Innovations are often a company’s most valuable assets. Securing intellectual property rights begins with crafting accurate, detailed patent applications that ensure the broadest protection possible - and timing has never been more critical.
What We Do
Now that U.S. patent law recognizes the first to file (in contrast to the first to invent), inventors need to file patent applications expeditiously to protect their developments in new technologies. In many cases, doing so provides a substantial competitive edge for their products and methods.
Pryor Cashman’s patent practice includes attorneys with advanced degrees in various sciences and mechanical, electrical and chemical engineering from the nation’s most prestigious research universities. Drawing on these technical backgrounds and our vast experience, we help clients identify and prioritize their patentable inventions, homing in on the unique technological aspects that can be so critical to developing a successful patent portfolio. While our clients focus on research and development, we step in to ensure timely filings so that their inventions receive the maximum protection. Should the need arise for litigation, we readily identify and employ the most effective strategies to protect our clients’ interests and explain the technical aspects of their innovations to the court in the most clear and concise manner possible.
Patent Prosecution
Our attorneys help clients protect, optimize and leverage their patent portfolios, developing global protection and enforcement strategies that maximize patent life cycles and the value of their innovations. Counseling a diverse roster of domestic and international clients, we draft, prosecute and review patent applications filed with the U.S. Patent and Trademark Office (USPTO) for a wide array of end products including pharmaceuticals, medical and dental devices, telecommunications equipment, apparel, housewares, jewelry and toys. We have also assisted with and successfully obtained unusual U.S. and foreign patents for our clients, including a business method patent for ranking financial fund performance.
With their significant potential intrinsic value, patents and patent applications can be leveraged to secure financing to buy, sell and grow companies. We manage patents in the context of mergers, acquisitions and strategic alliances, as well as handle the acquisition, building, management and disposition of patent portfolios. Additionally, we counsel clients in the sale, purchase and licensing of proprietary technologies and their underlying IP, and conduct transactional due diligence - evaluating patents for validity, enforceability and freedom to operate, as well as investigating any infringement claims.
Patent Litigation
Representing pioneering inventors, fledgling startups, emerging companies and multinational corporations, our practice - backed by our stellar Litigation Group - resolves disputes involving patent infringement, validity, enforceability and ownership throughout the U.S. and internationally. We also go far beyond the standard cases and represent our clients in complicated matters such as:
- Reexaminations under pre-America Invents Act (AIA) law
- Inter partes and ex parte post-grant reviews
- Computer Business Method reviews under the AIA
- Inter partes and ex parte proceedings before the International Trade Commission (ITC)
- Issues related to fair, reasonable and nondiscriminatory (FRAND) terms for standards-essential patents (SEP)
Well versed in handling matters before the Patent Trial and Appeal Board (PTAB), the ITC, U.S. district courts and the U.S. Court of Appeals for the Federal Circuit, our attorneys also routinely represent clients in arbitrations related to the enforceability of licensing agreements.
