A well-managed patent portfolio is an important strategic asset and plays a critical role in your ability to compete—and prosper—in today’s global marketplace.
Kelley Drye’s patent team takes a holistic, multi-displinary approach: because we know litigation experience makes for better prosecutors, licensing experience makes for better negotiators, and clearance work can help sharpen due diligence analysis, our attorneys are typically involved in clearance, prosecution, day-to-day counseling, and enforcement of IP rights.
Our attorneys draw on their prosecution, portfolio management, licensing, drafting opinions, and litigation experience to provide tactical and practical advice based on our knowledge of the full lifecycle of a patent.
Our attorneys and patent agents also have advanced degrees and technology backgrounds in electrical, mechanical, and chemical as well as experience as scientists and engineers. Our team 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, patent assets, and implementing comprehensive best practices IP management programs
We approach patent clearance, prosecution, portfolio management, and counseling with a comprehensive view of each client’s particular needs relative to overall business objectives and the role patents play in meeting them.
We prepare and prosecute 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.
We offer a 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 help in targeting spending, encouraging innovation, and maintaining a patent program that will produce optimal results.
We can also help 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.
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.
We 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.