Patents



Leveraging our experience filing patents and developing comprehensive patent strategies, we partner with clients that drive technological and/or scientific advancements to protect, exploit and commercialize their patents.

Our Approach

Our patent attorneys, patent agents and technical specialists hold undergraduate and/or advanced degrees in computer, electrical and mechanical engineering, biology, biochemistry, chemistry, microbiology or other related areas. Many team members also have worked outside the legal field as business industry leaders or as cutting-edge researchers. These combined experiences give us the legal and business acumen to provide clients with the strategic counsel necessary to develop strong, innovative and enforceable patent portfolios integral to business success.

Our goal is always to develop a patent strategy that neutralizes our clients’ competition. We remove obstacles and help clients stay ahead of patent laws and judicial decisions, including the ever-changing post-issuance America Invents Act procedures. Furthermore, we provide solutions for navigating around competitors’ patents. We have extensive experience helping clients maintain rights and ownership, protect assets, generate revenue from patents and leverage the technologies of the future.

Our Experience

  • Assist Semiconductor Energy Laboratory (“SEL”), a Japan-based company that engages in the research and development of crystalline thin film integrated circuits, liquid crystal and organic electroluminescent displays, semiconductor thin film transistors, lithium-ion batteries, oxide semiconductors and wireless elements in building and managing its U.S. patent portfolio, which is focused on semiconductor and flat panel displays.
  • Assist Brigham and Women’s Hospital, a major Boston research hospital that is part of the Partners Healthcare not-for-profit health care system, with creating a program that educates researchers and hospital technology transfer staff on IP protection to protect specific technologies.
  • Assist California Institute of Technology, a private doctorate-granting university, on managing a portfolio of U.S. and international patents.
  • Assist Massachusetts General Hospital, a teaching hospital of Harvard Medical School that has been ranked by U.S. News as the #1 hospital in Massachusetts, in managing an extensive portfolio of patents.
  • Represent Partners Healthcare, a Boston-based nonprofit hospital and physicians network that includes Brigham and Women’s Hospital and Massachusetts General Hospital, on managing an extensive portfolio of patents related to ground-breaking innovations in immune therapy for cancer treatments and gastrointestinal disorders.
  • Assist Cedars-Sinai Medical Center, a nonprofit, hospital and multi-specialty academic health science center located in Los Angeles, on a range of patent prosecution matters and tech transfer matters, including licensing and spin-off transactions, collaboration agreements, material transfer agreements and confidentiality agreements.
  • Assist sComm, a consumer electronics company focused on developing technology to enhance personal interactions with those in the deaf community, in building and managing a patent portfolio with their products, particularly their wireless face-to-face communication device, which facilitates real time texting for mobile devices.
  • Assist the Wyss Institute, a cross-disciplinary research institute at Harvard University focused on developing new bio-inspired materials and devices for applications in health care, manufacturing, robotics, energy and sustainable architecture, in building a patent portfolio related to specific technologies.
  • Represent Children’s Hospital, Los Angeles, a nonprofit, pediatric academic medical center, in managing a large patent portfolio.

A To-Do List for New USPTO Director Iancu

Law360 | February 05, 2018

Washington DC IP counseling and transactions partner Jeffrey Costellia is quoted in this article about the possibility of reforms at the Patent Trial and Appeal Board. Andrei Iancu was confirmed as the new director of the U.S. Patent and Trademark Office, which oversees the board.

Drugmaker asks federal judge to invalidate rival company patents

Los Angeles Daily Journal | October 10, 2017

Los Angeles IP litigation partner Shawn Hansen is quoted in this article about drug maker Amgen Inc.’s request for a federal judge to invalidate patents claimed by a rival company so it can create a generic, less expensive version of a popular cancer drug.

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.

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

  • U.S. News/Best Lawyers—Recognized for Patent Law (2015–2017)
  • IAM Patent 1000—The World’s Leading Patent Practitioners—Recommended for patent prosecution, including seven patent lawyers individually listed (2012–2018)
  • Managing Intellectual Property—Ranked as a top U.S. law firm for securing “the highest-quality patents”; recognized as a national leader in the patent category for bio life sciences; five IP attorneys recognized as “IP Stars” (2013–2018)
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