Patent Prosecution
With respect to patent prosecution, the group has many attorneys who are registered to practice before the U.S.P.T.O. Several of these are former Patent Examiners from the U.S.P.T.O., and several more had engineering, consulting, and research careers before attending law school. The team has extensive experience drafting new U.S. and Patent Cooperation Treaty (PCT) patent applications and performing the follow-up prosecution work including drafting responses to office actions, conducting interviews with examiners, and preparing appeals to the Board of Patent Appeals and Interferences. In addition, the team works closely with a network of foreign associates who assist in gaining foreign patent protection for our clients.
The team also has successfully prosecuted reexaminations, reissue applications, protests, and interferences. Thus, the IP group can help clients make informed decisions about the best tactic regarding a particular patent or patent application. For example, reexamination can be a powerful tool for both a patent holder and a third party challenger. In fact, reexamination may be helpful to patent holders that are considering a patent suit against an infringer, but are unsure of how the patent claims will hold up against an obviousness challenge post-KSR. In addition, ex parte and inter partes reexamination proceedings assist in bringing substantial new questions of patentability regarding an existing patent to the U.S.P.T.O.’s attention for reconsideration. While this is an attractive option for those wishing to challenge the validity of patent claims, a third party requester must be aware of the estoppel consequences in an inter partes reexamination.
Technological areas include computer hardware, software, business methodology, neural networks and artificial intelligence, encryption, chemical compounds, chemical mixtures, chemical processing, mechanical devices in the fields of internal combustion, nuclear engineering, satellite attitude control, solar reflectors, lasers, optical systems, biotechnology, pharmaceuticals, and medical devices, to name a few.
