DEVICES & MANUFACTURING TECHNOLOGY

In order to maximize the potential value of new products and processes, businesses must protect their innovations. We work with clients all over the world to obtain and fully protect intellectual property rights in the products, processes, and methods that are vital to their business results.

Our advice is well-informed and practical. Group members have training and experience in mechanical, electrical, manufacturing, computer science, optical, chemical, and biotechnology disciplines. The practice also includes former patent examiners with unique insights into the inner workings of the U.S. Patent and Trademark Office (USPTO).

Our services include:

• Strategic portfolio management
• Preparing and prosecuting patent applications both in the United States and internationally
• Conducting patentability and validity studies
• Correcting errors in issued patents
• Conducting patent interference proceedings and new post grant actions before the U.S. Patent and Trademark Office
• Conducting reexamination proceedings
• Preparing infringement analysis and opinions
• Licensing and assignments

Sophisticated technologies

While counseling, prosecuting, and litigating for clients, our lawyers have dealt with many sophisticated technologies including:

• Computer hardware and software
• Computer networks and related management systems, including network security
• Business methods
• Image processing
• Semiconductor devices and fabrication techniques
• Liquid crystal and electroluminescent display devices
• Chemical processing systems
• Bioinformatics
• Power systems
• Medical devices
• Consumer electronics
• Social media
• Gaming technology
• Wireless communications
• Automotive
• Mining technology
• Packaging products and methods
• Coin and currency apparatuses and methods
• Dental implants

Infringement analysis and opinions

Patents held by competitors often raise concerns about patent infringement liability. We determine the validity of patents and the risk of infringement, and provide ways to avoid potential problems. We can also analyze competitive products to determine whether they infringe our clients’ patents.

We counsel and recommend the best course of action in a variety of situations, and where appropriate, provide written opinions that contain a detailed summary of our investigation and analysis. Areas of counseling include:

• Patentability evaluations: We obtain patentability searches on new inventions and advise clients whether patent protection can be obtained and what the scope of that protection might be.
• Evaluation of competitors’ patents: We review competitors’ patents, as well as USPTO files, to determine whether there is a risk of infringement and whether the patents are valid. Where we conclude that there may be an infringement issue, we provide straightforward guidance on how to avoid it.
• Due diligence: Our clients often decide to acquire existing technology, rather than develop it internally. We evaluate patents covering such technology and advise on the scope of protection they may provide and whether they cover what is intended to be commercialized. We also evaluate any litigation involving the patents, giving our clients the information they need to determine whether the acquisition is a prudent investment. Our due diligence is particularly useful for mergers and financings, as well as public offerings.
• Inventorship/ownership investigations: In view of the increased value of patents in commerce, disputes can arise regarding inventorship and ownership. We conduct investigations and provide guidance to clients on how to resolve these disputes.
• Corrective action for existing patents: After a patent is obtained, information may become available that calls into question the validity of the patent or the adequacy of the protection it provides. We can investigate whether a concern truly exists and, if there is a problem, provide guidance on appropriate corrective action through reissue or reexamination.
• Patent interferences/reexamination: Our lawyers have developed particular skills and experience in the specific fields of patent reexaminations and patent interferences. We have handled dozens of interference proceedings in a variety of technologies, including pharmaceutical compositions, genes, protein, medical devices, and electronics. While interferences are being phased out, post-grant review has been instituted. Further, many parts of interferences remain in derivation proceedings and post-grant review. Accordingly, our extensive experience in these areas will be invaluable in these new fields.