Services // Patent Preparation and Prosecution

As a law firm specializing in patent and technology law, preparing and prosecuting applications for patents is one of our core practice areas. It is a service that we take great pride and pleasure in performing for our clients every day.

Our patent attorneys have prepared and prosecuted thousands of patent applications for inventions involving analog and digital integrated circuits, computer hardware and software, mobile telecommunications devices, wireless networks, microwave and millimeter wave devices and circuits, electronic instrumentation, semiconductor materials, devices, equipment and processing, RFID, solar, wind and other renewable energy technologies, nanotechnology, optoelectronics, LCD, LED and OLED technologies, and medical and orthodontic devices.

We serve and welcome new clients of all types and sizes, including large corporations, small and medium-sized companies, entrepreneurs and startups, solo inventors, and patent investors.

List of Patent Preparation and Prosecution Services

Our patent preparation and prosecution services include:

Case-By-Case Patent Procurement

We procure (i.e., prepare, file, and prosecute) patents for clients on a case-by-case basis, such as is common for solo inventors, entrepreneurs and startups seeking their first patent, as well as for large corporate clients that utilize multiple outside patent counsel. (PLP also provides experienced, professional patent portfolio management services for clients who lack the infrastructure, know-how, time and/or desire to tend to their patent portfolios internally. Please refer to our Patent Portfolio Management services below.)

Patent Portfolio Management

Our Silicon Valley offices are specially designed and equipped to professionally manage patent portfolios of all sizes. Our many years of experience practicing patent law have allowed us to fine-tune our operations so that they are efficient as possible, resulting in substantial savings to our clients.

In managing each client's patent portfolio, we work closely with the client's leaders and key technologists to understand the client's business objectives and the competitive landscapes in which the client operates. From our consultations we develop and implement a custom-made portfolio management plan that uniquely protects the client's inventions and prevents competitors from freely operating in the client's market space. When necessary and possible, we also assist the client in acquiring third-party patents that can be added to the client's portfolio and serve as defensive shields against aggressive or litigious competitors.

As we manage a client's patent portfolio, we also remain vigilant of competitor products that infringe patents in the client's portfolio; write and introduce, when possible, patent claims that strategically target or cover specifically identified competitor products; and identify and advise of patents in the client's portfolio that are potential candidates for generating licensing revenues.

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Patentability Searches

For an invention to be patentable it must be novel (i.e., new) and non-obvious, as determined by an examiner in the U.S. Patent & Trademark Office (USPTO). The USPTO examiner assesses whether an invention is novel and non-obvious by comparing the inventor's invention, as it is described and claimed in the inventor's patent application, to information and technology that is already in the public domain (known as "prior art").

When an inventor is familiar with the prior art, there can be a high level of confidence that the inventor's invention is novel and non-obvious. However, in circumstances where there is a lack of familiarity, the question of whether the invention would be deemed novel and non-obvious is less certain. In such circumstances it can be prudent from a cost perspective to have a patentability search (also referred to as a "novelty" or "prior art" search) performed before commissioning the patent attorney to write up a patent application for the invention. In fact, we recommend that a patentability search be performed in such circumstances. Based on the search results, we will then prepare a written patentability opinion containing the firm's professional opinion as to whether the USPTO would consider the invention to be patentable. (See description of our Legal Opinions practice.)

International Patent Practice

PLP is associated with a large network of trusted foreign patent law firms ("foreign associates"). We work with our foreign associates to secure patent protection for our clients in Europe, Asia and throughout the rest of the world. We also assist our foreign associates with preparing and filing U.S. patent applications for their clients in accordance with the Paris Convention and Patent Cooperation treaties.

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Reexamination of Patents

A prior art publication casting doubt on the validity of a patent can be used as the basis for requesting the U.S. Patent & Trademark Office (USPTO) to reexamine the patent.

Reexaminations can be requested by anyone, not just by the patentee. The ability to request reexamination of another's patent is a powerful tool. For example, when sued for patent infringement, the accused infringer can request the USPTO to reexamine the patent involved in the lawsuit. If the USPTO grants the request, the court presiding over the case may, at its discretion, stay the litigation, pending the reexamination results. If the USPTO ultimately deems the patent to be invalid, the court can then dismiss the lawsuit, sparing the accused infringer substantial litigation costs.

While reexaminations are often requested by accused infringers in patent infringement lawsuits, they are also requested by those not involved in a lawsuit. For example, a patentee may request reexamination of its own patent to reaffirm the patent's validity prior to attempting to license the patent to others. A licensee may request reexamination of a patent forming the basis of a patent license agreement to demonstrate that the patent is invalid and avoid having to continue making royalty payments. Finally, a company being pressured to license a patent of questionable validity may request reexamination to demonstrate that the patent is invalid, thereby avoiding having to license the patent in the first place.

Recent changes in patent law concerning the validity of patents, along with the high cost of challenging patents in court, have led to an increase in the popularity of reexaminations in recent years. Indeed, companies are increasingly finding reexamination to be a cost-effective non-litigation mechanism for reaffirming the validity of their own patents and challenging the validity of patents of their competitors.

If you have a patent and newly discovered prior art possibly affecting the validity of the patent; have a patent for which a reexamination has been requested by another; or wish to challenge the validity of competitor's patent without having to resort to litigation, please contact us. We will conduct the reexamination of your patent to reaffirm and uphold its validity, or will further advise you of the risks and benefits involved in requesting reexamination of another's patent.

Reissue of Patents

After a patent is granted the patentee may discover that the patent's specification contains errors or that the attorney who prepared and prosecuted the patent unnecessarily narrowed the patent's claims or failed to include claims encompassing an important embodiment of the invention.

Fortunately, the U.S. Patent & Trademark Office (USPTO) provides a procedural mechanism that affords patentees the ability to correct these types of defects and have the patent "reissue" free from the defects. So long as an application for reissue is filed in the USPTO within two years from the date the patent was originally granted, the claims can be broadened and claims for previously unclaimed embodiments can be introduced. Other defects not involving a broadening of the claims can be corrected beyond the two-year limit.

If you have a patent with a defect that you believe potentially lowers the patent's value, please contact us. We will advise as to whether the defect can be corrected through reissue and, if so, prepare and file a reissue patent application in the USPTO on your behalf.

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