Practice Areas

Utility Patent Applications

Over 2,000 of our originally drafted applications have been filed worldwide across a wide range of technology areas, with more than 1,700 issuing as U.S. patents.

Provisional Patent Applications

Strategic use of provisional applications to establish priority dates while allowing time for further development or commercialization decisions, with an eye toward what the continuation strategy will require.

Office Action Responses

Preparation of substantive responses to USPTO rejections, including §101, §102, §103, and §112 rejections, with amendment of claims where strategically appropriate. Over 3,000 office actions handled across the firm’s portfolio.

Continuation Strategy

Development and execution of continuation, continuation-in-part, and divisional application strategies to maximize and extend portfolio coverage as a product roadmap evolves.

PTAB Appeals

Preparation of ex parte appeals to the Patent Trial and Appeal Board. The firm has a 72% overall win rate on all appeals filed across the portfolio’s history.

Design Patent Applications

Preparation and prosecution of design patent applications protecting the ornamental appearance of products and user interfaces, an increasingly important component of a comprehensive IP strategy.

PCT & Foreign Filing

Coordination of PCT applications and international patent filing strategies, including national phase entries and management of foreign prosecution through trusted foreign associates worldwide.

Deep Technology Coverage

• Software architecture and AI/ML systems
• Fintech and data science
• Semiconductor design and VLSI
• Superconducting technology
• Quantum computing and quantum circuits
• Telecommunications and networking
• Computing hardware and storage
• Medical and therapeutic devices
• Electrical and electro-mechanical devices and apparatus
• EV, automotive, and clean energy
• Transportation and navigation
• E-commerce and supply chain
• Consumer packaged goods

R&D and Engineering

Systematic identification and extraction of patentable inventions from R&D pipelines, engineering teams, and product roadmaps. We work directly with technical teams to surface protectable innovations that may otherwise go unrecognized, and develop filing strategies around them.

IP Portfolio Strategy

Assessment of existing IP assets and development of a comprehensive filing and prosecution strategy aligned with business goals, product roadmaps, and competitive positioning.

Patent Landscape Analysis

Review of the existing patent landscape in a technology space to identify white spaces, competitive filing activity, freedom-to-operate considerations, and strategic opportunities for portfolio expansion.

Portfolio Maintenance & Docketing

Oversight of maintenance fee obligations, response deadlines, and portfolio status to ensure IP assets remain active, organized, and in good standing.

IP Due Diligence

Evaluation of patent portfolios in connection with mergers, acquisitions, investments, and licensing transactions, assessing validity, scope, enforceability, and strategic value.

Freedom-to-Operate & Patentability Opinions

Analysis of third-party patents to assess freedom to commercialize, and evaluation of whether an invention meets the requirements for patentability under U.S. law.

Infringement Analysis & Claim Mapping

Detailed technical analysis of accused products or processes against asserted patent claims, including claim charts, element-by-element mapping, doctrine of equivalents analysis, and preliminary infringement contentions.

Inter Partes Review (IPR) Support

Preparation of IPR petitions and responses, including prior art identification and analysis, claim construction positions, and institution briefing, working closely with lead litigation counsel throughout.

Post-Grant Review (PGR) Support

Technical and legal support for PGR proceedings challenging or defending patent validity on any grounds of patentability, including briefing preparation and expert witness coordination.

Claim Construction Analysis

Substantive analysis and development of claim construction positions, including prosecution history review and coordination of Markman hearing preparation alongside trial counsel.

Prior Art Search & Invalidity Analysis

Comprehensive prior art searching and invalidity analysis under §102, §103, and §112, including coordination with technical experts and preparation of invalidity contentions and claim charts.

Technical Support Through Discovery

Technical support throughout fact and expert discovery: interrogatory responses, document production review, deposition preparation, expert report preparation, and technical declarations.

Federal Circuit Appellate Support

Technical and patent-law support for appellate proceedings before the U.S. Court of Appeals for the Federal Circuit, in coordination with lead appellate counsel.

Reexamination Proceedings

Preparation and prosecution of ex parte and inter partes reexamination proceedings before the USPTO, including requests, responses to office actions, and appellate briefs.

Patent License Agreements

Drafting and negotiation of exclusive, non-exclusive, and field-of-use patent license agreements, including royalty structures, milestone payments, sublicensing rights, and audit provisions.

Technology Transfer Agreements

Structuring and documentation of technology transfer arrangements, including university-industry technology licenses, spin-off agreements, and joint development arrangements.

Licensing Strategy & Program Development

Guidance on IP licensing program development, identification of licensing candidates, royalty rate benchmarking, and strategic positioning for negotiations, including IP extraction and monetization strategy.

IP Assignment & Acquisition

Counseling on IP asset sales, acquisitions, and assignment agreements, including due diligence review and transaction documentation.

Cross-License Agreements

Negotiation and documentation of cross-licensing arrangements between companies, enabling each party to use the other’s IP in defined fields or territories.

License Compliance & Enforcement

Monitoring of license agreement compliance and counseling on enforcement options when licensees fail to meet their obligations, including coordination with litigation counsel where necessary.