Patent Prosecution

Our patent prosecution lawyers are experienced in all aspects of prosecution practice. We represent companies on a global basis including technology companies and start-ups in the United States, Europe and Asia. Guided by our former administrative patent judges, we are particularly accomplished in the handling of appeals before the Board of Patent Appeals and Interferences. Our lawyers are particularly skilled in prosecution reissue and reexamination applications, often taking over cases originally handled by other firms. We also have lawyers who concentrate on interference proceedings, in which parties who have made the same invention compete to achieve entitlement to a patent by proving to be the original inventor.

Evaluating the patent rights of your competitors is often just as important as obtaining patent rights. Our clients need to know if they are free to produce their products without infringing on the intellectual property rights of others. Our lawyers are often engaged to render infringement and validity opinions with respect to patents and products of competitors of our clients. We measure the risk of exposure of the products or services of our clients to potential claims of infringement of patents owned by competitors and, conversely, determine whether there is infringement of patents obtained for our clients by the products of competitors. Our lawyers frequently are engaged as expert witnesses to assist other firms in litigation and to provide expert opinions on various legal and technical issues.

We are committed to obtaining the broadest possible protection for each patent prosecution matter. In doing so, members of our IP Department are available to travel to clients’ plants and research facilities to meet with inventors in order to understand client innovations and the economic benefits expected from such innovations. Once patent protection is obtained, our clients then have the benefit of our strong licensing and enforcement experience to maximize the patent’s value.

Our patent prosecution lawyers have an extensive working relationship with non-U.S. based intellectual property firms, which allows us to direct the development of patent rights and obtain patents for our clients throughout the world. Our lawyers also represent international clients before the USPTO and have considerable experience working together with those clients to obtain valuable U.S. patents.

Contacts

Intellectual Property, Media & Technology Client Services

McDermott Will & Emery

McDermott Will and Emery