understood his plight," says Shilon."We feel a sense of camaraderie with our clients and truly want them to succeed."
Professionalism and Integrity
"It is very important to us," stress the partners, "not to have to 'invent' the technology for the clients. If an inventor comes our office with an invention that we do not think will obtain patent rights, we will not begin the process and drag him through a lengthy, costly and complicated process."
"The statistic that we've been seeing over the last few years is that 7 out of 10 meetings end with our explaining to the client that his chances of obtaining patent rights for his so-called invention are low," says Zuckerstein. “We may lose potential revenue, but professionalism and integrity are the foundation of our work, and that's where we do not make compromises.”
"Owing to our good understanding of the cleantech industry in Israel and abroad, we sometimes know where a client can find a suitable business partner or investor, and we try to help out where we can. Our clients know they can consult us on matters not directly related to intellectual property law and litigation – and if we can, we will obviously assist," says Zuckerstein.
The partners are scheduled to make a business trip to Germany during November and will, among other activities, meet with venture capital funds on behalf of their clients to try to raise money for the ventures protected by the patents they have worked on. However, on this subject the partners clarify: "Since the protection of the intellectual property of our clients is the core of our business, we generally do not go on endeavors to find potential partners or investors for our clients before their intellectual property is fully protected." They stress: "That is just an opening for unnecessary future disputes."
Advocates Eyal Shilon and Amit Zuckerstein are the partners of Shilon, Zuckerstein & Co., Advocates and Patent Attorneys specializing in intellectual property, patents, trademarks, copyright and more.