Intellectual Property & Patent Prosecution
Intellectual property, in particular, global patent protection strategy and U.S. patent prosecution, is one of the core strengths of this firm. The majority of the patent attorneys in this firm have over ten years of patent prosecution experience. We are savvy with technology, and we are experts in patent prosecution.
We routinely advise on global patent protection strategies tailoring to the needs of particular clients and advise on the manner in which to execute such strategies in the most cost-efficient manner.
We are also experienced in other areas of intellectual property, including trademark, copyright, and trade secrets. Our attorneys possess technical expertise in key industries, such as telecommunications, integrated circuit design, electronics, software, multimedia, the Internet, computer networking, medical devices, energy, publishing, and the arts.
Our practice encompasses all elements of intellectual property, from selection, development, registration and licensing, to protection and litigation.
Building or Acquiring Your IP
A company is nothing but its IP. Veteran executives understand that intellectual property is the core essence of a company. In order to compete in the marketplace, a company must build the necessary competitive IP or acquire it. The quality and quantity of these assets, in combination with your ability to protect and to strategically deploy them, will determine a company’s success or failure.
We are prepared to put our intellectual property expertise to work for you in all aspects, including:
- United States patent prosecution
- International patent protection strategy
- Legal opinions with respect to patent infringement
- Trademark and copyright registration
- Acquisition, development, and licensing of intellectual property
- Intellectual property audits and due diligence
- Litigation of all types of intellectual property infringement and unfair competition matters
Establishing an Intellectual Property Protection Program
We are experienced in developing the necessary protective procedures in order to ensure the coverage of your intellectual property. We will work with you to develop the suitable proprietary rights program for your patents, trademarks, copyrights, and trade secrets. This includes everything from trademark protection, patent strategy, a patent development program, employee agreements, contractor agreements, and confidentiality agreements.
History of Vigorous Representation and Success
Our history of success in intellectual property prosecution and litigation includes vigorous and creative representation with respect to hundreds of patent applications before the U.S. Patent and Trademark Office, notable major IP litigation cases before the Federal courts, and experienced handling of matters before the International Trade Commission and Customs Services.
Patent Services
One of our core practice areas is counseling clients in various areas of patent law, including:
- Strategic counseling for patent portfolio development
- Preparing, filing, and prosecuting US patent applications
- Providing domestic and international filing strategies, including for
We welcome new clients from various technology industries and of all sizes.
1. Patent Portfolio Development
We have extensive experience in counseling clients for developing robust and valuable patent portfolios tailored to the goals, objectives, and industries of our clients. Each client has specific needs and concerns which we strive to understand when developing a patent portfolio. For instance, we assist our clients in identifying key technologies to patent in order to secure the clients’ interests and to protect against any competitors.
We have also developed patent incentive programs for companies of various sizes. A patent incentive program incentivizes the inventor’s full cooperation and effort to patent an invention by compensating the inventor at various stages of the patenting process. For example, an employee who invents a novel apparatus or method receives compensation at the following stages of the patenting process: (1) when the respective company of the employee decides to patent the invention; (2) when the patent application is filed; and (3) when the patent application is issued as a patent. By receiving compensation at various states of the patenting process, the employee is incentivized to develop novel ideas, aid in the drafting of the patent application, and aid in the prosecution of the patent application. Ultimately, the respective company benefits from the patent rights gained on the invention.
2. US Patent Practice
We are committed to providing high quality work and superb client service, while still being cost effective throughout the patenting process. Domestic and international companies seek out our services to protect their inventions and other intellectual property in the United States and elsewhere in the world.
Our experienced professionals have prepared and prosecuted hundreds of US patent applications related to various technologies including analog and digital integrated circuits, computer hardware and software, mobile telecommunications devices, wireless networks, electronic instrumentation, semiconductor materials, devices, equipment and processing, renewable energy technologies, LED technologies, battery technology, chemical compositions, biotechnology, and medical devices.
3. International Patent Practice
Many companies require protection in geographic locations outside the US. We help companies develop business and intellectual property (“IP”) strategies for protecting their opportunities and IP in these other geographical locations by creating sophisticated and cost-effective international filing strategies. Once a strategy is established, we work with a network of foreign law firms to secure patent protection for our clients in the European Union, China, Taiwan, and throughout the world. We also prepare and file international patent applications (PCT patent applications) according to the Patent Cooperation Treaty.
4. Licensing or Selling of Patents
We work closely with our clients to monetize their inventions through licensing (or selling) of their patents. Licensing a patent can be an important tool in maximizing the patent’s value. However, drafting and securing the best possible licensing agreement requires the necessary legal skills as well as the business acumen to determine favorable terms for the license. We also aid our clients in selling their patents when the right opportunity arises.
5. Patent Portfolio Due Diligence
For investors looking to purchase companies who hold patents and other intellectual property, it is important to perform thorough due diligence before completing the transaction to ensure that the investor or purchaser understands the strength and value of the patents it is obtaining, and is aware of any potential problems that may arise.
Generally, other law firms have corporate associates who are not familiar with the US patent system to review a patent portfolio, and thus do not fully appreciate problematic issues that may arise. Our strong understanding of drafting and prosecuting patents allows us to be highly sensitive to various issues and pitfalls when conducting due diligence.
Check out our Information page for more details.
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