Patent - Counseling & Transactions
Our lawyers team with clients to create and manage patent portfolios and strategies on technology development and intellectual property related transactions. We provide creative and mindful guidance in the acquisition and licensing of intellectual property, as well as in joint ventures, collaboration agreements, mergers and other relationships -- drawing on the broad experience of our Intellectual Property lawyers and their counterparts in Corporate,Tax and other applicable practice groups.
Prosecution services include:
- Working with inventors to identify and describe invention
- Patentability and freedom to operate opinions
- Inventorship and assignment issues
- Responding to office actions and handling all aspects of patent examination
- PCT foreign patent filings
- Portfolio management
We assist our clients in developing timely, comprehensive patent applications that can withstand the most severe scrutiny.
Counseling services include:
- Conducting audits of intellectual property assets
- Drafting and reviewing patent clearance and patentability opinions
- Researching and developing opinions on patent invalidity, as well as non-infringement opinions
- Developing and assisting clients in executing intellectual property policies
Transactional services include:
- Drafting and negotiating patent assignments, licenses and cross licenses, as well as security agreements involving intellectual property use and other types of monetization
- Drafting technology development agreements, including those related to teaming, joint ventures, and other cooperative development strategies
- Addressing all intellectual property aspects of mergers and acquisitions, including due diligence, contract drafting, and review and negotiation
- Devising tax strategies for intellectual property ownership
We pride ourselves on our proactive approach to counseling and patent management. This includes keeping clients informed of new interpretations of case law related to double patents, the "obviousness" test and how it applies to improvement patents, and the doctrine of equivalents all used by many courts.
