NGM is committed to providing our clients with qualified personnel who have outstanding capabilities, technical expertise, and a unique approach to deliver the work product specified.
NGM provides the full range of search services required by our clients. NGM has the capability to search and render analyses and opinions regarding patentability, registrability, infringement, freedom to operate, validity, invalidity, enforceability, marketability and commercialization, worldwide portfolio coverage, portfolio maintenance strategies, and intellectual property valuation. Our search capability is strengthened by our use of former USPTO Examiners and other personnel trained with advanced search skills, involving both hard copy searching and electronic searching means.
Domestic Prosecution Services
NGM provides the full range of domestic IP prosecution services required by our clients. NGM has significant experience performing domestic prosecution patent, trademark, and copyright services on behalf of universities and other non-profit organizations, as well as public and private sector organizations ranging from individual inventors to the largest biotechnology and electronics companies in the world. We have a proven track record of obtaining high quality, cost effective, and licensable granted patents. We are committed to use our experience and work ethic for our clients.
We are uniquely able to customize our internal policies and procedures to meet the needs of our clients based on our IP boutique size and internal staff and protocols. We are able to customize internal NGM docketing, reporting, and work flow processes for handling domestic prosecution services according to the requirements specified by our clients. In particular, once the scope of subject matter protection has been agreed upon with our client, NGM prepares and prosecutes provisional, non-provisional, and design patent applications, as well as trademark applications, in order to fully protect our client’s intellectual property rights.
NGM has an existing infrastructure to ensure that all work ordered by its clients is monitored, completed, and delivered within the time limits set by the client. NGM tailors its services to accommodate the specific needs of individual clients.
Foreign Patent Prosecution
NGM provides the full range of foreign patent and trademark prosecution services required by our clients. Since its formation, for example, NGM has initiated patent filings in over 116 countries, using multiple foreign associate counsel per country. In the past twenty-four months, NGM has filed hundreds of foreign patent applications worldwide.
Our capabilities for conducting foreign prosecution are strengthened by our extensive experience and technical expertise in managing worldwide IP portfolios. Representatives of NGM routinely visit foreign associate counsel to evaluate their present capabilities for handling the various technologies and marks that are being forwarded to them. We also attend international conferences as a means of identifying alternate foreign associate counsel. The procedures that we employ in selecting foreign associate counsel for handling IP prosecution related services for our clients includes checking for conflict of interest, maximizing technical competence for the relevant technology or mark, assuring confidentiality, and fully complying with all client policies and procedures.
In fact, some of our clients work with us exclusively to manage and prosecute their complete foreign patent portfolio. Our breadth and depth of experience in this area make us unique among IP boutique law firms and represent a core strength of the firm.
We also have the ability to select and work with local counsel to assist our clients in managing IP litigation in various countries around the world. From working with customs to stop local importation/exportation of goods to assisting in finding the right firm and venue for foreign litigation, we are well placed to assist our clients with any of their IP needs anywhere around the world.
Licensing Consultation and Portfolio Evaluation
Licensing Consultation and Portfolio Evaluation
NGM has significant experience evaluating and negotiating all business aspects of licensing agreements. Our personnel have provided assistance and legal advice in hundreds of licensing matters. We have also advised clients on assessing the scope and value of various technologies and IP estates, the determination of royalty rates appropriate for the technology to be licensed, and have negotiated and drafted licensing, supply, sales, counseling, and other agreements with actual and projected values from a few thousand dollars to more than $450,000,000.
In addition to drafting and negotiating these various agreements, several members of our firm routinely lecture industrial professionals, technology managers, and graduate business school students in licensing and valuation matters. NGM routinely assists in the formation and management of start-up technology companies, which heavily rely upon the technologies they patent and license. Due to our diverse client base and industrial contacts, NGM is uniquely positioned to assist our clients in identifying potential licensees and business partners and evaluating their capability to commercialize our clients’ technologies.