Morgan Lewis’s global patent team has prepared and prosecuted patents for the world’s largest companies, and many have been successfully enforced in highly publicized litigation. Many of our patent lawyers and agents have technical and scientific degrees, including doctorates, as well as industry experience and prior careers at the US Patent and Trademark Office (USPTO).
We advise clients on the full range of services, including patent preparation, prosecution, licensing, due diligence, valuation, portfolio management, opinion, and counseling work, as well as post-grant proceedings at the USPTO. Our clients do business in an array of technical industries, such as electrical, computer, software, business methods (ecommerce and financial services), mechanical, life sciences (biotechnology and pharmaceuticals), specialty chemicals, medical devices, diagnostics, semiconductors, consumer products, cleantech, and fintech.
Beyond our legal resources and skills, clients benefit from our business acumen. We partner with clients to define corporate technology-protection objectives; prepare and prosecute utility and design patent application matters, including reexamination, reissue, and America Invents Act post-grant proceedings; coordinate the filing and prosecution of patent applications in the United States and globally; and counsel on the development and commercialization of technology to help clients avoid infringement of third-party rights, as well as to enforce patent rights against others. We render opinions on patentability, infringement, validity, and freedom to operate; perform IP due diligence and audit investigations; and negotiate and draft patent and technology license agreements.
Our team has a long history of handling adversarial proceedings at the USPTO, including appeals, reissues, and reexaminations. We also have experience litigating complex patent matters, including routinely arguing before courts and administrative panels and taking and defending depositions. In fact, we have handled post-grant proceedings since their institution, including the second-ever inter partes review argued before the Patent Trial and Appeal Board. More recently, we have had a number of inter partes reviews and covered business method reviews dismissed by the board.
Through representations and local partnerships in Greater China, Japan, India, and South Korea, our multidisciplinary team has a firm grasp of the IP laws across the Asia-Pacific region and we understand the nuances of doing business there. Morgan Lewis’s IP lawyers across our global network handle a broad range of matters for US and non-US clients, and they have developed and implemented global strategies for them. Our lawyers also are skilled at cost-effectively bringing in and managing local counsel when necessary.
More than 40 chemistry and life sciences lawyers devoted to patent prosecution and counseling serve our clients. Most have doctorate degrees in inorganic chemistry, medicinal chemistry, molecular biology, plant genetics, pharmacology, organic chemistry, or virology. Many also have backgrounds in government, industry, and academia in positions as researchers, consultants, patent examiners, and administrative judges at the USPTO. Others previously worked as corporate counsel responsible for domestic operations, including sales, patent portfolio management, and strategic competitor and market analysis.
In the field of chemistry, we represent diverse clients and have a particular experience in the following areas:
In the life sciences, including biotechnology, we represent clients in matters spanning traditional pharmaceutical and cutting-edge technologies. We advise clients with patents involving immunology, virology, molecular biology, animal and plant genetics, gene therapy, protein chemistry, pharmacology, enzymology, and bioinformatics. Our specific areas of knowledge include recombinant cytokines, recombinant antigens and vaccines, antisense technology, cloning, differential display technologies, yeast fermentation, genomics and genetic engineering, antibodies and immunoassay methods, rational drug design, and the synthesis and screening of combinatorial libraries.
Our patent team of lawyers who focus on prosecution and counseling related to business method and e-commerce technologies. Many of these lawyers hold advanced degrees in computer science and electrical engineering, and have industry experience.
Our experience extends to a wide variety of technologies, systems, and platforms relating to purchasing and payment processing; electronic trading; financial instrument issuance and administration; data synchronization; computer interfaces; application testing; stored value card redemption and processing; gift card and reward/loyalty card processing; authentication and security; advertisement serving and targeting; fintech; and mobile applications.
More than 30 high-tech lawyers, technical specialists and patent agents devoted to global patent prosecution, counseling, USPTO post-grant proceedings, intellectual property (IP) licensing, due diligence, and litigation support. A substantial number of our lawyers have advanced degrees (including Ph.Ds) in a wide range of fields, including computer engineering, electrical engineering, physics, geophysics, material science, mechanical engineering, computer science, mathematics, and bioinformatics. Many also have backgrounds in government, industry, and academia as software engineers, circuit and product designers, communications engineers, researchers, strategic competitor and market analysts, patent examiners, and professors. Others previously worked as corporate counsel responsible for patent portfolio management, patent litigation, and IP transactions and licensing. As befits our global practice, many of our lawyers are fluent in second languages.
We represent diverse clients including individual inventors, startups, global high-tech giants, academic researchers and universities, and mature public companies in areas such as personal electronics, Internet services, cloud computing software and infrastructure, computer hardware and operating system software, advanced displays, automotive technology, signal processing, communication systems, nanotechnology, social networking, storage, and semiconductor devices. Our team has particular experience in:
We support our clients in all phases of their business as it relates to technology, including leading brainstorming and invention harvesting sessions to identify key concepts for patenting, formulating global IP protection strategies, engaging in robust continuation practice to mine value from existing patent applications, preparing noninfringement and invalidity opinions, supporting litigation through offensive claim analysis, defending and prosecuting in USPTO inter partes review proceedings, and conducting diligence on patent portfolios for purchase or sale.
More than 20 of our patent professionals focus on mechanical inventions. These lawyers have diverse technical backgrounds in mechanical, civil, biomedical, aerospace, marine, and materials engineering. Most of these team members worked as engineers, patent examiners, or law clerks to federal judges prior to joining the firm. Several have held positions in major corporations as in-house counsel.
Our team members focus on helping clients develop, prosecute, and enforce high-quality utility and design US and global patent portfolios. We work hand in hand with our clients on licensing and litigation counseling. We routinely handle diverse subject matter, including automotive, construction, consumer devices, manufacturing, medical devices, and sporting goods.
Our software group has more than 30 high-tech lawyers, technical professionals, and patent agents who are devoted to global patent prosecution, counseling, USPTO post-grant proceedings, IP licensing, due diligence, and litigation support. A substantial number of our lawyers hold advanced degrees (including Ph.Ds) in fields such as computer science, computer engineering, electrical engineering, physics, mathematics, and bioinformatics. Many also have backgrounds in government, industry, and academia as software engineers, circuit and product designers, communications engineers, researchers, strategic competitor and market analysts, patent examiners, and professors. Others have experience as corporate counsel responsible for patent portfolio management, patent litigation, and IP transactions and licensing. As befits our global practice, many of our lawyers are fluent in second languages.
We represent diverse clients including individual inventors, startups, global high-tech giants, academic researchers and universities, and mature public companies in areas such as cloud computing, social networking applications, database architecture, software as a service (SaaS), memory management, pattern classification, diagnostic methods, search engines, security, graphical user interfaces, bioinformatics, haptics/touch, speech/voice, and e-commerce. Our team focuses on:
We support our clients in all phases of their business as it relates to technology. Businesses turn to us to lead brainstorming and invention harvesting sessions to identify key concepts for patenting, formulate global IP protection strategies, engage in robust continuation practice to mine value from existing patent applications, prepare noninfringement and invalidity opinions, support litigation through offensive claim analysis, defend and prosecute in USPTO inter partes review proceedings, and conduct diligence on patent portfolios for purchase or sale.