Organizations that value their intellectual property as a strategic and indispensable business asset choose our lawyers for their depth and breadth of legal experience, technical backgrounds and understanding, strong U.S. Patent and Trademark Office (USPTO) relationships and litigation-focused patenting.
Our clients range from industry leaders to newly formed start-ups, but all receive the same attention to detail, cost-consciousness and personal attention.
Our lawyers and patent agents have strong technical and scientific backgrounds that enable us to deeply understand the details of our clients’ technologies, assess the patent landscape in order to maximize the value of patent portfolios globally, achieve business objectives, protect market share and address challenges posed by competitors.
Many of our lawyers are former USPTO Examiners, some of whom have doctoral, or masters’ degrees in their technical area and many have years of industry experience prior to earning their law degree. Their experience extends to nearly every industry sector including, electrical, mechanical, materials, automotive, aerospace, telecommunications, computer software, plants, health care, pharmaceutical, biotechnology, biomedical, chemical, manufacturing, robotics, retail and entertainment.
Our professionals draft and prosecute patent applications strategically with the clients’ interests and instructions always at the forefront. We actively collaborate with our clients’ scientific contributors to add value from the invention disclosure stage through the patent prosecution process before the USPTO.
Among our team members is a former Commissioner of Patents, Robert Stoll, who was instrumental in the drafting and passage of the America Invents Act (AIA). He provides intimate knowledge of the law as well as contacts within the USPTO to assist with problem-solving and creative and proactive approaches to accelerating and improving prosecution results. We strategically make use of the various USPTO programs such as Track I Prioritized Examination, Accelerated Examination, Patent Prosecution Highway, Third Party Submissions, QPIDS (Quick Path Information Disclosure Statements), Patent Trial and Appeal Board and all available resources to obtain the best and most cost-effective results for our clients.
We represent U.S. as well as many international companies including clients based in Japan, China, Korea, Sweden and Germany and elsewhere. Our lawyers are well-versed in the standards of patentability and patent procedures in foreign patent offices around the world and maintain important business relationships with foreign counsel. We provide a well-coordinated, consistent and comprehensive global prosecution strategy in order to maximize patent protection and minimize costs associated with foreign filing and prosecution.
Portfolio Analysis and Due Diligence
We study and analyze our clients’ businesses and provide in-house counsel with focused recommendations on ways to identify, protect and leverage the value of their intellectual property assets and strengthen patent portfolios covering core products and technologies.
- After a portfolio analysis for our client, the client saved approximately $250,000 per month in maintenance fee payments by abandoning patents around the world that no longer provided benefits relative to cost, based on lifecycle and importance to core products.
We assist clients with intellectual property valuation to determine whether a target company has intellectual property assets and to what extent the assets are protected. We also assist in determining whether the target company has actual or potential intellectual property liabilities or impediments to marketing its products or services. In this role, we work closely with our corporate lawyers to put together a complete due diligence package for clients.
Our team is skilled in providing due diligence support and data intelligence for intellectual property to be acquired through purchase of companies, or for collaboration with, and investment in the company to support our clients’ business objectives.
- We represented a client in connection with the IP due diligence related to the $222 million acquisition of a vegetable and fruit seed producer.
As a trusted advisor to our clients, we render opinions of counsel to guide and inform your management team regarding patent rights. Opinions can be useful both offensively and defensively. We analyze whether another company is using your intellectual property without your permission, thereby infringing upon your rights and we recommend a particular course of action depending upon the facts. We can also determine whether you are free to operate in a particular technical area without risking a meritorious suit by others.
We render opinions regarding freedom-to-operate, non-infringement, invalidity, patentability and enforceability. Opinions range from formal opinions of counsel which clients have successfully relied on at trial, to less formal letter opinions, all of which provide strategic advice to assist our clients in making critical business decisions.
Licenses and Agreements
Our lawyers negotiate and craft licenses and agreements to allow clients to reap long-range benefits of their innovations:
- Our lawyers represented a large pharmaceutical company in connection with procuring a patent estate from a large university and attaining an exclusive license.
- Among our team members is a former president of the Licensing Executive Society (LES) and Licensing Executive Society International (LESI) who is a certified license professional having handled licenses both in and outside of litigation contexts.
Annually, our firm files an average of more than 1,300 U.S patent applications for provisional, utility, plant and design inventions. We also file under the Patent Cooperative Treaty (PCT) and work with an extensive number of foreign patent counsel to file applications globally. Our lawyers serve public and private universities; biopharmaceutical and pharmaceutical trade associations; research foundations; and start-up and established companies, including Fortune 500 corporations, investment companies, venture capitalists, private equity funds and lenders engaged in transactions involving intellectual property and right-to-practice issues.
U.S. PTO Post Grant Proceedings, Reexamination and Trials
The Leahy-Smith America Invents Act (AIA), enacted in 2011, established new post-grant proceedings available on or after Sept. 16, 2012, for challenging the validity of issued U.S. patents before the U.S. Patent Trial and Appeal Board. The AIA introduced Post-Grant Review, Transitional Program for Covered Business Method, Supplemental Examination and Derivation Proceeding. Timing aspects of these new post grant provisions allow proceedings to conclude more quickly and reduce costs. Our talented team of experienced patent lawyers and litigators assists clients with selecting the most advantageous route to challenge the validity of patents, resolve existing or threatened litigation, or defend patents whose validity has been challenged. Please visit our Patent Trial and Appeal Board (PTAB) blog at www.ptabtrialblog.com where our patent practitioners provide insightful commentary and useful practice tips for post-grant trials before the PTAB at the U.S. Patent and Trademark Office.
The PTAB is now the third most active patent litigation forum in the United States, behind only the U.S. District Courts for the Eastern District of Texas and Delaware. We have successfully represented both plaintiffs and defendants through the inter partes review process.
When litigation is necessary to protect our client’s patent rights, our Patent Litigation Team lawyers have the added advantage of technical backgrounds to enhance their understanding of our clients’ products and are adept at conveying that understanding to the courts. Our lawyers have significant experience before the U.S. Patent and Trademark Office, the Patent Trial and Appeal Board (PTAB) Section 337 investigations before the International Trade Commission and before the U.S. Court of Appeals for the Federal Circuit. Our lawyers have successfully pursued actions against infringers and have supported patent owners.
Representative patent litigation matters include the following:
- We represented a major university in litigation involving an inventorship dispute on fat stem cells, resulting in a favorable summary judgment and an eventual win at trial.
- We represented a client in a lawsuit to obtain patent royalties resulting from the invention of an electronic implantable cardioverter defibrillator.