Nixon Peabody’s Patent Prosecution Team
The objective of our Patent Prosecution team is to help clients:
- Protect their innovations through patents
- Use their own innovations freely
- Maximize the revenue generated by their products and processes
To fulfill these aims, we provide a full range of services related to patent prosecution, including:
- Conducting patentability studies
- Preparing and prosecuting patent applications
- Correcting errors in issued patents through reexamination and reissue proceedings
- Conducting patent interference proceedings
As one of the nation’s leading patent procurement law firms, we have a wealth of knowledge and experience working with the U.S. Patent and Trademark Office. Our attorneys and agents have rich technical educations and industry experience in a variety of engineering fields, including:
- Mechanics
- Electronics
- Electromechanical
- Biotechnology
- Chemistry
- Computer software
- Other technologies
Counseling and Opinions
W e 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: Patents held by competitors often raise concerns with our clients about patent infringement liability. We review such patents, as well as U.S. Patent and Trademark 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 problem, we provide 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 receive and whether it would cover what they intend to commercialize. We also evaluate any litigation involving the patents, giving our clients the information they need to determine whether the acquisition is a prudent investment. We also conduct due diligence 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 the 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 and Reissue: The Patent Prosecution Team has 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, and medical devices.
