Our patent practice is very diverse, and has been named to the The National Law Journal’s IP Hot List and ranked a Top Patent Firm by IP Today. Patents we prepared and prosecuted for one of the world’s largest companies have been successfully enforced in a highly publicized litigation in the United States. We handle patent preparation, prosecution, licensing, due diligence, valuation, portfolio management, opinion, and counseling work, as well as post-grant proceedings at the US Patent and Trademark Office (USPTO).
All of our patent lawyers and agents have technical or science degrees, with many holding advanced degrees. A number of our lawyers also have experience working in the industry and as examiners at the USPTO. Our team is responsible for patent matters in diverse technical fields, including electrical, computer, software, business methods (including ecommerce and financial services), mechanical, life sciences (e.g., biotechnology and pharmaceuticals), specialty chemicals, medical devices, diagnostics, semiconductors, cleantech, fintech, and consumer products.
We manage large and complex patent portfolios, coordinate filing and prosecution of patent applications, provide counseling to avoid infringement, and help with commercialization of our clients’ technology. We render opinions regarding patentability, noninfringement, invalidity, and freedom to operate; perform due diligence and audit investigations; and negotiate and draft patent and technology license agreements.
We prosecute post-grant proceedings at the USPTO, including reexaminations, reissue applications, and inter partes reviews, covered business method patent reviews, derivation proceedings, and post-grant reviews. In fact, when it comes to post-grant proceedings, Morgan Lewis is a leader, with our technical experience, dispute experience, and established Washington, DC presence. We prosecute adversarial proceedings at the USPTO, including appeals, reissues, reexaminations, and interferences and have for decades. And, we have decades of experience litigating complex patent matters, including routinely taking and defending depositions and arguing before courts and administrative panels. We handled the second-ever inter partes review argued to the USPTO, and recently had a number of inter partes reviews and covered business method reviews dismissed for a patent-owner client.
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.
Through representations and local partnerships in Japan, Greater China, and India, our multidisciplinary team brings an in-depth understanding of the nuances of business practices, laws, and cultures across Asia in service to IP matters. We help companies that desire to operate in Japan, China, and India, including assisting with IP enforcement through licensing and litigation. We also represent Asia-based global companies expanding into the United States, including counseling on US IP, licensing, advertising, privacy, and online business issues. We represent companies in biotechnology, pharmaceuticals, specialty chemicals, digital imaging, IT consulting, wireless charging, electric vehicle manufacturing, wireless pharmaceutical test monitoring devices, and many other cutting-edge sectors.
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.