TecEsq

Business Partner

Dr. Ed ergenzinger

Dr. Ed Ergenzinger

Dr. Ergenzinger combines graduate-level scientific training with outstanding expertise in the practice of intellectual property law. He has substantial experience working with academic, start-up, national, and international clients to identify and protect intellectual property as technology moves from research and development to commercialization. A particular focus of his practice has been in the field of patent law, in which he has provided services that include the preparation and prosecution of patent applications (domestic and foreign), strategic planning and portfolio management, due diligence, and the preparation of patent-related opinions (freedom to operate, invalidity, and non-infringement.) He has also provided services that include the preparation, review, and negotiation of license agreements, intellectual property transfer agreements, and material transfer agreements.

Dr. Ergenzinger’s scientific training includes research and graduate coursework in the areas of physiology, pharmacology, drug delivery systems, cellular and molecular biology, biochemistry, and genetics. He has substantial experience providing client services across a broad range of technologies, particularly cell lines and cell culture media, human vaccines and related development and manufacturing processes, recombinant DNA and proteins, gene delivery and expression systems, genetically modified cells and organisms (animals and plants), small molecule therapeutics, pharmaceutical formulations, and marker-based diagnostics.

For more information, please visit www.el-ip.com

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Technology Landscaping \| Patent Application Drafting \| Office Action Response Drafting \| Invalidity Search \| Prior Art Search

Case Study I: Technology Landscaping Business Objective Perform patent landscaping for clients in the domain of HVAC and Automobiles. Challenge: Fortune 500 HVAC and automobile companies wanted to analyze patent landscape in specific technology domains to invest in R&D and patenting. The number of patents ran into thousands, while time and costs were critical. Process: Dedicated teams were set up with expertise or experience in these technologies Generated technology Taxonomy Searched and extracted patent data Analyzed and categorized patent data based on the taxonomy Analysis based on the categorized set to identify whitespace and technology trends Achievement: The deadlines and budget of the client was met. More importantly, the analysis was very helpful to the client. Case Study II: Patent Drafting Business Objective Draft patent application related to Computer Peripheral. Challenge: An inventor wanted to get a patent application drafted for filing in US. The inventor could not afford a US attorney and wanted the best quality at lowest cost. Process: Patent engineer was assigned to the inventor to understand her technology The inventor was guided on the patent requirements and best practices Developed understanding of the novelty and state-of-the-art technology Prepared claims and specifications Iterations on drafts were performed to include all possible information and achieve quality Achievement: The patent application was drafted within clients budget and bar date. More importantly, the quality of the application was as per the best US standards. Case Study III: Office Action Response Drafting Business Objective Prepare Office Action response for an invention related to Computer Peripherals. Challenge: A client wanted to draft a response to an office action for a patent application for which two Requests for Continued Examinations (RCE) have been filed. The invention was crucial for the business of the client. Process: A strategy for devised to prepare the response and was discussed with client The viewpoint and direction of the examiner was ascertained from previous actions Various options proposed to client including claim amendments and arguments OA response was prepared and filed Achievement: The client was made aware of all the options and strategies, which made it easier for the client to choose the path. The client got the best quality response with tremendous savings in costs. Case Study IV: Invalidity Search Business Objective Perform invalidity search in the domain of software technology for a top software company in the US. Challenge: To invalidate or find the most relevant prior art and assist clients in invalidating the patent /claim(s) in question before an important case discussion Process: • Prepared understanding of invention • Examined file wrapper • Performed inventor, assignee, product, classification and keyword searches • Search performed on Delphion, USPTO, IEEE, ACM, Google, Google Scholar, IBM Database, Source Forge, etc. • Conducted analysis of the results and prepared claim charts based on the most relevant references Achievements •Turn around time – as per the requirement (120 hrs.) of the client •Cost Benefit - Savings of $14,400 because of 80% lower charge rate than US counterpart Case Study V: Prior Art Search Business Objective To conduct a prior art search for a technology of a client in telecommunication domain. Challenge: To provide 8 to 10 most relevant "prior art" references and at a quick turnaround. Process: • Prepared understanding of invention • Performed Inventor, Assignee, Product, classification and keyword searches • Search was performed on Delphion, USPTO, IEEE, ACM and Google Achievements: •Turn around time – delivered in quick turnaround (10 hrs) •Cost Benefit - savings of $400 per Prior Art Search

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