Patent PreparationPatent ProsecutionReexamination/ReissueForeign Patent ProsecutionFreedom to OperatePortfolio AnalysisLicensing & Litigation SupportOpinionsNew PTO Proceedings under the AIA
Drafting your patent application is the most important step towards obtaining your monopoly right. Our attorneys understand your complicated and diverse technologies. We have the technical education and expertise to understand complex inventions in a broad spectrum of technologies, which means we get to the heart of the invention efficiently. This saves time and money.
After a patent application is filed, the process of patent prosecution begins. Patent prosecution involves responding to Office Actions issued by the United State Patent and Trademark Office to carve out the monopoly rights you deserve. From the start, we apprise the Examiner about your patent application and negotiate amendments to claims with little prosecution history. When we have to, we appeal your matter before the PTAB to defend the scope of the claims in view of the cited art or Examiner’s legal position.
As patents become the means for taking patent licenses, it is helpful to deflect such patents cited against your products or processes by initiating a Reexamination proceeding against the cited patent. Our attorneys can guide you through this process to seek invalidity of the cited patent. Sometimes Reexamination of a patent is initiated to strengthen the patent before embarking on a future lawsuit against a third party. Our experienced attorneys can help search relevant prior art, if it exists, for considering reexamination of your own patent. We can also correct deficiencies of your existing patents by initiating a Reissue process for your issued patent.
Every country has its own Patent laws and rules. We have successfully prosecuted patent applications in China, Japan, European Union, India, South Korea, Australia, and other countries. We partner with expert foreign patent attorneys to navigate the complex foreign patent laws and rules. We ensure that patent prosecution of your foreign matters is consistent with your US prosecution.
Freedom to Operate (FTO) are used to determine the patent landscape of the technology area you plan to adapt for your product or process. The idea is that you want to know if your product or process is possibly infringing an issued patent. We take time to understand your product or process roadmap, and identify patents that your products or process may infringe. FTO opinions can help with mitigating patent litigation risk.
Portfolio analysis involves understanding the strengths and weaknesses of your patents in different technology areas, and identifying ways to improve your portfolio to make it more marketable or stronger in view of your products or processes. We have the engineering experience and knowledge to understand your technology, and legal expertise to understand the strength of your patent claims. Our experience can help you harvest new ideas and set the roadmap for future patents.
As you become successful, licensing opportunities knock on your door. We help with defensive analysis to identify defensive risk of the asserted patents to your current and future products. We prepare validity analysis of the patents and identify possible defenses to gauge the defensive risk. We also assist with purchasing opportunities of patents to protect your current and future products, and for possible offensive use of the patents.
The law on the effects of formal legal opinion as a factor in determining willful infringement of a patent is still not settled. When uncertain whether you are possibility infringing a patent, our attorneys can analyze the problem patent and provide a legal written opinion about invalidity, non infringement, and patentability that can guide you about the risks in continuing with the current course of action.
Under the America Invents Act (AIA), six new proceedings were introduced by the USPTO including: Third Party pre-issuance submissions, Post Grant Review (an opposition proceeding), Inter partes review, Ex parte Re-Exam, Supplemental Examination, and Derivation Proceedings. Our attorneys can help you navigate through a complex maze of rules and standards associated with these proceedings.