Patents



We have the scientific, legal, and business acumen to help clients strategically develop strong, innovative, and enforceable patent portfolios that are the foundation of their business.

Our approach

The patent landscape and global business landscape are rapidly shifting. Companies are increasingly encountering obstacles in their path to commercialization. Our attorneys are at the forefront of the shifting landscape. We work closely with clients to remove obstacles, help them stay ahead of changing patent laws and judicial decisions, and provide solutions for navigating around competitors’ patents, extracting value from their intellectual property, and for protecting their assets.

As one of the leading, full-service, patent firms, we’re very experienced in helping clients maintain rights and ownership, generate significant revenue from their patents, and leverage the technologies of the future.

We understand the changing post-issuance AIA procedures and help clients leverage those procedures as part of an overall strategy to neutralize competitors.

Who we work with

  • Leading universities and medical centers
  • Biotech, medical device, health care, and pharmaceutical companies
  • Companies operating in the software and hardware industries
  • Manufacturers in a wide variety of business sectors including semiconductors, photonics, and communications
  • Electronics companies

Representative Experience

  • Manage a portfolio of U.S. and international patents on behalf of one the largest companies in the computer entertainment and video game industry
  • Assist a major software company in protecting its breakthrough advances in the areas of science and engineering and successfully defended the company against three reexamination attempts by third parties
  • Conduct IP due diligence on behalf of a large semiconductor company related to potential acquisition targets
  • Advise a leading currency authentication company with respect to managing a wide portfolio of U.S. and foreign patent
  • Represent a large media company in various IP transactions, including licensing arrangements
  • Handle technology transfer and licensing work on behalf of a leading academic medical center
  • Represent one of the world’s most recognized energy companies in a variety of licensing transactions, as well as a joint venture
  • Conduct IP due diligence on behalf of a financial service firm related to its investment in a third party
  • Work with one of the leading academic institutions in the United States to develop and execute an overall patent strategy for a water purification technology; this technology is particularly promising for under-developed countries
  • Provide U.S. and international patent prosecution services to one of the leading global manufacturers of conveyor belts for food processing and other applications
  • Assist a cutting-edge stem cell institute in devising and executing strategies that will extract the greatest value from their IP and also assist the institute in maneuvering around other people’s patents
  • Manage an extensive patent portfolio on behalf of one of the leading wireless telecommunications companies
  • Manage a large U.S. patent portfolio for a  Japanese research and development company focused on semiconductor and flat panel displays; the work we do is critical to the company’s success since its revenue model is predicated on its R&D

Attorneys react to Supreme Court patent venue ruling

Law360 | May 22, 2017

Los Angeles IP litigation partner Shawn Hansen is quoted in the following articles discussing the Supreme Court’s decision in the patent case TC Heartland LLC v. Kraft Food Brands Group LLC, which limits where plaintiffs can file patent lawsuits.

Supreme Court ruling could hinder ‘patent trolls’

The New York Times | May 22, 2017

Los Angeles IP litigation partner Shawn Hansen is quoted in the following articles discussing the Supreme Court’s decision in the patent case TC Heartland LLC v. Kraft Food Brands Group LLC, which limits where plaintiffs can file patent lawsuits.

Supreme Court decides how far patent laws can reach

Rochester Business Journal | April 21, 2017

Rochester private equity and investment funds partner Jeremy Wolk, Washington DC IP counseling and transactions partner Jeff Costellia and Chicago IP counseling and transactions associate Angelo Christopher co-authored this column about a Supreme Court decision regarding the reach of U.S. patent rights for exported products.

Biosimilar battle heads to high court

Los Angeles/San Francisco Daily Journal | February 15, 2017

Los Angeles IP litigation partner Shawn Hansen authored this column about an upcoming case in the U.S. Supreme Court that will deal with Biologics Price Competition and Innovation Act of 2009 (BPCIA), which was enacted as part of the Affordable Care Act (ACA).

Breville USA alleges patentable juicer design was used without authority

Northern California Record | December 06, 2016

San Francisco commercial litigation partner Bruce Copeland and associate Shady Joulani are noted as Breville USA Inc.’s counsel in a patent infringement case before the Northern District of California.

When starting a business, consider the liabilities

The New York Times | November 17, 2016

Long Island Health Care partner Allan Cohen is quoted in this article about legal challenges entrepreneurs can face when starting a business. Allan’s comments focus on areas start-ups should keep in mind such as patent, ownership and copyright issues, and what companies should consider to avoid being sued.

Rainmaker Q&A: Nixon Peabody's Jeffrey Costellia

Law360 | September 07, 2016

This profile features Washington, DC, partner, chair of the Global Strategies Committee and lead of IP Counseling & Transactions, Jeff Costellia. The Q&A showcases his focus on client service and he offers advice to new attorneys building their practices.

When it comes to high quality patents these are the US firms that lead the way

IAM | April 08, 2016

The story notes the U.S. law firms delivering the highest quality patents on their clients behalf. Nixon Peabody ranked among the top 10.

4 Times To File A Continuation Patent Application

Law360 | March 17, 2016

Silicon Valley IP litigation partner Jennifer Hayes provides third-party commentary throughout this article about when to file a continuation patent application.

Get Ready For EU Unified Patent Court and Unitary Patent

Law360 | January 08, 2016

San Francisco IP litigation partner Ron Lopez and Silicon Valley IP litigation associate Jennifer Hayes co-authored this column on the new single Unified Patent Court with jurisdiction over European patents.

Michelle Lee Steers USPTO Through Choppy Waters

Law360 | December 09, 2015

San Francisco IP Litigation partner Ron Lopez is quoted in this profile of U.S. Patent and Trademark Office Director Michelle Lee.

5 Mistakes to Avoid In Patent Prosecution

Law360 | October 07, 2015

Chicago IP Counseling & Transactions partner Paul Kitch provides commentary on the most common mistakes by patent prosecutors and how to avoid them.

UC Will Nurse Lab Inventions

Los Angeles Business Journal | June 22, 2015

This article focuses on a new $250 million independent fund created by the University of California to invest in research enterprises on its campuses.  Los Angeles IP Counseling & Transactions partner Seth Levy talks about the research environment particularly for health care technologies and how it’s changed with regard to what it takes to get technology licensed or spun out.

Don't Worry About Stem Cell Patents… Yet

Daily Journal | November 18, 2014

Los Angeles office managing partner and IP Counseling & Transactions attorney Seth Levy and Los Angeles IP Counseling & Transactions patent agent Stephen Chen authored this column discussing a recently filed U.S. Supreme Court petition in the ongoing saga about the patentability of stem cells.

Contacts

Jeffrey L. Costellia

Partner
Practice Group Leader, IP Counseling & Transactions

jcostellia@nixonpeabody.com

Phone: 202-585-8207

Jason C. Kravitz

Partner
Practice Group Leader, IP Litigation

jkravitz@nixonpeabody.com

Phone: 617-345-1318

  • IAM Magazine
    • Ranked in the top 5 for patent quality in the “consumer electronics/discretionary” category
    • Ranked in the top 10 for patent quality in the “information technology” category
    • Ranked in the top 10 in the “overall” category (which includes all industries)
  • Ocean Tomo ranked a patent portfolio managed entirely by Nixon Peabody in the top 1% for patent quality
  • U.S. News/Best Lawyers Best Law Firms, including 2016 “Law Firm of the Year” in Health Care Law
  • Ranked nationally in Tier 2 by U.S. News/Best Lawyers for Patent Law
  • IAM Patent 1000
  • Managing IP magazine
    • Ranked in the top 15 among all U.S. law firms for securing “the highest quality patents” for clients across all industries
    • Recognized as a national leader in the patent category for bio life sciences
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