Patents, Trademarks, Post-Grant Proceedings & Interferences & Prosecution


Miles & Stockbridge lawyers are skilled in all phases of the patent process, including prosecution of individual patent applications and successful interferences against competing claimants. The foundation of our success at securing patent protection for our clients is the well-planned process that we follow in counseling on each foreign or domestic patent application. Our patent lawyers assess whether an invention is distinctive enough to receive patent office approval and whether the claim is properly positioned against competing inventions. We assess the filing’s strategic position in our client’s patent portfolio, advise on the use of design patents to secure additional product patent protection, determine the best application procedure to use and employ re-examination procedures to strengthen or defeat infringement claims as needed.

The success of our patent counseling process integrates the basic strengths of our intellectual property practice. We use our patent skills to represent a wide range of U.S. and international clients, including industry-leading corporations, high-tech ventures, universities and nonprofit research institutions. We represent them in all aspects of their operations and intellectual asset management, at each stage of their growth and development. Our patent lawyers have the industry knowledge and practical training in mechanical, electrical, electronic and chemical technologies to understand each client’s products and processes, no matter how complex. And our patent team includes lawyers who are intimately familiar with U.S. Patent and Trademark Office (PTO) processes — one of our members, for example, was a PTO Administrative Patent Judge who authored nearly 200 written opinions in patent cases. We thus understand the interaction between patent law and product technology, and that gives our clients a distinct advantage as we pursue their patent claims.

Miles & Stockbridge’s unique combination of effective processes and practical ability enable us to proactively counsel our clients and apply a business perspective to their patent efforts. For example, we are able to perform complete patent searches for possible infringement conflicts before clients attempt to patent and introduce a new product or product family, and offer guidance on how to circumvent any possible conflicts and still gain innovative advantage. After a new product is introduced, we also help our clients if other companies allege that their patents have been infringed, conducting a full search and analysis that often demonstrates validity of our client’s patents — and occasionally shows that the competitor itself is infringing. Such outcomes illustrate a business-focused approach to patent counseling that emphasizes securing the maximum competitive advantage for our clients’ intellectual assets.

Post-Grant Proceedings & Interferences

Miles & Stockbridge patent lawyers have particular strength and experience in the highly specialized area of patent interferences – the process by which the U.S. Patent and Trademark Office determines proper ownership when more than one patent application is filed on the same invention. We expect to apply these skills and experiences to assisting our clients in post-grant proceedings at the USPTO under the new America Invents Act (AIA) legal regime. For example, we help our clients establish evidence of an invention’s time of creation and work with them to create strategies and systems of record keeping that will document future inventorship priority claims.

Our lawyers have successfully represented numerous clients before the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office. When the board decides an interference action among multiple patent applications, it can involve foreign companies, competitors in the United States or former employees claiming individual right of intention. An effective interference action depends on investigation strengths and techniques that we have developed during hundreds of actions before the board. Often we are able to determine that a rival patent claim seeks to expand and support its specifications by relying on materials developed after the filing date. Such materials are proscribed new matter and lead to a rejection of the opponent's claim of prior invention. In other instances we can demonstrate that the claims of other parties are incomplete, or that former employees’ claims are invalidated by the terms of their employment.

Interference investigations and actions can be time-consuming and costly. Post-grant proceedings under the AIA may also prove to be expensive as well. Because Miles & Stockbridge has handled so many interference appeals, we can advise clients when an alternative process would be more effective. For example, we have been able to reopen a client’s original patent filing with the examiner and address key areas of dispute that are factors in the interference action, resulting in clear issuance of the patent and avoidance of the interference process. Whether our advice emphasizes an appeal, a re-examination or a proactive reorganization of all documentation procedures, our goal is to pursue the strategy most likely to help our clients achieve their business goals.

Click here to read more about our Post-Grant Team.


Miles & Stockbridge intellectual property lawyers understand that successful patent prosecution — the process of preparing and filing the patent application, then filing responses and amendments to the objections of the patent examiner — is the foundation to effective patent law counsel. The U.S. Patent and Trademark Office has specific and often complex rules about the content and examination of applications, because patent disputes, such as interference actions and infringement lawsuits frequently hinge on complicated points in the prosecution process. We help clients draft and prosecute patent applications that withstand the most rigorous technical examination. Our lawyers decide on each filing’s strategic position in our client’s patent portfolio, advise on strategies to secure additional product patent protection, determine the best application procedure to use and employ re-examination procedures to strengthen or defeat infringement claims as needed.

Miles & Stockbridge patent lawyers have the scientific and engineering background to prepare, file and prosecute patents in a wide spectrum of technologies. Our patent work has encompassed alloys and steel manufacturing, pharmaceuticals and such medical devices as CAT scanners and MRI systems, optics and electronics, computer hardware and software and business methods and solutions. As part of our general prosecution work, we have handled patents on technologically sophisticated products for inventors and producers located around the world. Examples of product patents that our lawyers have secured include:

  • The widely used chemotherapy drug Cisplatin®, one of the best-selling cancer drugs in the last 20 years.
  • The leading anti-glaucoma drug, Tousopt®.
  • The single-chip microprocessor, which we defended against challenges from around the world. Today, almost all major chip manufacturers are licensed under this patent.
  • The microprocessors used in smart cards, plus over 50 additional patents related to smart card technology.
  • More than 150 patents for hovercraft on behalf of the British research group that created the technology, in the process giving birth to the global hovercraft industry.
  • Magnetometers used in the NASA space program and developed as extensions of existing technology.
  • Photolithographic systems developed by a Japanese manufacturer.
  • Methods for manufacturing integrated circuits, also on behalf of a Japanese company.

In addition, we obtained several of the first utility patents granted for plants, including the patent for high oleic peanut plants, which produce peanuts with an altered fat profile that makes them more stable and healthful than ordinary peanuts.

Trademarks and Copyrights

Miles & Stockbridge intellectual property lawyers represent U.S. and foreign companies in a wide range of industries in connection with the selection and clearance of trademarks and the protection and enforcement of trademarks and copyrights. Our intellectual property lawyers have appeared in numerous opposition and cancellation proceedings before the U.S. Patent and Trademark Office. We also have many years of experience in litigating trademark and copyright matters in federal and state courts.

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When a venture capitalist was asked to fund a company to support defense of a patent infringement appeal, we were asked to evaluate the lower court's decision and the likelihood that the decision would be upheld. Based upon our advice, the investor funded the company, resulting in a sizeable profit.


Miles & Stockbridge has an ongoing relationship with the Japanese government, assisting the Japanese legislature (MITI) and the Japanese patent office in understanding U.S. intellectual property laws, thereby enabling the government to coordinate its international policy.


We have long counseled a European company in the protection and licensing of its pollution abatement processes and equipment. Over the years our advice has included ways to protect the confidentiality of the trade secret aspects of the technology as well as prosecuting patents for abating the pollution resulting from gas streams of boilers and incinerators. In addition, we assisted in developing a licensing strategy, including enforcement of the patents against infringers. The strategy allowed the company to continue sales of major equipment installations and otherwise maintain good relations with its customers by coordinating the litigation with the company's marketing strategy.


The director of research of a major natural gas company client requested that we monitor and develop a plan for protecting the intellectual property resulting from the client's $500,000.00 investment in a physicist's process for developing super-conductive materials. We developed a testing protocol and engaged an independent laboratory to perform sample tests both to establish baseline results as well as samples subjected to the process. The test results illustrated the bogus nature of the process thereby preventing the client from investing further in this process.


A major telecommunications company sought our advice when AT&T demanded over $100 million in license fees for allegedly using AT&T's patented technology. After analyzing AT&T's patents, their prosecution history and studying AT&T's telephone switching technology, we determined that defenses were available to all of AT&T's patent infringement claims. Review of the client's own portfolio uncovered a patent that AT&T was potentially infringing. As a result, rather than paying AT&T $100 million, we successfully negotiated a $200 million payment by AT&T to the client.


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The reference to results obtained in previous matters does not imply that the same or similar results can be obtained for other clients in similar matters. Results will depend on the specific factual and legal circumstances of each client's case.


" Michael Fleming’s Six-Article Series on Post-Grant Review," Article (Michael Fleming) (April 2014).

"Myriad Guidance," Miles & Stockbridge News Brief (Bryan Jones) (March 2014).

"A Primer On Alternative Fee Arrangements," Law360 (Matthew Wagman and Christopher Madaio) (September 2012).

"How To Deal With The Impending "First-To-File" Patent Law," Article (Eric King) (August 2012).

"An Intellectual Asset Management Program For SMEs," Law360 (Mark Catan and David Schaffer) (February 2012).

"Appearance Of Conflict In USPTO Disciplinary," Law360 (Cameron K. Weiffenbach) (November 2011).

"Why Good Patents Go Bad," Law360 (Mark Catan) (January 2010).

"The USPTO's Catchall Disciplinary Rules," Law360 (Cameron K. Weiffenbach) (December 2009).

"Beyond Affirmed: Will the Supreme Court Use In re Bilski to Restrict Patentable Subject Matter Even Further Than the Federal Circuit?," BNA's Patent, Trademark & Copyright Journal (James T. Carmichael and Stephen W. Aycock) (October 2009).

"The Customer Number: A Trap for the Unwary," Law360 (Cameron Weiffenbach) (September 2009).

"New USPTO Rules A Potential Minefield," Intellectual Property News Brief (Several Authors) (August 2007).

"Determining Obviousness Post KSR International CO. V. Teleflex Inc. et al.," Intellectual Property News Brief (Gianna J. Arnold and George W. Cox, Ph.D.) (April 2007).

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