Patent Prosecution, Counseling and Portfolio Management

Protecting intellectual property and technology assets is an ongoing process. At Troutman Sanders, we develop long-term, productive client relationships – making us particularly effective in the IP arena, where business cycles are long but technology cycles are short. We make it a point to understand our clients’ products, businesses, challenges, objectives, and cultures. We think proactively and like in-house counsel; promptly alerting clients to emerging legal and regulatory trends, such as the Leahy-Smith America Invents Act, which has introduced some of the most sweeping statutory changes to U.S. patent law in decades.

Strong advocacy on behalf of our clients and a commitment to client service has earned us recognition in publications such as, IAM Patent 1000: The World's Leading Patent Practitioners, The Best Lawyers in America, U.S. News – Best Lawyers and Chambers USA, where the team was described as “excellent communicators with a strong grasp of patent matters. The team is celebrated for its client service.”

Our attorneys provide a complete range of patent legal assistance in connection with the acquisition, maintenance, and enforcement of patent rights for numerous technologies. We currently advise clients globally under the Patent Cooperation Treaty (PCT), and have extensive experience in international business and licensing.

Our services include:

  • Conducting due diligence and audits, including for mergers, acquisitions and initial public offerings (IPOs)
  • Performing state-of-the-art searches
  • Preparing clearance evaluations
  • Preparing patentability, validity, and infringement opinions
  • Negotiating and preparing licenses and other agreements
  • Monitoring competitive patent activities

We advise clients at every stage in the product lifecycle:

Product Reviews

We meet with engineers and inventors to test concepts, review prototypes, evaluate patents, and discuss findings with decision makers. When necessary, we suggest modifications in designs, and many clients specifically require our review and clearance work before giving final approval of a product.

Our attorneys emphasize a phased searching and clearance approach, presenting clients with an affordable and manageable process. First-phase results can influence early R&D activities, and allow for changes to a product prior to clients incurring significant expense. Staged reviews can include identifying key competitors, reviewing patent assets, and identifying the many different types of patent art that a product might infringe.

We provide our clients with significant competitive advantages by assessing technology landscapes, identifying key players, the scope of prior art, and any new technologies with pending applications. Through this process, we uncover concentrated areas of development, illuminating the competition’s direction while simultaneously pointing out areas yet to be exploited within a particular technology.

We routinely provide the following services:

  • Reviews for patentability
  • Design stage examinations to identify possible infringements and develop design-around strategies
  • Pre-commercial reviews to identify freedom-to-operate issues
  • Post-design reviews to identify potential infringement and offensive infringement strategies
  • Reviews against prior art to identify invalidity
  • Trademark/trade dress and copyright reviews

Post-Grant and USPTO Experience

We assist clients in planning, defending, and securing positive resolutions in intellectual property disputes. Our attorneys advise on the strategic use of U.S. Patent and Trademark Office (USPTO) post-grant procedures such as review, reexamination, and reissue. We employ these procedures to strengthen our clients' patents and effectively challenge their competitors.

There are several dispute-related, post-grant procedures available at the USPTO. We are well versed in the following:

  • Ex parte reexamination allows a request to be made by any person. It excludes a third party from participating in the ex parte proceedings beyond the filing of a reply to the patent owners statement under 37 CFR § 1.530, if the patent owner files a statement.
  • Inter partes review, which essentially replaces the old inter partes reexamination, enables a third party to take an active role in asserting invalidity of a patent in front of the new Patent Trial and Appeal Board.
  • Post-grant review can be requested within the nine-month window following the issue date of a patent filed on or after March 16, 2013. It enables a third party to challenge a patent on novelty, non-obviousness, sufficiency of the description or claims, and patent-eligibility grounds.
  • Derivation proceedings allow an applicant to petition the USPTO to find, under the new “first inventor to file” rules, that the petitioner was in fact the first inventor, and that an earlier filed patent application was derived from the petitioner’s own work.
  • The transitional program for covered business-method patents is similar to a post-grant review. It enables a person who is sued or charged with infringement of a business-method patent to petition for a review of that patent at any time during the eight-year life of the program.

IP Transactions

Our Intellectual Property practice regularly consults on mergers, acquisitions, and other transactions handled by the firm. We address an array of legal issues related to due diligence involving the analysis of IP assets of target companies, including patent, copyright, and trademark holdings. Our attorneys evaluate ownership issues, the scope of protection and value to determine the strength of the assets.

In addition, our attorneys review the risks associated with potential IP infringement related to the target’s products, evaluating the target’s position in its industry relative to its competitors. Throughout this process, our wealth of knowledge and experience in patent and trademark prosecution, litigation, technology licensing, and corporate counseling allows us to work thoroughly and efficiently.

Technology Licensing & Procurement

Our attorneys have substantial experience assisting clients in negotiating a wide variety of technology and technology services procurement and divestiture agreements. We handle agreement-related matters in connection with development, licenses, acquisitions, and for the sale of technology or provision of technology-related services.

We have helped clients with agreements including:

  • Computer hardware and software
  • Semiconductor technology
  • Hosted services
  • Academic research and development
  • Drug research and development
  • Computerized mechanical systems including pneumatic paper waste retrieval systems, warehousing equipment, and automated laser-based product marking systems.

We have represented some of the largest technology vendors in the world. We provide advice to clients negotiating and contracting with some of the same technology vendors and consultants implementing large-scale technology projects or acquiring substantial portfolios of licensed technology.

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