Patent Counseling, Clearance, & Prosecution

Steptoe & Johnson LLP's registered patent attorneys assist companies in establishing IP programs that harness developments in a way that manages intellectual property as an asset in an economically and competitively viable manner while facilitating protection of ideas generated from individuals and strategic initiatives. As a result, we routinely guide clients through all phases of patent and technology protection, including:

counseling;
strategic portfolio building;
drafting and prosecuting patent applications in the US and managing patent portfolios worldwide;
drafting and negotiating patent licenses, research agreements, and other technology transfer agreements;
conducting due diligence investigations;
executing clearance and freedom to operate studies;
formulating defensive and offensive patent strategies, including litigation;
conducting patent audits and portfolio assessments; and
providing validity, clearance, and infringement opinions.

Our patent group works closely with individual clients to develop targeted patent programs designed to capture innovation and provide a competitive advantage under the patent statutes. Specifically, we regularly work with clients to establish patent programs that create an intellectual property asset-driven culture. Typical programs capture the intellectual property created from new business, product, and manufacturing ideas with the help of a program manager within the company. Often, the program manager works with the company's in-house and outside counsel to establish an invention disclosure program. A key component of a successful program includes engaging employees likely to create patentable ideas and educating them to identify possible innovations, and creating incentives for them to disclose these innovations to the program manager in a way that allows in-house and outside counsel to evaluate them for patentability. Patent applications are prepared to capture those ideas identified as patentable and the patent applications are prosecuted by outside counsel to issuance abroad. Patents having both domestically and varying scope are sought to provide the company with an optimal patent portfolio. The company can thereby develop a protection plan for important innovations in a systematic way. Our clients are leaders across a variety of industries including pharmaceuticals and biotechnology; chemistry; materials science; electronics and software; chemistry; nanotechnology; and medical devices.

Select News & Events

Publications

Intellectual Property Advisory: Effective Timeline for the America Invents Act
November 4, 2011
America Invents Act Revamps US Patent Law
September 1, 2011