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How Erise Reimagined Patent Prosecution and Protects the World’s Leading Innovators

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When Jennifer Bailey joined Erise in 2013, her patent prosecution practice was a blank canvas. A decade later, Jennifer and her team have filled that space with bright ideas and a luminous, multi-million dollar list of clients. Erise serves as sole patent counsel for numerous mid- and large-sized companies, such as H&R Block, FanDuel, Altec Industries, and Honeywell FM&T.

But that success, part of the reason why Erise was chosen as one of only five law firms in the nation for Law360’s IP “Practice Group of the Year” distinction, all started with Jennifer and her vision for patent prosecution, combining legal knowledge with business sense to provide pragmatic IP business solutions.

Starting from scratch

Before coming to Erise, Jennifer had more than a decade of experience developing patent portfolios for start-ups, mid-size, and large companies in the software, electrical, and electromechanical arts. Her early years as a practitioner also included a several-year stint as a litigator and handling U.S. reexaminations and EPO oppositions.

This broad, and unusual, skill set led to her being selected by Garmin to be lead counsel for the first inter partes review filed under the AIA. Since then, Jennifer and the rest of the Erise team have developed an enviable IPR niche, with Jennifer and her fellow shareholders being ranked by Patexia in the top 25 best performing IPR practitioners for petitioners. Most recently, Erise was ranked as the 11th most active firm representing IPR petitioners, by far the smallest firm with such a high ranking.

Jennifer joined Erise for its vision of equality and inclusivity. Erise forgoes the standard big-firm silo model, with clients’ needs met by the best professional for the work. Patent agents are an integral process of the teams and are frequently given significant leadership and responsibility roles. This model allows Erise to deliver service and quality that matches or exceeds any of the traditional leading IP groups while being cost competitive and nimble. 

High-quality protection, not high-volume patents

Jennifer and her team are not reactive attorneys. They don’t wait for clients to submit requests for patent applications. Instead, they advise companies on how to best protect their innovations. Jennifer forgoes commodity work where clients want quantity over quality. Instead, her team’s skill set is better suited for quality patents that are IPR-proofed and can support years of potential continuation filings as the market matures.

Jennifer’s time is spent being a business attorney as much as a patent attorney. One of the highest compliments Jennifer received recently from a client was that working with her was the least amount of friction for the client than any other outside counsel. Jennifer gets the job done. She doesn’t advise clients out of a position of fear, and she knows the client’s business to allow advising based on business and legal risks.

Erise offers true alternative fees to address client cost demands. What that means for Erise’s clients is that they are getting a business partner who works with them to build a cost-effective portfolio of high-quality patents that’s a valued asset.

Along with fee structures, Erise is efficient in prosecuting patents. Because the patent application is written to be easily understood and the point of novelty set out clearly in the patent claims, the best prior art is raised by the examiner early and wasted office actions are avoided. Jennifer’s team interviews with the patent examiner almost every rejection and does not engage in timid and piecemeal prosecution. The goal is no more than two office actions for any technology area, which is unheard of for certain software technologies. Jennifer’s prosecution style saves clients’ money by avoiding multiple office actions. For one large medical device client, a request for continued examination in the U.S. has only been filed in less than 5% of its cases.

All prosecution team members work on IPRs to some extent, which provides them valuable insight in best practices for prosecution. Jennifer’s team knows what it takes to preserve validity in IPRs and builds this knowledge into the patent application drafting process to make future IPRs as practically difficult for an infringer as possible.

Jennifer has handled 100-plus IPRs all while managing the Erise patent prosecution group, making her one of the top 50 practitioners at the PTAB as ranked by Patexia. For IPRs that Jennifer was lead counsel, her success rate is extremely high—estimated at 90% plus for institution and cancellation of all claims. Jennifer attributes her IPR success to understanding the interplay of patent prosecution, technology, and PTAB fundamentals well so as to recognize what the PTAB judges require to invalidate a patent. 

Team-first mentality

Jennifer believes the success of the Erise patent prosecution group is dependent on her 15-plus professional team members being productive and happy. She works to balance workload, diversity of projects, breadth of experience, and access to mentoring and training by a variety of senior personnel. The result of this is content and satisfied professionals, and clients that appreciate the quality of work.

Jennifer’s success stems from a common-sense approach to business and life and understanding that no one team member can do it all. Respect, kindness, and high-quality work are driving factors for Jennifer and her team.

Jennifer’s goal for the next 10 years is to ensure that each team member has a rewarding career representing great clients and doing fun, innovative work, while still continuing to provide the excellent service and quality on which the Erise brand is based.

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