Overview

As patent counsel within a full-service firm, we take a business-centric approach to our comprehensive patent representations. Our patent lawyers and agents are fluent in the scientific disciplines that even the most complex patentable ideas require. More, we are skilled at discerning the business, market, and legal realities that impact both patent rights and patent counsel representations. We routinely look beyond the immediate goal of filing a patent application when working with clients. Instead, we 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.

This approach has led to us serving clients in a wide variety of roles including as patent rights advisors, outside chief patent counsel, and patent counsel of record. In particular, medium-sized entities that lack in-house intellectual property (IP) resources appreciate our support, as do IP counsel at organizations looking for representation whose value includes both process efficiencies as well as service-based offerings.

Patent Preparation & Prosecution

Our team files and prosecutes patents on a global basis. All of our patent attorneys and agents are registered to practice before the U.S. Patent and Trademark Office. Each has at least one technical degree. Many have advanced degrees. Our patent attorneys follow a process-driven approach with our patent agents, paralegals, and staff to provide high-value protection at Midwestern rates.

Guiding Clients Around Others' Patents

We help our clients successfully manage infringement risk so that they can sell their products and services with confidence. At all stages of the product development process, we offer informal advice, render formal opinions, and help clients navigate complex patent landscapes. When circumstances warrant, we partner with our patent litigators to defend against infringement allegations and challenge the validity of overbroad patent claims.

Patent Capitalization

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. In addition, we provide representation for monetization of patent rights, including due diligence investigations, private equity assessments, and other patent rights enforcement efforts, including litigation.

Services

Patent Preparation & Prosecution

  • Pre-patenting analysis of prior art patents and literature
  • Collaborate on desired claim scope and strategy
  • Prepare, file, and prosecute U.S. patents
  • Direct and coordinate filing and prosecution of foreign patent applications
  • Appeals and reexaminations before the U.S. Patent and Trademark Office
  • Identify and prosecute strategic continuing patent applications
  • Develop patent portfolios based on competitive landscape
  • Ongoing patent acquisition and portfolio management

Guiding Clients Around Others' Patents

  • Design collaborations to reduce infringement risks
  • Freedom to operate research, analysis and opinions
  • Noninfringement, invalidity and clearance research, analysis and opinions
  • Strategic investigations
  • Client technology processes review and best practices training
  • Patent maintenance and licensing strategies
  • Validity challenges in the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB)
  • Patent defense litigation support

Patent Capitalization

  • IP due diligence for strategic transactions, including quality assessments, infringement risk assessments, and identification of IP assets
  • Patent enforcement litigation support, including pre-suit investigations
  • Licenses and strategic agreements
  • Assessment of patentability and patent valuation of technology
  • Assessment of unappreciated patent opportunities within a client’s technology universe

Experience

Medical Devices

Including implantable pacemakers, defibrillators, neurological stimulators, diagnostics software and systems, cryogenic probes, surgical heating blankets and surgical patient positioning devices. cardiac, vascular, neuro, orthopedic and ocular), medical imaging and diagnostic procedures, thermal imaging, contrast injection systems for cardiology and radiology Intravascular ultrasound (IVUS), diabetes management systems, heart valve repair and replacement photo-sonodynamic therapy neuropathy testing and treatment equipment, implanted cochlear hearing systems, personal protective equipment, radioisotope detectors and nuclear medicine hardware and software, medical electrical stimulation hardware and therapy cleaning, complex rehabilitation technology, fractional flow reserve (FFR), and drug infusion devices.

Networked Environments & Software

Including artificial intelligence, machine learning algorithms, user interfaces, video coding, virtual reality systems, networks, blockchain and various other applied algorithms dealing with areas including weather detection, medical devices, personal identification, market forecasting, automobile navigation and bug detection, printer driver systems, connected home security systems and thermostats, and cloud-based remote appliance control.

Chemical Compositions

Including chemical cleaning formulations, renewable fuels, dermatological compositions, food compositions and processing technology, films and coatings, magnetic storage media, optical sensors, sanitation, oil sands processing technology.

Industrial Processes

Including food manufacturing, injection molding equipment, polymer filtering, floor cleaning vehicles, carpet extractors, vacuums, wheel bearings and other bearing assemblies, agricultural equipment, automation equipment, window products, privacy glazing products, glass making and other glass technology, medical device technology, fire-fighting equipment, and log building technology.

Mechanical & Electro-Mechanical Systems

Industrial and commercial HVAC equipment, flood barriers, electronics manufacturing, power distribution equipment, generator docking stations, smoke detectors, mechanical elasticity imaging, on press brake tools, turret press tools, sheet metal stamping, extrusion equipment, fire and life safety devices, construction and agricultural equipment, HVAC components and systems, assembly line technology, floor-maintenance machines, and industrial safety systems.

Sensors & Controls

Including thermal imagers, pressure sensors, pressure transducers, and industrial control systems.

Aviation, Aerospace & Auto Technology

Including unmanned air vehicles, automotive accessories, vehicle seat suspension systems, aerospace technology, especially the mechanical components used in this field, as well as products in which flow characteristics are important, aircraft design, floats for amphibious airplanes, aircraft landing safety warning systems, fire suppression aircraft technology, and aircraft bearing systems, gas turbine engines, vehicles such as snowmobiles and ATVs, radio-controlled aircraft.

Coating Technologies

Including thin films and vacuum deposition methods; glass coatings, such as low-emissivity, solar-control, hydrophilic or photocatalytic coatings; commercial and industrial polymer coatings for concrete and other flooring; materials and ingredients used in forming coatings; privacy glass coatings; coatings for electrolysis anodes; photovoltaic coatings; gemstone coatings; sputter deposition; ion beam processes; flash-lamp annealing; tempering; and other heat treatments, multi-layer structures, such as laminates (e.g., safety glass), polymer extrusions, lithophanes and various glazing technologies.

Industries

Automotive, business services, consumer products, food and agriculture, health care, industrial manufacturing, pharmaceuticals, retail, construction, manufacturing, genetics.

Team

Main Contact

News & Insights

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