TecEsq

Business Partner

Chris Mitchell

Christopher Paul Mitchell (Chris) is a Washington, DC-based patent attorney providing legal services to clients throughout the world. Mr. Mitchell has experience serving a broad spectrum of clients, including publicly and privately held companies, law firms, non-profit organizations, and individuals.

Mr. Mitchell focuses his practice in all areas of intellectual property law, with an emphasis on client counseling, intellectual property procurement, licensing, and litigation support. His patent prosecution experience is primarily in business methods, computer software, and computer hardware. His training is in the computer science and business fields.

Prior to starting this practice, Mr. Mitchell served in the patent practice of one of Northeast Ohio's largest law firms, and later with a top 20 U.S. patent firm located in Washington, DC (source: 2010 Top Patent Firms, Intellectual Property Today). He has worked in the intellectual property field since 2001.

Bar Admissions

District of Columbia
Ohio
U.S. District Court for the Northern District of Ohio
U.S. Court of Appeals for the Federal Circuit
U.S. Patent and Trademark Office

For more information, please visit www.mitchellip.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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