Attorneys Grant D. Fairbairn, Lora Friedemann, Thomas R. Hipkins, Ann M. Ladd, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West were featured in the 2019 edition of the IAM Patent 1000: The World’s Leading Patent Professionals.
Fredrikson & Byron’s patent group is where law and business meet technology. Our resident patent lawyers and agents have expertise in a broad range of technologies, and we’re committed to understanding your business objectives and providing custom-tailored service.
What We Do
We offer a comprehensive patent practice within a full-service Intellectual Property group. We have the capabilities to file, register, prosecute and litigate patents on a global basis.
All of our patent attorneys are registered to practice before the U.S. Patent and Trademark Office. Each has at least one technical degree; many have advanced degrees. These attorneys work with our patent agents, paralegals, and staff scientists to provide high-quality, cost-effective protection.
When working with our clients, we commonly look beyond the immediate goal of patent application and take a global perspective as we balance the risks and benefits of various levels of protection and evaluate how patent coverage integrates with the client’s business needs. As clients’ businesses and IP portfolios evolve, we work with them on the technology transfer side as well, to correlate their own growing IP portfolios with processes for “licensing in” the rights of other patentees, or “licensing out” their own patents to others.
- Domestic and international application preparation, filing and prosecution strategies of utility and design applications
- Post grant proceedings
- Opinions regarding patent validity and infringement
- Client counseling on intellectual property issues
- Freedom-to-operate investigations
- Due diligence investigations
While the size and strength of our team allows us to service high-volume patent filers, we specialize in providing full-service patent counsel to companies who take a strategic approach to protecting their technology. We prepare and prosecute hundreds of patent applications each year for companies that generate between $2 million and $40 billion in annual revenue and for emerging companies.
- A leading glass company that makes residential glass for doors and windows turns to us for counsel in many different facets of intellectual property for the past 15 years. We study the patent landscape of coatings and assist the company in weaving its way through patents of its competitors. We obtain patent protection for its technology and we successfully challenge competitor patents in post grant proceedings.
- We regularly represent some of America’s largest and most well-recognized companies, including those appearing on the Fortune 500 and Fortune 100 lists, in sophisticated patent matters. While we can and often do handle patent preparation and prosecution for these clients, they more often call upon us for strategic patent counseling. From conducting patent infringement / non-infringement investigations to rendering opinions and providing offensive and defensive representation at the U.S. Patent and Trademark Office, we provide advanced patent services to guide these large corporations through their most complex patent challenges.
- With a deep knowledge of private equity transactions and market valuation drivers, we represent both private equity firms and acquisition targets in their patent matters. We create high-value patent portfolios and establish market-leading patent positions, ensuring that our client’s intellectual assets are fully protected and fully valued for downstream transactions.
- A nationally recognized celebrity entrepreneur, with over 120 patents, relies on us to protect her innovations, which are sold on a television shopping network.
- We have established professional relationships with more than 20 firms worldwide to help our clients gain patent protection in other countries as well as help our international clients obtain patent protection in the United States.
News & Articles
May 13, 2019
There has been a bloom of data analytics tools for patent practice, and some new features of these tools have profoundly enhanced patent practice. Here are five examples of how applicants and their attorneys can improve day-to-day patent strategy using the latest data analytics tools.
October 11, 2018
In recent remarks at the Intellectual Property Owners Association’s annual meeting, USPTO Director Andrei Iancu proposed a change to how USPTO examiners determine whether a claimed invention satisfies the patent eligibility requirements of 35 USC § 101.
September 12, 2018
The annual playoffs for Major League Baseball will soon begin in the U.S.
July 20, 2018
By Adam R. Steinert & Katherine J. Rahlin
The United States Court of Appeals for the Federal Circuit held today that a Native American tribe may not assert sovereign immunity to bar inter partes review proceedings before the Patent and Trademark Office’s Patent Trial and Appeal Board.
July 16, 2018
A Pre-Appeal Brief Review Request (PABR) offers an alternate to traditional options when applicants face a final rejection of their application. When is a PABR worth it?
June 14, 2018
Lora Friedemann, Thomas R. Hipkins, Ann M. Ladd, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West were featured in the 2018 edition of the IAM Patent 1000.
May 1, 2018
No matter how much IP experience a person has, it can be valuable to have short, easy-to-consume reminders of the basic things a company should consider.
Supreme Court Upholds Constitutionality of Inter Partes Review – PTAB Must Decide Patentability of All Challenged Claims
April 24, 2018
The Supreme Court of the United States issued a pair of significant decisions today regarding post-grant practice before the PTO’s Patent Trial and Appeal Board.
March 6, 2018
Since 2000, the Federal Circuit has routinely applied the Lead Compound Analysis to assess the patentability of chemical compounds. This two-part test is gaining traction at the Patent Trial and Appeal Board. What does this mean for patent owners and patent challengers?
October 16, 2017
Football is once again underway in the U.S. Many thrilling moments in the game of football involve one team tying the score late and then prevailing in overtime.
September 18, 2017
Being strategic about where to pursue foreign patent protection can go a long way in efficiently using available resources while still acquiring meaningful protection for an invention.
Patent Trial and Appeal Board Creates Loophole to Challenge Written Description and Enablement in Older Patent Families
June 15, 2017
The Patent Trial and Appeal Board’s May 10 decision in Minerva Surgical, Inc. v. Hologic, Inc. creates a loophole in Patent Office post-grant practice that enables challengers to bring new kinds of invalidity attacks against patents claiming priority to older applications.
January 26, 2017
Replacement components can be big business. However, the replacement component market may quickly become crowded with competitors attracted by lucrative profit margins. Accordingly, considering strategies for replacement component patent protection at the product development stage can be critical. By planning at the outset of product development, a company can “design into” patent protection for the replacement component itself.
November 8, 2016
By Natalie D. Kadievitch & Krithiga Ganesan
The IP5 Patent Prosecution Highway Program (the PPH Program) has been available to U.S. patent applicants for just over two years. It was implemented to permit cooperation between the five largest Patent Offices—Europe, Japan, Korea, China and the U.S.—to fast track examination of applications.
October 19, 2016
The Federal Circuit’s recent patent eligibility opinion in McRO Inc. v. Bandai Namco Games America, 2016 WL 4896481 (Fed. Cir. Sept. 13, 2016) is the latest to find claims involving computer technology that survive a § 101 challenge.
Avoiding Punitive Damages in Patent Infringement Cases: Staying on the Right Side of the Now-Blurred Line
September 19, 2016
The United States Supreme Court’s recent Halo Electronics v. Pulse Electronics case made it easier for a patent holder to win punitive damages in a patent infringement case.
Six Fredrikson & Byron Attorneys Recognized in Intellectual Asset Management’s 2016 Patent 1000 Guide
June 1, 2016
Debuting in the 2016 edition of the IAM Patent 1000: The World’s Leading Patent Professionals were Lora Friedemann and Ann M. Ladd. Also ranked again were Thomas R. Hipkins, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West. The IAM Patent 1000 identifies the top patent professionals in key jurisdictions around the world.
April 26, 2016
By Katherine J. Rahlin & Kara K. Fairbairn
In Genetic Technologies Ltd. v. Merial LLC, the Court of Appeals for the Federal Circuit recently issued an opinion holding yet another biotech patent invalid. The Federal Circuit applied the two-step Alice/Mayo test for patent eligibility in upholding the district court’s finding of invalidity. The patent at issue, U.S. Patent No. 5,612,179 (the ‘179 patent), is directed to methods of analyzing DNA sequences to detect an allele of gene by amplifying non-coding regions of the DNA. The parties agreed that claim 1 is representative of all of the invalidated claims: