Shield Intellectual Property PC
Protecting Intellectual Property Rights
in Silicon Valley and Beyond
Learn More
in Silicon Valley and Beyond
Shield Intellectual Property is a Silicon Valley based law firm specializing in protecting the intellectual property rights of high technology companies, with a strong emphasis on patents in the fields of computer software and engineering.
We are experts in both the law and technology. With years of experience as attorneys and as engineers, we are specially equipped to sit down and talk with your engineers at their level. We work with both them and you to ensure that your company's innovations are protected fully and adequately.
With this formula for success, our attorneys have produced some of the most valuable patents in the software industry—patents broad enough to protect our clients' most important technologies, yet detailed enough to withstand the scrutiny of technical experts, judges, and juries. At Shield Intellectual Property, we understand that it's not just about getting you a patent, it's about protecting your company's future.
Evaluating your company's IP portfolio and identifying IP objectives to match your company's business needs.
Working with your engineers and other team members to identify potentially patentable subject matter of value within your competitive landscape.
Drafting and filing patent applications based on disclosures from inventors.
Domestic and foreign prosecution of patent applications through to issuance of a patent, as well as post-grant proceedings.
Analyzing products or services to advise as to the likelihood of infringement of a patent. Evaluating risks posed by competitors' patent portfolios.
Helping you protect your non-patentable IP by establishing and maintaining trademarks, trade secrets, and copyrights.
We're engineers. We get it. Software patents don't exactly have the best reputation. After all, no one wants to spend months or years developing new software features only to be slammed with a cease-and-desist letter asserting patents owned by an entity that doesn't even write code—especially when the patent is abstract and obvious. Unfortunately, this scenario is all too common. The fact is, the patent system—which was created to protect and encourage innovation—has had a hard time dealing with software.
On the other hand, software engineers develop a lot of great and inventive ideas. No one wants to lose those ideas to a copycat competitor who didn't sink any time into research and development. If a software product or service truly is inventive—that is, doing something new and non-obvious instead of simply using a computer to perform well-known tasks—shouldn't software engineers be able to protect that product or service with the same system that protects inventions in other fields?
The good news is that many are trying to fix the patent system. The Supreme Court's recent decisions in cases such as Alice Corporation v. CLS Bank International and Bilski v. Kappos, touching on the patentability of abstract and obvious ideas, illustrate some of the results. The bad news is that the standards for patenting software are still in flux. The landscape will continue to change. That's why you need forward-thinking patent attorneys who can make sure your patents (whether software or otherwise) are ready for where the patent system is going, not obsolete with the next Supreme Court decision.
That's why, at Shield Intellectual Property, we utilize our years of field experience to work with our clients to avoid wasting time trying to patent abstract and obvious ideas. Our attorneys are trained to go beyond an abstract focus on the results of your products or a rigid regurgitation of technical specifications. We take the time to identify and understand the features that truly make your products or services unique, so we can obtain patents that cover the full scope of your inventions, without sacrificing scope to specific implementation details or obfuscating important technical features with abstractions.
Want to know more about what we do? While the details often vary according to client needs, the example below illustrates a fairly average timeline for the patenting process with Shield Intellectual Property.
Shield Intellectual Property attorneys visit with your personnel, learn about your products and services, and study the competitive landscape, to identify potentially patentable subject matter and formulate a comprehensive IP strategy. As needed, Shield Intellectual Property can help you implement efficient systems and procedures designed to ensure that patentable ideas don't slip into your products and services before you've had a chance to protect them.
Shield Intellectual Property attorneys meet in-person, if feasible, with engineer(s) equipped to fully explain the inventive subject matter. Shield Intellectual Property attorneys gather sufficient technical details for drafting a patent application. If warranted, Shield Intellectual Property attorneys guide the engineer(s) in brainstorming extensions or variations of the inventive subject matter. Shield Intellectual Property attorneys further ask probing questions to ascertain whether there are any significant filing deadlines or constraints, to what extent the subject matter may have been considered obvious, and whether filing an application appears to be advisable. Typically, only one formal meeting is needed.
A Shield Intellectual Property attorney drafts claims for the patent application. Claims are reviewed by another Shield Intellectual Property attorney. The assigned attorney revises the claims if needed, and then drafts a technical background, summary, and detailed description. Depending on the complexity of the illustrative figures, the assigned attorney also prepares figures, or consults with an outside draftsperson to prepare the figures. All parts of the application are then reviewed by the reviewing attorney, and revised as needed.
* Drafting can be accelerated in certain cases to account for public disclosures and first-to-file rules.
The assigned Shield Intellectual Property attorney sends a draft application to the inventor(s). The inventor(s) provide their feedback in whatever way is most convenient for them. The assigned attorney revises the application, if necessary, and sends the revisions to the inventor(s). Typically, only one iteration of review is necessary, though additional iterations may be needed in complex cases or when the inventors have further developed their ideas since the disclosure meeting.
Inventor(s) sign formal papers indicating that they approve of the application, which a Shield Intellectual Property attorney then files with the application and necessary patent office fees in the relevant patent office(s).
In the USPTO (and for that matter most patent offices), it takes on average one to two years, or even longer, before an Examiner conducts an initial patentability review of a newly filed application.
* This may be accelerated in certain circumstances, usually involving the filing of a petition along with payment of a relatively significant fee.
Typically, the Examiner sends an Office Action stating reasons why the Examiner does not believe the filed claims to be patentable. A Shield Intellectual Property attorney will review the Office Action, studying any references cited by the Examiner. In many cases, the attorney interviews the Examiner to explain the invention and better understand the Examiner's concerns. In coordination with a second Shield Intellectual Property attorney, the assigned attorney responds to the Office Action, typically by carefully-worded argument explaining error(s) made by the Examiner, and/or by amending the claims to address the Examiner's concerns. Most of our clients prefer for our attorneys to respond without client involvement, though our attorneys of course communicate with the client in unusual circumstances.
The Examiner sends two to four Office Actions on average, but in close cases the process can last longer and involve other procedures.
When the Examiner agrees that the claims are in condition for allowance, the Examiner issues a Notice of Allowance, giving up to three months to pay the issue fee. During that time, a Shield Intellectual Property attorney will review the application, and work with the Examiner to correct any issues, if necessary. The Shield Intellectual Property attorney will also, at the client's discretion, review the application and prosecution history to determine whether further applications are advisable to claim subject matter not covered by the allowed claims. A patent will issue approximately one month after issue fee payment.
Our team at Shield Intellectual Property provides our clients with expertise in both the law and technology, having many years of experience as attorneys and as engineers.
At Shield Intellectual Property, we're always looking for talent to expand our team. If you're an experienced or aspiring patent attorney or engineer, here are some of the many reasons to work for Shield Intellectual Property.
We don't believe a skilled engineer should have to give up engineering to become a patent attorney. Whether it be learning to use the latest technologies in our clients' fields, helping inventors identify extensions and variations of their ideas, developing the firm IT infrastructure, or recreational interest, we encourage our attorneys to keep the engineer in them alive, giving them the best of both worlds.
At Shield Intellectual Property, our focus is on the quality of our attorneys' work, not when or how our attorneys work. Not a morning person? Work afternoons and evenings. Want to bike in to work every day? Not a problem. Want to be home by mid-afternoon for your kids, and work from home after they've gone to bed? Fine with us. We provide you with the flexibility (and infrastructure) to work when and how you choose.
Not every attorney has the same financial or career goals, so why should a law firm focus on one-size-fits-all hourly requirements or bonus targets? You give us reasonable goals for how much you'd like to work and/or how much you want to make, and we develop a compensation structure (salary or commission-based) to help you get there. Along the way, we show you how much revenue you're bringing into the firm and, if it's more than expected, reward you accordingly.
At Shield Intellectual Property, we view our associate attorneys as future partners and colleagues in training, not cogs in a profit-making machine. We provide mentoring, work product review, CLE budgets, and other resources to develop your attorney skills. At the same time, we teach you how to interact directly with clients and inventors, as well as expose you to business management decisions, so that you're ready to be an independent partner. Or if going in-house is more your style, we can help prepare you for that as well.
We don't train our attorneys to be merely average. We train them to be the best of the best.
With Shield Intellectual Property, you're learning from some of the best attorneys in the field. Our attorneys have produced some of the most valuable patents in the software industry—patents broad enough to protect our clients' most important technologies, yet detailed enough to withstand the scrutiny of technical experts, judges, and juries. There's nothing better than learning from experience.
Interested? Send us your law school and undergraduate transcripts, along with your resume and a writing sample. We generally only consider candidates who can demonstrate strong backgrounds in computer science, computer engineering, or electrical engineering, so we strongly suggest that your resume highlight any relevant technical experience. While we prefer candidates with at least a few years of experience in patent prosecution, we consider all resumes sent to us.
| General | (650) 670-8800 |
|---|---|
| Fax | (650) 670-8813 |
| General | info@shield-ip.com |
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| Accounting | shield.accounting@shield-ip.com. |
| Recruiting | recruiting@shield-ip.com |
