Patent Prosecution Lawyers
Our patent prosecution law practice is defined by one purpose—to add value for our clients. Whether strategically positioning a patent portfolio from the ground up, working with the U.S. Patent and Trademark Office (or foreign counsel for patent offices outside the U.S.) to get a patent granted, or defending a client’s patent after it has been granted, we carefully evaluate and implement each step in the legal process based on the strategic value it provides the client. We are a team of seasoned patent attorneys and former PTO examiners (with degrees in electrical and mechanical engineering) adept at assessing, developing, and obtaining high value patent and trademark portfolios, both domestic and foreign.
We represent a wide range of clients, from individual inventors and emerging companies to large corporations and universities. Our notable clients include the University of California, California Institute of Technology, Abbott Laboratories, Becton Dickinson, and SOBERLINK, to name a few. Our technical expertise ranges from computer software and hardware related arts, such as e-business applications and data communication systems, to device-related arts, such as medical devices.
When preparing patent applications, especially for startup clients, we recognize that every dollar counts. Thus, we provide advice on the most cost effective strategies to pursue and preserve intellectual property rights as well as realistic budgets. We further work with clients to develop internal programs designed to facilitate cross-functional collaboration between R&D and the business groups, thereby maximizing in-house opportunities for innovation.
When prosecuting patent, we recognize and appreciate that the PTO examiner is like a judge with wide discretion on deciding the fate of an application. We therefore are mindful that we are our client’s advocate, not the examiner’s adversary. Thus, our approach is to carefully assess how to connect with a particular examiner first (e.g., determine what facts would be persuasive and what would not), thereby maximizing the impact of every response we make.
Our team also has substantial experience in successfully defending granted patents, whether in an ex parte reexamination or an inter partes review (“IPR”). We recently maintained the validity of an ophthalmic-based patent after three separate attempts by a competitor to invalidate our client’s patents in an ex-parte proceeding. Further, our team recently obtained a rare patentee victory in an IPR trial initiated by a competitor in the refrigeration shelving space (historically the Patent and Trial Board has invalidated almost 90% of the patents challenged in IPR petitions). Our team includes top-notch patent litigators who bring their trial skills to these proceedings.
Some of our more notable patent prosecution experience includes:
- Representing client before the US Patent and Trademark Office (“USPTO”) and foreign patent offices, including patent offices in Europe, Asia and South America, to obtain patents directed to plasma energy production.
- Representing client before the USPTO to obtain patents directed to power transmission and conversion systems.
- Representing client before the USPTO and foreign patent offices, including patent offices in Europe, Asia and South America, to obtain patents directed to natural gas storage and transport systems.
- Representing client before the USPTO to obtain patents directed to automated vending systems.
- Representing client before the USPTO and foreign patent offices, including patent offices in Europe, Asia and South America, to obtain patents directed to surgical devices.
- Representing client before the USPTO to obtain patents directed to digital imaging technology.
- Representing client before the USPTO and foreign patent offices, including patent offices in Europe, to obtain patents directed to sobriety monitoring devices and systems.
- Representing client before the USPTO to obtain patents directed to e-business solutions.