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Patent Prosecution

Our highly ranked Patent Office practice excels in both worldwide coordination of patent prosecution and hard-fought disputes within a patent office. From prosecuting and overseeing extensive portfolios for Fortune 500 companies to developing patent portfolios for small public and private companies, we provide effective and efficient strategic counseling, diligence, prosecution, and opinions. We also argue ex parte appeal matters before the U.S. Patent and Trademark Office and in European opposition proceedings. Our team includes recognized leaders in the field and skilled junior members with extensive technical and prosecution experience.

  • Fully Integrated Capabilities: We work with (1) our litigators to prosecute and develop patents that sustain challenge; (2) our regulatory group to assess/address varying frameworks; and (3) corporate counsel (ours and others) on diligencing potential-licensed portfolios.

  • Tech Savvy: Deep patent prosecution experience across agricultural and food sciences, biologics, biotechnology, chemistry, clean technologies, communications, computer hardware and software, consumer products, electronics, internet technology, materials science, medical equipment, microfluidics, nanotechnology, and pharmaceuticals.

  • Substantial PTAB Presence: We represent both petitioners and patent owners before the PTAB in inter partes reviews, ex parte reexaminations, reissues, supplemental examinations, interferences, and post-grant proceedings either separately or in parallel with district court proceedings.

“The team's subject matter knowledge and dedication is exceptional."
Chambers USA
225+ IPRs, PGRs and CBMs filed or defended by our attorneys.

Experience Highlights

  • Bayer and Seminis Vegetable Seeds in the prosecution of patent portfolios critical for the protection of key DNA breakthroughs, including numerous appeal and multiparty opposition proceedings in the US and abroad.

  • Bruin Biometrics LLC in strategic IP counselling and patent prosecution to expand company-critical portfolios in the area of medical devices. Medical devices include non-invasive biometric-sensor-based devices for detecting tissue moisture content and blood oxygenation to identify early stages of ulcer, and non-invasive biometric-sensor-based devices configured to perform acoustic and biomechanical measurements to determine quality of implanted prosthetics.

  • Crocs in patents challenged in inter partes reexamination proceedings before the patent office.
  • Finch Therapeutics, a VC-funded biotech startup, on patent portfolio strategies and IP due diligence. Company products relate to microbiome-based therapy of diseases varying from gastrointestinal disorders to autism. Responsible for both global procurement of company’s own IP and challenging related patents in the human microbiome field.
  • Hemanext in patent prosecution matters involving blood storage methods and devices.
  • Roquette Freres in strategic counseling and patent prosecution in food technologies.
  • NeuExcell Therapeutics with development of a worldwide patent portfolio surrounding a gene therapy platform for treating neurological diseases.
  • Pfizer in IP due diligence and the management of worldwide prosecution for Pfizer and multiple partners: Bristol Myers Squibb, GlycoMimetics Inc., Kyowa Hakko Kirin Co. Ltd., Merck Sharp & Dohme Corp, Merck Patent GmbH, and the University of California, Berkeley. The portfolio includes coordinating active prosecution of patent applications directed to subject matter including antibodies, small molecules, and CRISPR genome engineering strategies.
  • Spin Memory Inc. in worldwide prosecution of patents directed to magnetoresistive random access memory products.