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Contract analysis / internal-docket-reactivation-memo.docx
internal-docket-reactivation-memo.docx
High · 0
Medium · 7
Standard · 2
I. Purpose and Background
Medium
⚑ Confidentiality undertaking
I. Purpose and Background This memorandum serves to formally document the reactivation of dormant Matter No. SBD-IP-2021-003 and to coordinate immediate work assignments and deadlines among the Calderwood & Harkness IP prosecution team following a client request for a full portfolio review and go-forward recommendation for the CryoNova cryoablation catheter patent family. On October 28, 2024, Ronan Gallagher, General
II. Patent Family Summary
Medium
⚑ Notice / time limit to track
II. Patent Family Summary The CryoNova patent family presently consists of four U.S. applications. A summary of each application, its current status, and the next required action is set forth below. The team should use this section as a reference when performing the task assignments described in Section IV. A. SBD-001 (Parent) — U.S. Application No. 16/914,337 Filed: June 28, 2021 Title: "Cryoablation Catheter System
III. Critical Deadlines — Reactivated Docket Calendar
Medium
⚑ Assignment / subcontracting
III. Critical Deadlines — Reactivated Docket Calendar This section identifies and prioritizes the critical deadlines that must be managed in connection with the reactivated docket. The team should treat the dates listed below as firm calendar entries, subject to adjustment only upon documented client instruction. A. Immediate Deadline: CON-2 Office Action Response (U.S. 17/851,216) The most pressing deadline on the r
IV. Task Assignments
Medium
⚑ Notice / time limit to track
IV. Task Assignments The following task assignments are designed to ensure that all time-sensitive prosecution obligations are met and that the team is prepared to support Alan Ngo's Portfolio Strategy Memorandum. Each task includes the assigned team member(s), a description of the work to be performed, the target completion date, and any relevant notes or prerequisites. A. Extension of Time Request — CON-2 (U.S. 17/
V. Entity-Size Confirmation
Standard
⚑ Commercial term
V. Entity-Size Confirmation All government fee calculations in this memorandum are based on small-entity rates. The team should be aware of the following with respect to SBD's entity-size qualification: Small Entity Status. SBD qualifies as a small entity under 37 C.F.R. § 1.27. As of December 31, 2023, SBD had 312 employees globally, which is fewer than the 500-employee threshold for small-entity status. Additionall
VI. Budget Estimates
Medium
⚑ Liability cap to check against exposure
VI. Budget Estimates The following budget estimates cover the anticipated professional fees, government fees, and related costs for the prosecution activities identified in this memorandum. All professional fee estimates are based on the firm's 2024 standard hourly rates for the assigned timekeepers. All government fee estimates are based on small-entity rates. A. CON-2 Office Action Response (U.S. 17/851,216) Profes
VII. Financial Summary — Matter to Date
Standard
⚑ Commercial term
VII. Financial Summary — Matter to Date For reference and to assist with the portfolio strategy memorandum, the following is a summary of all fees and costs billed to Matter No. SBD-IP-2021-003 from the engagement opening through the last billing entry: Total Fees Billed (October 2021 – July 2023): $287,450 Reconciliation: $214,600 + $38,350 + $22,500 + $12,000 = $287,450 Outstanding Accounts Receivable: $0. All invo
VIII. Open Items and Risk Flags
Medium
⚑ Assignment / subcontracting
VIII. Open Items and Risk Flags The following items require attention from the team and/or resolution with the client. Each is flagged here to ensure that no issue is overlooked as the docket is reactivated. A. Client Authorization Pending SBD's board of directors has not yet made a decision on the go-forward scenario for the CryoNova patent portfolio. Until the board provides instructions, certain prosecution activi
IX. Immediate Next Steps / Action Items (Summary Table)
IX. Immediate Next Steps / Action Items (Summary Table) The following table summarizes the immediate action items discussed in this memorandum, in priority order: All team members should review this table and confirm their availability for the assigned tasks. Any scheduling conflicts or resource constraints should be communicated to Peter Vassiliev or Alan Ngo immediately.
X. Conclusion
X. Conclusion The reactivation of the CryoNova patent family docket presents both time-sensitive prosecution obligations and strategic considerations that the team must address promptly and carefully. The CON-2 Office Action response is the most pressing item and presents a meaningful opportunity to secure valuable patent claims, particularly given the Examiner's indication that Claims 15–20 contain allowable subject
1. Update your availability and time-entry records for Matter No. SBD-IP-2021-003.
1. Update your availability and time-entry records for Matter No. SBD-IP-2021-003.
2. Reserve time on your calendars for a team kickoff meeting during the week of November
2. Reserve time on your calendars for a team kickoff meeting during the week of November 4, 2024, to discuss prosecution strategy for the CON-2 Office Action and to coordinate the work plan set forth in this memorandum. I will circulate a meeting invitation separately.
3. Review the CON-2 Non-Final Office Action (mailed September 15, 2024) and the cited pri
3. Review the CON-2 Non-Final Office Action (mailed September 15, 2024) and the cited prior-art references in advance of the kickoff meeting. Copies are available in the matter file on the firm's document management system.
4. Direct any questions, conflicts, or concerns to Peter Vassiliev (ext. 4271; pvassiliev
Medium
⚑ Confidentiality undertaking
4. Direct any questions, conflicts, or concerns to Peter Vassiliev (ext. 4271; pvassiliev@calderwoodharkness.com) or Alan Ngo (ext. 4102; ango@calderwoodharkness.com) immediately. Thank you for your attention to this matter. I look forward to working with the team to execute the prosecution strategy effectively and to deliver a strong recommendation to our client. Calderwood & Harkness LLP — Privileged & Confidential