Patents

In order to determine the potential for meaningful patent protection, our attorneys work with clients to define and understand the invention so that an appropriate patentability search can be conducted. We engage professional searchers with a suitable technical background so that the search identifies relevant references. Our attorneys review these references with the client to determine if the scope of possible patent protection warrants the time and expense of seeking patent protection.

Patent drafting is an art form, and our attorneys are artists. Although the right to exclude others from practicing an invention is defined by the claim(s) of a patent, our attorneys appreciate the importance of the entire patent application, from the abstract and written description to the drawings and the claims. Regardless of whether the client is filing their first patent application, or filing another patent application to complement an existing extensive patent portfolio, our attorneys focus on drafting patent applications that maximize value.

Our attorneys are experienced practitioners with years of careful management of patent applications through USPTO examination. We recognize that the needs of each client are different and can change over time, so our patent attorneys continue to consult with the client during the examination process so that any resulting patent(s) provides the desired protection. We are well-versed in all aspects of patent prosecution, from initial application processing, office action practice, to allowance, issuance, and if needed, appeal.

Like the way your clothing, shoes, consumer product or even software screen looks? A design patent that protects aesthetic, ornamental or non-functional aspects will help you keep the copycats away. Design patents are relatively inexpensive to file versus utility patents. To broaden the scope of your design patent filing it is important to understand how to claim only the portion of your product protected by the ornamental design. Experience matters. We have over a 95% approval rate on design patents.

As a US Patent is limited to providing protection in the United States, we counsel clients on the desirability of obtaining patent protection outside of the U.S. in light of the client’s business needs relative to budget and other considerations. When appropriate, we utilize the Patent Cooperative Treaty (PCT) for utility patents and Hague Agreement for design patents as part of the strategy to obtain the client’s desired territorial patent protection. In this regard, the firm has an extensive network of associate law firms outside of the US that we work closely with to protect our clients’ interests.

Critical business decisions are based on well-informed opinions. Our attorneys help clients and co-counsels representing our clients, make smart decisions by providing a variety of formal legal opinions. For example, are you coming out with a new product or service, and wondering if it is patentable? A patentability or novelty search can help to gauge the probability of protecting your product or service with a patent. Worried that you may infringe a third party’s intellectual property? We can guide you with this investigation and provide a non-infringement or invalidity opinion if appropriate.

Whether you are considering challenging a third-party patent or defending your own patent, our attorneys can assist.  We represent clients in all USPTO post-grant proceedings before the Patent Trial & Appeal Board, including inter parties reviews (IPRs), covered business method reviews (CBRs), ex parte reexaminations, post-grant reviews, and supplemental examination. We also work closely with foreign counsels to enforce and defend clients’ patent rights around the world, including opposition proceedings. 

While we are not litigators, we often work with other attorneys in intellectual property litigation. We are routinely asked to consult on federal and state litigation matters to contribute intellectual property expertise as needed. Our goal is always to be part of the team, and work seamlessly with outside counsel to protect the client’s interests.