Patent & Trademark Prosecution

We understand the often critical role that domestic intellectual property can play for our clients. Accordingly, we strive to give each patent and trademark application highly personalized attention, which considers all relevant aspects of the client’s business. In order to provide the best and most legally defensible product, the firm also constantly educates it members on new developments, case law, and regulations in the field.

In addition to preparing applications, the firm also provides a spectrum of patentability and trademark searching capability, both in-house and from outside search firms. Such searches range from domestic to international in scope, depending on the client’s needs.

To help control costs during prosecution, the firm utilizes non-attorney patent agents or engineers where possible to draft patent applications under the supervision of a registered attorney. We also use our staff personnel to the maximum extent practicable to perform related support functions such as quality assurance of applications, and non-critical interface with counterpart Patent Office personnel.

The firm is also skilled at electronically filing patent and trademark applications with the United States Patent & Trademark Office in accordance with Electronic Filing System (EFS) requirements, as well as new America Invents Act (AIA) rules and procedures.

International Prosecution

In addition to domestic prosecution, we handle all aspects of international patent and trademark practice. We can personally prepare and supervise the filing and substantive prosecution of all applications for a given client, both domestic and international, to ensure a uniform prosecution strategy, and eliminate costs associated with educating outside attorneys or patent agents.  We also provide domestic representation for a constantly growing base of international clients.

The firm prepares and files international applications (such as those filed under the Patent Cooperation Treaty, or PCT) directly with the appropriate patent authorities where possible, thereby often eliminating any cost markup resulting from the use of a separate entity or “foreign associate” for such matters. This approach provides our clients a significant cost savings. In certain cases, direct electronic filing is used to further reduce cost.

Additionally, we maintain a comprehensive network of high quality yet cost-effective foreign associates to aid us in national phase or direct national filings, translations, and related services.  Effective and judicious use of such foreign associates can result in very significant cost savings, since most of the expense incurred for prosecuting international applications relates to “national” prosecution within the individual countries, where the services of such foreign associates are frequently required.

We also provide international prosecution services for other law firms and “in-house” intellectual property departments not having the facility or capability to file and prosecute their own matters.