PATENT PROCUREMENT

Our patent procurement professionals have different backgrounds that span a wide range of technologies. We are well-versed in all of the procedural matters that one is likely to encounter in a well-rounded patent practice. These are just a few of the reasons why our clients are issued 1,100+ patents annually by the USPTO, with even more issued internationally.

A Diverse, Well-rounded Team of Patent Pros

Our professionals have years of experience working with patent applications globally. Through every step of the patent application process and post-grant proceedings, we can help you keep your technology well protected – with both domestic and international patents. More than that, we can help you gain maximum value from the investment you have made in their development. Whether you are seeking patents for products and services you plan to develop and market or simply to license or assign, we’ve got you covered.

We understand your goals and the challenges you face, and we work closely with your technical and business leaders, as well as your internal legal staff, to manage patent procurement strategically, efficiently and effectively.

Among the many components of patent procurement with which we can assist you are:

  • Patentability, infringement and validity opinions.
  • Preparing, filing and prosecuting patent applications, both domestic and international.
  • Appealing of rejections to the Patent Trials and Appeals Board (PTAB) and Federal Circuit.
  • Post-grant proceedings, including post grant review, inter partes review, covered business method review, ex parte reexaminations and reissue applications.
  • Interference and derivation proceedings.

Our strong post-issuance practice is built on more than 30 years of experience. We are one of the few firms to have done interferences, reexaminations and reissues since the inception of these procedures and have been acknowledged as leaders in this area. We have prosecuted the earliest Inter Parte Review procedures and have leadership roles in the AIPLA, ABA and Pauline Newman American Inns of Court for their activities in the post-issuance practice areas.

More than 25 percent of our intellectual property professionals are former examiners at the U.S. Patent and Trademark Office (USPTO).

Although we have experience in a great many technologies, a few deserving of special mention are the following:

Biotechnology.
Biotech includes a highly diverse range of sciences and technologies, from microbiology to crop hybridization, from pharmaceuticals to robotics, and so many more. Securing patents for your innovations is only part of how we can help you. Assistance with business formation, financing and marketing strategy – provided by attorneys who fully understand both the domestic and international business of biotech and the law – are part of our 360-degree approach to working with biotech companies. 

Chemical/Materials Science.
Our seasoned professionals, many of whom hold advanced degrees in highly specialized scientific and technical areas, as well as law, can help you develop and implement strategies for protecting your materials science-based intellectual property. We work closely with your researchers to guide you efficiently through patent procurement and enforcement. Plus, through procurement of capital, forging positions of market exclusivity and licensing programs, we can help you leverage your IP for the best return on your investment in its creation. 

Many of our patent professionals possess master’s and doctorate degrees in the disciplines of biology (such as molecular biology and biophysics) and chemistry.

Mechanical.
The attorneys on our mechanical practice team have experience in a wide variety of technical arts. They can assist you in every aspect of both protecting your intellectual property through U.S. and international patents and patent portfolio management and advising you on the IP strategies of key competitors. Whether you are an inventor, a start-up business or a large international corporation in high or low technology, we can help you establish and enforce U.S. and international patent portfolios tailored to your specific needs.

Electrical.
Handling patents and managing patent portfolios, both in the U.S. and internationally, requires attorney-engineers with solid backgrounds in physics, electrical engineering and many more disciplines, as well as IP law. Our team has both, so we understand the innovations you bring to market. Our ability to grasp the technical nuances and competitive features in such diverse areas as antennae array systems, data networks, quantum cryptography, fiber-optics, robotics, nanotechnology and virtual reality applications, to name a few, can help you stay ahead in an intensely competitive marketplace.

Computer Science.
Many of today’s innovations are implemented with software executed on computers. However, internationally and in the U.S., there are open questions about the eligibility of software implemented inventions to be patented. We keep abreast of the state of the law and its trends in various countries to know and effectively predict how patent applications will be treated years after they have been filed. We draft applications to result in meaningful worldwide patent protection for this important area of technology.