Patent Portfolio Strategy and Counseling

Overview

In recent years, the US patent system has experienced an unprecedented overhaul. To protect, exploit and commercialize their intellectual property assets to the fullest extent, businesses must understand the ramifications of these changes and take proactive steps from the very beginning of the research and development process.

McDermott’s patent prosecution lawyers have significant experience in all aspects of patent-related intellectual property law, including the effects of recent judicial rulings as well as the new US Patent and Trademark Office (USPTO) inter partes review and post-grant challenge proceedings that are the result of the America Invents Act. Equally important, we understand our clients’ goals—and those of their competitors—and the business and legal strategies that can lead to long-term success.

Our IP portfolio and asset management team analyzes existing intellectual property assets, systems and distribution channels, and develops strategic plans to strengthen the protection and leveraging of clients’ creative output. We help companies identify new market opportunities and partners, and increase revenues and shareholder value. We also understand that the IP-financing well is not bottomless, and help our clients achieve these objectives without devoting large capital expenditures.

We regularly conduct evaluations of the patent rights of our clients’ competitors to help ensure that they can produce their products without infringing on the intellectual property rights of others. Our patent prosecution lawyers have an extensive working relationship with intellectual property firms worldwide, and often represent international clients before the USPTO to obtain valuable US patents. We are also engaged frequently as expert witnesses to assist other firms in litigation and to provide expert opinions on various legal and technical issues.

Related Capabilities

Acquisitions and Joint Ventures

We recognize that patents and other IP assets are often a major—and sometimes the primary—driver of mergers, acquisitions and joint ventures, in technology and non-technology industries alike. Where principal assets include patentable products and business methods, our lawyers help clients determine the scope and value of a target company’s patent portfolio, and assess the strength of the potential acquiree’s patent prosecution and protection policies and processes. Working with lawyers throughout the Firm’s practices and offices, we also advise clients on antitrust, tax and other corporate matters that arise in the context of major transactions involving intellectual property.

Due Diligence

On behalf of owners, licensors and licensees of patents and other IP assets, we regularly conduct audits to determine the scope, market value, enforceability and protection of IP portfolios. We work with clients from the initial negotiation stages of a transaction to ensure that any critical legal or business issues, including ownership or freedom to operate concerns, are quickly identified and resolved before moving forward to the next phase of the deal. When the transaction includes IP assets under dispute, we work with our experienced IP litigators to assess the potential impact of the conflict and the likelihood of various resolution scenarios.

Licensing

On behalf of owners, licensors and licensees of patents and other IP assets, we regularly conduct audits to determine the scope, market value, enforceability and protection of IP portfolios. We work with clients from the initial negotiation stages of a transaction to ensure that any critical legal or business issues, including ownership or freedom to operate concerns, are quickly identified and resolved before moving forward to the next phase of the deal. When the transaction includes IP assets under dispute, we work with our experienced IP litigators to assess the potential impact of the conflict and the likelihood of various resolution scenarios.

Prosecution

Our patent prosecution lawyers and agents are experienced in all aspects of prosecution practice and, each year, are responsible for the issuance of thousands of US and foreign patents. We represent numerous companies on a global basis, including multinational companies and start-ups in the United States, Europe and Asia, in the telecommunications, computer hardware and software, semiconductor fabrication, business methods, robotics and servomechanisms, energy and alternative energy, chemicals, polymers, biotechnology and pharmaceutical chemistry sectors. We are particularly accomplished in the handling of inter partes reviews and post-grant challenges before the USPTO’s new Patent Trial and Appeal Board (PTAB), often taking over cases originally handled by other firms.

Trade Secrets

We have protected and enforced trade secrets involving a wide range of consumer, industrial and advanced technology products, including telecommunications equipment, gaming equipment, software, chemicals, seed products, aerospace vehicles, life sciences products (including stem cells), hard disk drives and media, paint manufacturing technology, biomedical imaging, semiconductor design, process, manufacturing equipment and packaging, and power tools. Our lawyers provide multidisciplinary trade secret counseling and dispute resolution services that emphasize the design and implementation of appropriate confidentiality and non-disclosure agreements and their effective application in business transactions. We have handled hundreds of trade secret lawsuits and disputes in venues ranging from state and federal courts throughout the United States, to the International Trade Commission (ITC) and other multilateral tribunals.

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"The depth of their understanding of the practices, and...up to the minute thinking of the [PTO] makes this firm particularly successful and efficient..."

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