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Patent

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.

POST-GRANT PROCEEDINGS

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.

GLOBAL CAPABILITIES

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.