Patent Counseling & Portfolio Management

Effective patent counseling and patent portfolio management can be key to leveraging inventions to bring value to a business. Patent counseling and patent portfolio management is important through the life of a patent, including filing, prosecution, maintenance, and enforcement.

Patent Transactions & Licensing

Patent transactions and patent licensing can be a way for patent holders to generate value in connection with a patent portfolio. Patent licensing also can be a mechanism to lawfully practice an invention covered by another’s patent.

Patent Protection

Patents can be a central component of an intellectual property (IP) portfolio. Once issued, a patent can exclude another from engaging in certain activities that would compete with the patent holder. In seeking to protect an invention through patent protection, clients can develop and maintain a competitive position in the marketplace.

Inter Partes Review (IPR) Proceedings

Inter partes review (IPR) is a proceeding to challenge the validity of an issued patent at the United States Patent and Trademark Office (USPTO). If instituted, IPR can be a quicker, more cost-effective option to challenge a patent than federal court litigation may provide.

Covered Business Method (CBM) Review

Covered business method (CBM) Review provides a means to challenge the validity of an issued patent meeting the definition of a “covered business method patent” at the United States Patent and Trademark Office (USPTO). If instituted, CBM Review can be a quicker, more cost-effective option to challenge a covered business method patent than federal court litigation may provide.

Patent Due Diligence

A technology development and patent portfolio management strategy may include patent due diligence to evaluate the intellectual property (IP) of others to gain freedom to operate in a given technology field. Patent due diligence also may occur in evaluating a patent portfolio, such as in a corporate transaction that may involve patent acquisition.

Third-Party Patent Submissions

Until recently, third parties have had few options to influence the outcome of a third party’s patent application while it is pending in the United States Patent and Trademark Office (USPTO). Third-party patent submissions (pre-issuance submissions) allow a third party to make submissions to be considered by the USPTO when it evaluates whether to allow another party’s patent application to issue as a patent.

Patent Infringement Defense

Being sued for patent infringement can be risky, expensive, and disruptive. If a company is found liable for patent infringement, it may be forced to pay damages for having used the patented technology, and there are instances where the company may be stopped from continuing to use the patented technology.

Patent Reexamination

Patent reexamination provides a means for a third party to challenge an issued patent in the US Patent & Trademark Office (USPTO). It also provides a patent holder with a means to potentially bolster an issued patent, such as by having newly discovered prior art considered.

Post-Grant Review (PGR)

Post-Grant Review (PGR) is one of the newest proceedings available in the US Patent & Trademark Office (USPTO) to challenge an issued patent. Because a Post-Grant Review request must be filed no later than nine months after the issue date of a patent, time is of the essence to challenge a patent through Post-Grant Review.