Intellectual Property Services

Patents

Counseling

Leason Ellis’ attorneys have many years of experience guiding individuals and companies on how best to protect their inventions and innovations. When a client comes to us with a new invention, we typically provide advice on the patentability of the invention and the requirements and necessary steps for securing patent protection. We work with our clients to explore and refine their ideas in order to identify the limits and potential applicability of their invention. This approach enables us to formulate and obtain a patent that provides the broadest possible protection for the client. In addition, we offer our clients strategic advice on the potential value of a patent as a means to prevent the unauthorized manufacture, use, or sale of a business’s core product, as a way to restrict entry into the market by others, and as an asset in a company’s overall intellectual property portfolio. We further advise our clients about the various available avenues for pursuing patent protection in the U.S. and worldwide, including provisional patent applications, utility patents, design patents, international patent applications (PCT), and patent applications in foreign jurisdictions.

Filing

Leason Ellis’ patent attorneys have obtained thousands of issued patents. In preparing and filing new patent applications, we work closely with inventors, technical personnel, and management in order to ensure that all aspects, features, and details of the invention are faithfully captured and represented in the application. Based upon our extensive experience, we understand how to frame a patent application to enhance the chances of it being approved by the Patent Office. After filing a patent application, we work diligently to advocate for our clients throughout the patent examination (“prosecution”) process. We maintain ongoing communication with patent examiners through formal correspondence, as well as telephone and in-person communications, to streamline the examination process and ensure that our clients obtain the patent rights to which they are entitled. With foreign patent applications, we take an active role in managing the prosecution conducted by our foreign associates. In doing so, we are able to better manage foreign prosecution costs by avoiding unnecessary duplication of effort while also ensuring that our client’s patent portfolio remains largely consistent across various jurisdictions.

Reexamination

Leason Ellis is one of the foremost firms in the area of patent reexamination. After a patent is granted, patent reexamination can be used as an effective tool to challenge the patent’s validity. The challenges can be made by the client in order to validate the patent over new prior art or by a third party. During reexamination proceedings, the Patent Office only considers newly discovered patents and publications in determining whether a patent was granted improperly. Leason Ellis has a successful track record in connection with high-stakes reexamination matters in a number of technology areas.

Reissue

Like a reexamination, a reissue proceeding can be started in the Patent Office after a patent issues. It can only be started by patent owners, and it can determine the patentability of the claims of the issued patent on grounds beyond prior patents and publications. If filed within two years of issuance, it can result in broader claims. Leason Ellis has significant experience in this type of post-grant Patent Office proceeding.

Market Clearance / Freedom to Operate

During the course of technology and product development, it is frequently advisable to conduct “freedom to operate” searches to ensure that no “in-force” patents will be infringed. After searching, we provide risk assessments relating to the possibility of infringing granted patents and pending applications. Additionally, we can assess the strength of non-patent disclosures in the public domain, which might shield a product from claims of infringement. We also work closely with our clients to design around existing patents in order to avoid potential infringement.

Searching

Before filing a new patent application, it is sometimes advisable to search whether a similar idea has already been described in the patent literature. Our patent attorneys routinely conduct sophisticated computer patent database searches in the U.S. and abroad, and search non-patent technical literature. Our clients benefit from our favorable relationship with outside search companies and we utilize the search results to provide opinions on the patentability of new inventions and how best to tailor the claims of the patent to obtain the broadest protection possible.

Due Diligence

Founding or investing in a new venture can be an exciting, yet risky, endeavor. Our patent attorneys work with companies, investors and corporate attorneys to conduct IP due diligence. We analyze the strength of key patents underlying a client’s prospective new products, technologies and business models and provide advice and perspective on the accompanying business issues. As the result of our diligence, we have been able to help companies avoid making ill-advised investments. We also undertake analysis of entire portfolios held by companies to locate gaps in patent coverage and uncover new opportunities. We provide our clients with valuation services to help determine the proper value of a single patent or an entire portfolio, particularly where the client is seeking to buy the owner.

Litigation

We have significant experience representing both plaintiffs and defendants in complex patent litigation matters across a broad range of technologies. The technical and scientific expertise that our attorneys possess enables us to persuasively advocate for our clients in patent cases that can hinge on a fine technical point or detail.

Settlements

Where settlement best serves the interests of our client, we make every effort to achieve a favorable resolution of the patent-related dispute. As part of those settlement efforts, we are also experienced at negotiating and drafting settlement agreements, assignments, and royalty licenses.

License Agreements

We advise our clients in a range of patent licensing matters from simple license agreements, to agreements in settlement of litigation, to complex product merchandising and cross-licensing agreements. Whether representing the licensee or the licensor, we are able to negotiate and draft practical, business-oriented license agreements.

Patent Watch Services

After a client has secured a patent, or a freedom to operate opinion, our attorneys can continue to monitor the latest developments in a given field or area of technology. We can track competitors’ patent filings and determine if they pose a developing challenge to a client’s business. Additionally, we can keep track of patents and applications directed to technologies of interest, and update the client if they become abandoned, rejected or expired.