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, interferences, International Trade Commission (ITC) matters, and reissue. We are well-versed in several procedures available at the USPTO, including:
- Ex parte re-examination: Allows a request to be made by any person, excluding a third-party from participating beyond the filing of a reply to the patent owner’s statement under 37 CFR § 1.530, if the patent owner files a statement.
- Inter partes review: Enables a third-party to take an active role in asserting invalidity of a patent in front of the Patent Trial and Appeal Board, replacing the old inter partes re-examination.
- 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, allowing a third-party to challenge a patent on various grounds including novelty and non-obviousness.
- Derivation proceedings: Allow an applicant to petition the USPTO to find that the petitioner was the first inventor and that an earlier filed patent application was derived from the petitioner’s own work.
We meet with engineers and inventors to test concepts, review prototypes, evaluate patents, and discuss findings with decision makers. Our phased searching and clearance approach is an affordable and manageable process, influencing early R&D activities and allowing for changes to a product before incurring significant expense. Our services include:
- 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 potential infringement and offensive infringement strategies.
- Reviews against prior art to identify invalidity.
- Trademark, trade dress, and copyright reviews.
Our patent attorneys regularly consult on the IP aspects of mergers, acquisitions, and other key transactions. We address an array of 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. We also 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.
Recognition
- Chambers USA – Intellectual Property, Georgia (2014-2025)
- Chambers USA – Intellectual Property, Pennsylvania (2017-2025)
- Chambers USA – Intellectual Property, Virginia (Southern) (2014-2025)
- Best Lawyers “Best Law Firms” in Litigation – Intellectual Property, Tier 1 (2024)
- Best Lawyers “Best Law Firms” in Litigation – Intellectual Property, Tier 1, Dallas (2024-2025)
- Best Lawyers “Best Law Firms” in Patent Law, Stamford, Tier 1 (2024-2025)
- Selected for inclusion in The Best Lawyers in America’s 2021 edition for work in intellectual property, including Copyright Law and Litigation – Intellectual Property
- Recognized nationally and in local markets by U.S. News Best Lawyers “Best Law Firms” 2014-2024 in Advertising Law, Trademark Law, Copyright Law, and Litigation – Patent
- Recognized in World Trademark Review (WTR) 1000 – The World’s Leading Trademark Professionals (2012-2025), California (2024-2025), Georgia (2022-2025), New York (2024-2025)
- Recognized by Managing Intellectual Property (MIP) “IP Stars” for Trademark, Copyright, and Patent Excellence in (2013-2022)
- Received IAM Patent 1000 and Strategy 300 recognitions (2014-2021, 2023, 2025)
