With clients ranging from multinational companies to entrepreneurial start-ups, the patent practice offers legal services in virtually every aspect of patent law. Representative clients include leaders in the fields of financial and information services, software development, consumer electronics and other goods, chemicals, pharmaceuticals, telecommunications, entertainment, nanotechnology software and technology, e-commerce, real estate and arts/education/non-profit.
Kelley Drye has patent professionals in most of its offices, with a concentration in New York, Stamford, Chicago and Washington, DC.
Kelley Drye’s patent practice includes a diverse group of attorneys and patent agents with technological backgrounds in the electrical, mechanical and chemical arenas. Most of Kelley Drye’s patent professionals have significant experience in industry and/or academia. Many have advanced degrees (Master, Ph.D.) in their technological fields, and are experienced scientists and engineers.
Because of their extensive technical and legal experience, our patent lawyers and technical professionals can handle a full range of intellectual property matters in a cost-efficient manner, including:
- Patent litigation in all the technological arts including: pharmaceutical (in particular actions under the Hatch-Waxman statutes), chemical, electronic software, mechanical, nanotechnology, and business methods
- Preparing opinions on patentability, validity, and non-infringement
- Preparation and prosecution of U.S. and foreign patent applications
- Patent reissues, re-examinations and interferences
- Patent and technology licensing
- Strategic counseling including: alternative resolutions to litigation settlement options infringement avoidance
- Appeals in the Federal Circuit Court of Appeals
- Counseling on various aspects of patent acquisition, transfer and licensing, including related issues such as antitrust considerations
- Experience before U.S. International Trade Commission and U.S. Customs Service
- Corporate mergers and acquisitions, joint venture, co-marketing and investment due diligence (patents, copyrights, trademarks, advertising compliance, domain names, internet web page compliance)
A unique advantage of our team is that its members have significant patent litigation, patent prosecution and patent licensing experience. As a result, we are able to prepare and prosecute patent applications with the knowledge of the possible legal consequences that arise during litigation and/or licensing and understand well that certain statements that might be made in the patent specification during the application prosecution history can have profound impacts on the scope of claims.
We believe our extensive knowledge of patent application preparation and prosecution and Patent Office procedures, and our extensive litigation experience before nearly every court in the land, gives us a leg up on our competition in the litigation arena.
The core patent team is able to draw on Kelley Drye’s resources, both in the Intellectual Property Group and outside this group, on an as-needed basis.
Kelley Drye’s patent prosecution professionals are highly respected attorneys and patent agents with impeccable credentials in the life sciences, chemistry, and biochemistry. Many of Kelley Drye’s patent professionals have come from top posts in industry and academia. Most have advanced degrees in their areas of specialization.
Our patent lawyers and technical professionals have demonstrated the expertise and experience needed to deal with a full range of patent assignments in a cost-efficient manner. Our capabilities include:
- Searching, preparing and prosecuting U.S. and foreign patents.
- Counseling on all aspects of patent acquisitions, term extensions, transfers and licensing, including related regulatory issues such as antitrust considerations.
- Advising clients on right-to-use disputes.
- Providing strategic advice on matters such as infringement avoidance, alternative dispute resolution, and settlement options.
- Conducting due diligence on IP and patent assets in connection with corporate mergers and acquisitions, and joint venture, co-marketing and investment agreements.
- Supervising audits identifying and evaluating IP and patent assets, and implementing comprehensive “best practices” IP management programs.
Our team of patent professionals is available to deal with the particular needs of each of our clients. We work with patent professionals at multinational pharmaceutical and technology companies to advise them on strategic issues relating to their patent portfolios and assist them with complex patent prosecution problems.
We also provide individual inventors and start-ups with the full gamut of patent services.
The Kelley Drye patent lawyer or agent working on your matters can call upon the extensive patent litigation, prosecution, and licensing experience of his or her colleagues. We prepare and prosecute patent applications with an eye towards how the claims will be construed if litigation becomes necessary. We are cognizant of
the fact that statements made in the patent specification in the application prosecution history may well impact on the scope and enforceability of claims and, to the extent possible, guard against the evisceration of those claims during the prosecution process.
- Summary judgment granted to client in action against the USPTO on proposed rule changes relating to limitations on the number of patent claims and continuations in an application.
- Represented defendant in Hatch-Waxman case to produce generic version of Depakote E.R.
- Represented defendant in a Hatch-Waxman case involving Strattera.
- Represented defendant in patent infringement case pertaining to a generic version of a pharmaceutical drug.
- Hatch-Waxman litigation involving ribavirin – represented defendant.
- Represented defendant in respect of ANDA filing.
- Successful defense of patent infringement suit. Settlement negotiated after Markman briefing and argument.
- Represented defendant in patent infringement case involving process for formulating a drug.
- Represented defendant in patent infringement case pertaining to a phosphor and preparation process.
- Successful defense of patent infringement suit; following Markman ruling construing claims in client’s favor, summary judgment motion granted dismissing suit.
- Represented plaintiff in patent infringement suit involving a speaker independent system for unified communications via telephone and Internet.
- Obtained an emergency stay followed by a judgment vacating preliminary injunction entered in the Northern District of California.
- Successful settlement of claims asserting Intel’s chipset patents against foreign infringer.
Back to: Intellectual Property and Technology
For further information about Kelley Drye's Patent and Technology practice group, please contact:
William R. Golden Jr.
(212) 808-7992
wgolden@kelleydrye.com
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