Patent Preparation and Prosecution

Attorneys and agents at Studebaker Brackett PC draw from their technical and legal knowledge, understanding of USPTO practices and procedures, and experience in negotiating with patent examiners to obtain claims that advance your business objectives. The success of patent prosecution however should start with patent applications properly draft to comply with US practice. We are available to review and revise applications previously prepared by our clients or draft new applications based on invention disclosures provided by our clients. We often work collaboratively with our clients and inventors to identify, describe and claim the essence of the inventions using simple, clear and consistent language in a manner to better enable efficient and effective prosecution.

Many of our practitioners previously worked as Examiners, and thus understand the perspectives, challenges and positions of many Examiners. We work with Examiners in a thoughtful, helpful manner to assist them in better understanding the core invention of the claims and the distinction from the prior art. Understanding the substantial time demands of Examiners and the difficulty in “reading between the lines” or interpreting an Examiner’s position based solely on a written office action, we often conduct Examiner interviews to ask questions, listen, and engage in back and forth discussions with Examiners to successfully advance prosecution.

Patent Opinions

During the development of a new product or process, most companies will likely need to seek one or more opinions regarding the intellectual property rights which may have been created in or have been compromised by the new product/process. Typically, a patentability search would be conducted and a patentability opinion obtained to determine if all or any portions of the new product/process are patentable thus potentially creating an asset for the company.  Once the product/process is near the end of the development stage, the company should obtain a patent clearance or right-to-use opinion.  In doing so, issued patents and designs, as well as published applications related to the product/process are reviewed to determine if any existing unexpired and enforceable patents may be infringe if the product/process were to be sold.  Further, one or more expired and/or unenforceable patents may be discovered which may allow the company to safely pursue the product/process.

If any patents or applications are identified which relate to the new product/process, the company would be well served by obtaining an opinion of non-infringement and/or validity.  These opinions would first identify if any claim of a patent or potential claim of a pending application is in fact infringed, and if so the likelihood that such a claim would be held invalid if challenged in an adverse proceeding.

The attorneys at Studebaker Brackett PC are well versed in advising clients on the patentability of inventions, the right-to-use an invention, infringement, validity, and enforceability and providing opinions during each phase of the product/process development.  Obtaining strong patents for our clients is our core business; however, no matter how strong the claims of a patent may be, there may be a landmine out there which, if left undiscovered, can undermine the product/process’s viability.

Worldwide Patent Strategy

Technology is easily transferred across national borders. A separate patent must be applied for in each country where you would like to enforce your IP rights. For these reasons, you must have a comprehensive strategy when filing a patent application, then refine that strategy as more information becomes available. We can advise on building a patent portfolio efficiently and economically, to achieve your goals of exploiting the commercial benefits of a portfolio, both offensively and defensively.

IP Transactions for Biotech/Healthcare

Traditionally, patents were used to obtain an immediate competitive advantage when selling products or rendering services. However, some clients (especially educational institutions, research organizations, and start-up companies) may patent inventions with the goal of licensing, finding a partner, or being bought instead of commercializing inventions on their own. We can counsel you on all aspects of such transactions: formalizing the license agreement from a term sheet, due diligence for financial transactions, responding to information requests from investors and partners, etc.