This is the first of several upcoming blog posts about the legal team at Ofinno. This first post introduces the Legal Team and summarizes the skills and expertise they continue to develop in sustaining Ofinno’s mission of creating world-class patent portfolios.
Those experienced in the patent business (including attorneys, agents, and paralegals) are familiar of the differences between outside counsel (e.g. law firms) and in-house legal teams. Generally, outside counsel perform discrete legal tasks such as preparing and prosecuting patent applications and preparing opinions. For more strategic endeavors such as litigation and licensing, specialized outside counsel may be retained. On the other hand, in-house attorneys and paralegals are tasked with discussing new inventions with inventors, reviewing outside counsel work, managing the life cycle of the patent portfolio, and evaluating intellectual property (IP) assets for licensing potential.
At Ofinno, our legal team straddles both sides of this model. Ofinno patent attorneys and agents perform patent prosecution and due diligence tasks while keeping in mind the business and strategic goals of the company. The legal team members are responsible not only for preparation of patent applications and ushering them through various patent offices around the world, but also for ensuring that the scope of each patent remains focused on critical aspects of each invention without overlapping (or creating prior art issues) with other inventions, which is especially relevant in the realm of standard-essential patents (SEPs).
It is truly a fine line to tread, and it would not be possible without continuous discussion and collaboration with the technical teams. In fact, a significant portion of time is spent in educating Ofinno’s technical teams in the intricacies of the patent and legal system, while also being educated by the inventors in the intricacies of their complex technologies.
This high level of collaboration is enabled by Ofinno’s relatively flat corporate structure with ample opportunities to form diverse teams of inventors and patent experts. Not only does such a dynamic structure enable spirited discussion and knowledge sharing, but it also stands in contrast to more traditional models where specialized tasks are performed by discrete entities with limited real-time collaboration. Even the paralegals are instrumental in iteratively fine-tuning Ofinno’s approach towards complex portfolio management. In summary, everyone in the legal team works in unison to create a tactical approach to developing a world-class patent portfolio, while being afforded independence in schedules and workflows, especially given the diverse geographic locations of the Legal Team members.
Stay tuned for future blog posts that explore the subject-matter expertise Ofinno’s legal team has developed in myriad areas of US and international patent law!
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About the Author
Sachin is a registered Patent Attorney, with an undergraduate degree in Physics from the University of Virginia, and a law degree from George Mason University. Sachin recently joined Ofinno after 10+ years in the law firm setting, where he counseled corporations, startups, and solo inventors in patent strategy and innovation. At Ofinno, Sachin leverages his IP counseling experience and deep technical knowledge to ensure that Ofinno’s patent portfolios are robust and focused on solving the most important problems. Sachin is also an accomplished public speaker, songwriter, and yoga instructor.