Patent Prosecution and Strategy
Patent Prosecution and Strategy
Our Patent team knows protecting your patent assets is about more than filing patents.  We understand that developing, safeguarding, managing and leveraging your patent portfolio throughout its lifecycle is critical to your ability to compete—and prosper—in today’s global marketplace.

Because of their extensive technical and legal experience, our patent lawyers and technical professionals can handle a full complement of patent prosecution and counseling work for clients, including:

  • Preparation and prosecution of U.S. and foreign patent applications

  • Preparing opinions related to patentability, validity and infringement

  • Patent reissues, reexaminations and interferences

  • Patent and technology licensing

  • Providing strategic advice on infringement avoidance, design around options, alternative dispute resolution and pre-litigation amicable resolution options

  • Advising on right-to-use disputes

  • Advise and respond to cease and desist and demand letters

  • Counseling on all aspects of patent acquisitions, term extensions, transfers and licensing, including related regulatory issues such as antitrust considerations

  • 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.
 

Patent Prosecution

Our patent team prepares and prosecutes patent applications with an eye toward how the claims will be construed if litigation becomes necessary, including preparing the claims to survive an attack at the Patent Trial and Appeal Board.  We know how statements made in the patent specification in the application prosecution history may impact the scope and enforceability of claims, and we proactively plan to guard against the evisceration of claims during the prosecution process.

Patent Management, Strategy and Counseling

Clients look to us for our business-minded approach to patent portfolio development and management tailored to each client’s definition of success.  By understanding how each idea fits into your business strategy, we can create a cohesive and strong patent strategy that is in line with your goals.  With a strategy in place, we assist in targeting spending, encouraging innovation and maintaining a patent program that will produce optimal results.  We can also help you formulate and establish internal controls, practices and policies that maximize the return on intellectual property investments while minimizing the risk of any unwanted legal disputes.  Our investigative business approach and wide range of industry contacts lend itself well to consulting with in-house general counsel or patent counsel to enhance their abilities to meet the obligations of their critical role within the organization.

Licensing, Acquisition and Due Diligence

Our patent practitioners understand that harvesting the full commercial value of intellectual property requires careful and creative strategic management.  Our primary goal is to help you maximize commercial value through cooperative transactions such as license agreements and technology transfers.  We work with clients from the initial negotiation stages of a transaction to ensure that any critical legal or business issues, including ownership or freedom to operate concerns, are quickly identified and resolved before moving forward to the next phase of the deal.  We draft agreements that encourage cooperation rather than controversy, and when the transaction includes technology assets under dispute, our patent litigators assess the potential impact of the conflict and the likelihood of various resolution scenarios.

Opinions and Design Around Services

Clients look to our team to deliver high-quality opinions related to patent validity, infringement and enforcement, most frequently with an eye toward product clearance.  We also counsel clients modifying their innovations to design around existing patented technology.

 
 

Overview

Our Patent team knows protecting your patent assets is about more than filing patents.  We understand that developing, safeguarding, managing and leveraging your patent portfolio throughout its lifecycle is critical to your ability to compete—and prosper—in today’s global marketplace.

Because of their extensive technical and legal experience, our patent lawyers and technical professionals can handle a full complement of patent prosecution and counseling work for clients, including:

  • Preparation and prosecution of U.S. and foreign patent applications

  • Preparing opinions related to patentability, validity and infringement

  • Patent reissues, reexaminations and interferences

  • Patent and technology licensing

  • Providing strategic advice on infringement avoidance, design around options, alternative dispute resolution and pre-litigation amicable resolution options

  • Advising on right-to-use disputes

  • Advise and respond to cease and desist and demand letters

  • Counseling on all aspects of patent acquisitions, term extensions, transfers and licensing, including related regulatory issues such as antitrust considerations

  • 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.
 

Patent Prosecution

Our patent team prepares and prosecutes patent applications with an eye toward how the claims will be construed if litigation becomes necessary, including preparing the claims to survive an attack at the Patent Trial and Appeal Board.  We know how statements made in the patent specification in the application prosecution history may impact the scope and enforceability of claims, and we proactively plan to guard against the evisceration of claims during the prosecution process.

Patent Management, Strategy and Counseling

Clients look to us for our business-minded approach to patent portfolio development and management tailored to each client’s definition of success.  By understanding how each idea fits into your business strategy, we can create a cohesive and strong patent strategy that is in line with your goals.  With a strategy in place, we assist in targeting spending, encouraging innovation and maintaining a patent program that will produce optimal results.  We can also help you formulate and establish internal controls, practices and policies that maximize the return on intellectual property investments while minimizing the risk of any unwanted legal disputes.  Our investigative business approach and wide range of industry contacts lend itself well to consulting with in-house general counsel or patent counsel to enhance their abilities to meet the obligations of their critical role within the organization.

Licensing, Acquisition and Due Diligence

Our patent practitioners understand that harvesting the full commercial value of intellectual property requires careful and creative strategic management.  Our primary goal is to help you maximize commercial value through cooperative transactions such as license agreements and technology transfers.  We work with clients from the initial negotiation stages of a transaction to ensure that any critical legal or business issues, including ownership or freedom to operate concerns, are quickly identified and resolved before moving forward to the next phase of the deal.  We draft agreements that encourage cooperation rather than controversy, and when the transaction includes technology assets under dispute, our patent litigators assess the potential impact of the conflict and the likelihood of various resolution scenarios.

Opinions and Design Around Services

Clients look to our team to deliver high-quality opinions related to patent validity, infringement and enforcement, most frequently with an eye toward product clearance.  We also counsel clients modifying their innovations to design around existing patented technology.

Partner
Email (212) 808-7530(212) 808-7530
John Ward has more than three decades of experience litigating intellectual property cases, including complex, high-technology patent cases, at both the trial and appellate levels.  He has ov...
Partner
Email (973) 503-5964 (973) 503-5964
Michael Zinna’s practice comprises all aspects of intellectual property, with a focus on patent matters and including complex patent litigation, patent licensing, due diligence, patent clear...
Special Counsel
Email (312) 857-2321(312) 857-2321
Constantine (“Dino”) Koutsoubas works with generic pharmaceutical manufacturers in their efforts to bring their products to market.  In this role, he helps clients in every aspect ...
Senior Associate
Email (212) 808-7513(212) 808-7513
David Lindenbaum is a senior associate in the firm’s New York office. He litigates patent, trademark, copyright, and false advertising disputes, including cases in federal district and appel...
Associate
Email (713) 355-5002(713) 355-5002
Mark Donatiello is an associate in the firm’s Houston office. His practice concentrates on environmental and natural resources law.  He also works in regulatory law. Previously, Ma...
Associate
Email (312) 857-2311(312) 857-2311
Sarita Mutha is an associate in the firm’s Intellectual Property group in the Chicago office.  Her practice focuses on patent litigation and counseling with a particular focus on Hatch-...
Associate
Email (312) 857-7096(312) 857-7096
Mark Scott is an associate in the firm’s Chicago office. His practice focuses on litigation, particularly Hatch-Waxman litigation for generic pharmaceutical companies. Previously, Mark ...