Patent Prosecution


Inter Parties Review Blog

Patent Prosecution

What distinguishes many of our clients from their competitors is their innovation and advancements that address the needs of the industry and the public at large. Intellectual property is most often among our client’s most valuable assets. Protecting such assets is one of the most important tasks that our clients face. This effort can be achieved only by relying on outstanding counselors and attorneys who understand their business, strategies and goals, and who consistently work with their management and technical teams to provide strategic counseling to develop patent portfolios. Our patent attorneys serve in these roles for our clients.

Utility Patents

Our patent attorneys and professionals have successfully prepared, prosecuted and secured issuances of many thousands of patent applications in the United States and throughout the world across a full spectrum of technologies. We have significant experience with forming strategies for securing offensive and defensive patent portfolios, which are some of the strategies we form for our clients.

What sets us apart is our understanding that securing a strong and enforceable patent is the driving force of our clients’ strategy. We assist our clients in this effort with a mindset that every application we prepare, file and prosecute would be involved in an asset-generating transaction, or even in litigation. Such strategic understanding is the backbone of our approach to securing patent rights for our clients. Because every one of our attorneys prosecuting patent applications participates in various litigation-related efforts, we fully understand how to procure patent protection for our clients so as to maximize their investment.

Many not-for-profit entities turn to us to form patent and technology strategies to benefit the research and business licensing model of such institutions. In particular, we represent a number of universities, medical centers and research institutions, as well companies emerging from such entities to help them achieve their goals. We use our market knowledge to help clients fully develop their patent portfolio and achieve their desired goals, financial obligations and the overriding need to bring important products to the market for the betterment of the public. 

Design Patents

We have successfully filed nearly 1,500 design patents for a wide range of products and technologies, from footwear and apparel to electric motors and computer software. We have experience managing global design patent portfolios for Fortune 500 companies, coordinating global design strategies and filings with non-U.S. law firms, filing design patents with the U.S. Patent and Trademark Office (USPTO), and litigating design patents in U.S. federal courts.

Our design patent prosecution practice is bolstered by our extensive experience in counseling our clients on questions of infringement, validity and freedom to operate. The field of design patents is highly intricate and nuanced, and our counseling practice provides our lawyers with the proper perspective to prepare and prosecute design applications. Our lawyers are also recognized authorities in design patent law and serve as members of the IPO Industrial Designs Committee and USPTO Design Day Planning Committee.

Business Method Patents

Since the landmark 1998 decision in State Street Bank v. Signature Financial Group triggered an awareness of the “business method” claim as a viable form of patent protection in the United States, we have been a pioneer in creating custom IP strategies related to business method patents for our clients, and regularly represent our clients in business method patent litigation. We represent major corporations, small and medium-sized organizations, universities and research institutions in diverse industries including finance, insurance, publishing and software development in business patent-related matters.

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