The FLH Patent Prosecution Group has substantial experience in providing a variety of services, some of which are listed below.
Freedom to Operate Opinions
- A noninfringement/infringement opinion is a legal opinion as to whether a particular product or process infringes a particular patent. It is prudent to investigate these issues when facing an infringement allegation, when introducing a product meant to compete with a competitor’s existing product, when preparing for license negotiations or business acquisitions that involve particular patents, or, conversely, when a competitor’s product is suspected of infringing one of your patents. Our team at FLH can help you determine whether obtaining a non-infringement or infringement opinion makes sense, and, if so, we can provide you with an expert, well-reasoned analysis and legal opinion.
- A freedom to operate opinion is a legal opinion as to whether a product or process infringes existing patents. It is advisable to obtain a freedom to operate opinion prior to launching a new product, prior to a business acquisition, or prior to entering into a new area of technology. The attorneys at FLH can help you determine whether to obtain a freedom to operate opinion, and if so, we can provide you with an expert, well-reasoned analysis and legal opinion.
- An invalidity/validity opinion is a legal opinion as to whether a patent is valid. It is appropriate to obtain an invalidity opinion when you face an accusation of infringing a competitor’s patent and to obtain a validity opinion when a competitor alleges that one of your patents is invalid. These studies are also recommended prior to entering into licensing arrangements or business acquisitions. Attorneys at FLH can help you determine whether securing such an opinion makes sense, and if so, can provide you with an expert, well-reasoned analysis and legal opinion.
National and Foreign Patents
- Licensing patents can be a valuable revenue source, while acquiring patent rights through licenses may allow clients to use patented technology that is otherwise unavailable. The ability to perform proper valuations of licensed patents and excellent negotiation skills are important aspects of effectively representing clients in potential licensing transactions. Attorneys at FLH provide both with valuable assistance in all aspects of licensing.
Patent Portfolio Management
- A patent provides rights only in the particular country where the patent is granted. Attorneys at FLH can assist you in determining the best strategy for protecting your rights, including whether and how to seek patent protection in countries besides the United States. We can also help you with cost-effective strategies for maintaining your rights while delaying the decision of whether to file patent applications in those other countries.
Providing advice on merger and acquisition transactions and conducting due diligence related to patents and other intellectual property issues
- The value of a patent portfolio can be greatly increased through proper portfolio management. This includes valuation of the patents, monetization of the portfolio, enforcement of patents, weeding out patents of little value, and monitoring competitor patent portfolios and products. It also includes identification of valuable new technology for which patents can be filed. In some cases, identifying and protecting improvements to technology in existing products can be useful in preserving a client’s position in the marketplace. Attorneys at FLH are expert in assisting clients’ management of their patent portfolios in many ways.
Providing in-house training on Patent Related Issues
- Attorneys at FLH are highly experienced in providing advice and due diligence in merger and acquisition transactions. We are able to assist in areas such as negotiation strategies, technology review, patent portfolio evaluation, patent valuation, and study of the validity and enforceability of patents in the portfolio.
Preparation/Prosecution of US, PCT and Foreign Applications
- FLH attorneys can provide periodic seminars and training at our offices or your facility for your executives and professionals to explain basic IP legal concepts or update them on recent important developments in the law.
Post Grant Proceedings
- Procuring patents involves preparing and filing patent applications and prosecuting those applications to allowance with the respective patent office. The goal of patent preparation and prosecution is to obtain a patent that will withstand a challenge to its validity while providing the broadest possible claim coverage. FLH attorneys have excellent technical expertise and legal skills to achieve these goals and avoid the pitfalls that might unnecessarily limit a client’s rights. We can also help you determine if you should seek patent protection in countries outside of the United States and file the appropriate applications in foreign countries directly or through the Patent Cooperation Treaty.
- Ex Parte, Inter Partes Re-Examinations
- A third party can request that the PTO reexamine a patent by submitting prior art that raises a substantial new question of patentability. If the PTO grants the request, the patent claims can be narrowed or canceled if the original claims are found unpatentable during the reexamination. A reexamination can be conducted (a) ex parte, meaning that once the reexamination is granted, only the patent owner and the examiner are involved in the reexamination proceeding, or (b) inter partes, which means that the party who filed the request continues to participate in the proceeding along with the patent owner and the examiner. Initiating a reexamination can be a valuable alternative to litigation in some situations. FLH attorneys are experienced in all aspects of reexamination practice and can plan a successful strategy whether you are the party requesting a reexamination or the patent owner defending against a reexamination request.
- AIA Inter Partes Reviews and Post-Grant Reviews
- The AIA (America Invents Act) allows a third party to request post-grant review of a patent within nine months of the patent’s issuance if the requestor establishes that at least one claim is more likely than not to be declared unpatentable. Like reexamination, post-grant review can sometimes be a valuable alternative to litigation. FLH attorneys can help you handle all aspects of post-grant patent issues.
- Administrative and Judicial Appeals of Final Rejections
- When a “final rejection” is received in a pending patent application, the applicant can file a Request for Continued Examination (RCE) or an appeal. An appeal may be advisable if the patent examiner is unwilling to allow the application’s claims despite solid arguments why the claims are patentable. FLH attorneys can advise you not only when it is appropriate to appeal a final rejection, but they can also handle the appeal.
- Patent Interferences and Derivation Proceedings
- An interference proceeding determines which applicant is not entitled to a patent when two or more parties seeking a patent claim the same invention. Interference proceedings only apply to patent applications with an effective filing date before March 16, 2013. For patent applications with an effective filing date after that date, the first party to file a patent application for an invention will be deemed the first inventor unless that party derived the invention from the another party who filed a later patent application for the same invention, which can be determined in a derivation proceeding. FLH attorneys are well-versed in handling these proceedings.
- In some instances, an error in an issued patent can be corrected by filing a reissue application. A reissue application may be required, for example, to correct the scope of the original claims, to correct a technical inaccuracy, or to correct an error in a claim of priority. FLH attorneys can determine if a reissue application is needed, and prepare and prosecute any necessary reissue application.