Patent prosecution refers to the preparation and filing of an application for patent, together with the representation and advocacy of the client before a patent office to secure issuance of the patent. We have a robust team of experienced professionals covering an array of technical backgrounds and practice areas to handle every aspect of patent prosecution. The firm handles more than 1,000 domestic and international patent prosecution cases each year.
In addition to consideration of the client's immediate goals for protecting the client's invention, quality patent prosecution also involves strategic decision-making to account for possibilities of future litigation involving the patent. Our team of patent prosecutors works closely with our experienced litigators to ensure a solid foundation is set during prosecution for the integrity and enforcement of the issued patent.
Patent Landscape Searches
These involve the search and compilation of issued patents and pending applications relevant to a specific technology or technical field. Analysis of the search results provides an indication of the breadth, scarcity and particular characteristics of a specific area of IP rights to provide a potential direction(s) for a business to navigate through the IP landscape uncovered and/or identify other players on the relevant IP playing field.
The United States Patent and Trademark Office (USPTO) offers several alternatives to Federal Court litigation for U.S. patent validity challenges. These include:
- Ex parte re-examination proceedings to cancel or narrow scope of patent coverage
- Post-grant review, inter partes review, and covered business method review to challenge validity of patent claims
- Derivation proceedings directed to determining whether an inventor improperly derived the invention from another individual
The costs associated with these alternative avenues to challenge patent validity can be less than the costs of litigation and, therefore, may be a better option for clients seeking to invalidate a potentially adverse patent. We advise clients on either end of PTAB proceedings.