Patent Prosecution

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

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