Patent Prosecution & Counseling

In many industries patents are the foundation upon which successful organizations are built. However, there are significant obstacles to the development and protection of valuable patent assets, as well as difficulties in navigating the minefield of other parties’ patents. We are adept at helping clients overcome these obstacles to obtain and leverage patent rights, avoid patent infringement problems.

Patent Portfolio Development & Management

MBBP professionals are experienced in all aspects of the development and management of patent portfolios in the U.S. and abroad. Services we routinely provide include:

• Working with scientists and management to create procedures for identification, documentation and assessment of new ideas
• Conducting prior art searches and providing patentability advice to aid in formulating patent filing strategies
• Drafting patent applications which extract maximum value from core inventions
• Prosecuting patent applications before the U.S. Patent Office using efficient and creative strategies to obtain claims which support our clients’ business objectives
• Collaborating with local counsel in countries worldwide to obtain patent protection in foreign jurisdictions
• Counseling clients and affiliated personnel with regard to patent best practices and evolving law
• Establishing patent committees including key client team members and conducting periodic committee meetings to guide patent strategy and ensure that strategy is aligned with business objectives
• Reviewing activities and products of others to identify infringement of client rights.
  

Assessment of Third Party Patents

Clients are often faced with the question of what impact the patent rights of others may have on the client’s own activities or the activities of potential partners. We help clients answer these questions by:

Conducting freedom-to-operate searches to identify third party patents and patent applications of relevance in the U.S. and abroad

• Analyzing patent claims to determine their proper scope as an aid to design- around efforts
• Reviewing proposed activities in view of third party patents to minimize risk of infringement, particularly during product development stage
• Assessing identified patents for validity and enforceability
• Collaborating with local counsel in foreign countries to oppose key competitor patents.
  

Patent Opinions

Clients often need to obtain formal or informal opinions on issues of patentability, non-infringement, validity and/or enforceability. We work with our clients to determine the type and formality of opinion appropriate for the circumstances and provide well-supported documents on which our clients can confidently rely in business transactions and contested proceedings.

Patent-Related Due Diligence

A determination of the strength and value of patent assets is a frequent and important aspect of business transactions. We assist our clients in evaluating patent issues in connection with potential litigation, venture capital financings, public offerings, mergers and acquisitions, and licensing transactions.

To discuss your company's particular patent needs and opportunities, please contact Lisa Treannie.