We serve and welcome new clients of all types and sizes, including large corporations, small and medium-sized companies, entrepreneurs and  startups, solo inventors, and patent investors.

We procure (i.e., prepare, file, and prosecute) patents for  clients on a case-by-case basis, such as is common for solo inventors,  entrepreneurs and startups seeking their first patent, as well as for large corporate  clients that utilize multiple outside patent counsel. 

For an invention to be patentable it must have several elements  

1. Novel (i.e., new)
2. Non-Obvious, as determined by an examiner in the U.S. Patent & Trademark Office (USPTO).

  The USPTO examiner assesses whether an invention is novel and  non-obvious by comparing the inventor's invention, as it is described  and claimed in the inventor's patent application, to information and  technology that is already in the public domain (known as "prior art").   

When an inventor is familiar with the prior art, there can be a high level of confidence that the inventor's invention is novel and  non-obvious. However, in circumstances where there is a lack of familiarity, the question of whether the invention would be deemed novel  and non-obvious is less certain. In such circumstances it can be  prudent from a cost perspective to have a patentability search referred  to as a "novelty" or "prior art" search which is performed before  commissioning the patent agent to write up a patent application for the  invention. In fact, we recommend that a patentability search be  performed in such circumstances. Based on the search results, we will then prepare a written patentability opinion containing the firm's  professional opinion as to whether the USPTO would consider the  invention to be patentable. 

We can work with foreign patent law associates to secure patent protection for our clients in Europe, Asia and throughout the rest of  the world. We also assist our foreign associates with preparing and filing U.S. patent applications for their clients in accordance with the  Paris Convention and Patent Cooperation treaties.

A prior art publication casting doubt on the validity of a patent can be used as the basis for requesting the U.S. Patent & Trademark Office (USPTO) to reexamine the patent.

Reexaminations can be requested by anyone, not just by the  patentee. The ability to request reexamination of another's patent is a  powerful tool. For example, when sued for patent infringement, the accused infringer can  request the USPTO to reexamine the patent involved in the lawsuit. If  the USPTO grants the request, the court presiding over the case may, at its  discretion, stay the litigation, pending the reexamination results. If  the USPTO ultimately deems the patent to be invalid, the court can then dismiss the lawsuit,  sparing the accused infringer substantial litigation costs.

While reexaminations are often requested by accused infringers in  patent infringement lawsuits, they are also requested by those not  involved in a lawsuit.  For example, a patentee may request reexamination of its own patent  to reaffirm the patent's validity prior to attempting to license the  patent to others. A licensee may request reexamination of a patent forming the basis of a  patent license agreement to demonstrate that the patent is invalid and  avoid having to continue making royalty payments. Finally, a company being pressured  to license a patent of questionable validity may request reexamination  to demonstrate  that the patent is invalid, thereby avoiding having to license the  patent in the first place.

Recent changes in patent law concerning the validity of patents,  along with the high cost of challenging patents in court, have led to an  increase in the popularity of reexaminations in recent years. Indeed, companies are  increasingly finding reexamination to be a cost-effective non-litigation  mechanism for  reaffirming the validity of their own patents and challenging the  validity of patents of their competitors.

If you have a patent and newly discovered prior art possibly  affecting the validity of the patent; have a patent for which a  reexamination has been requested by another; or wish to challenge the validity of competitor's patent  without having to resort to litigation, please contact us. We will  conduct the reexamination of your patent to reaffirm and uphold its validity, or will further  advise you of the risks and benefits involved in requesting  reexamination of another's patent.

After a patent is granted the patentee may discover that the  patent's specification contains errors or that the attorney who prepared  and prosecuted the  patent unnecessarily narrowed the patent's claims or failed to  include claims encompassing an important embodiment of the invention.

Fortunately, the U.S. Patent & Trademark Office (USPTO)  provides a procedural mechanism that affords patentees the ability to  correct these types of defects and have the patent "reissue" free from the defects. So long as an  application for reissue is filed in the USPTO within two years from the  date the patent was originally granted, the claims can be broadened and claims for  previously unclaimed embodiments can be introduced. Other defects not  involving a broadening of  the claims can be corrected beyond the two-year limit.

If you have a patent with a defect that you believe potentially  lowers the patent's value, please contact us. We will advise as to  whether the defect can be corrected through reissue and, if so, prepare and file a reissue  patent application in the USPTO on your behalf.