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Patent Prosecution & Counseling

Miles & Stockbridge understands that intellectual property (IP) assets play an increasingly important role in our clients’ ability to achieve their strategic goals.  We offer a strong team of highly-skilled patent practitioners with experience and applied knowledge in all phases of the patent process, including prosecution of individual patent applications, litigation, and instituting and defending post-grant challenges of patents. Our lawyers have provided highly-effective prosecution and counseling services to our clients for many years.  The foundation of our success in 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 IP practice. We use our legal, technical, and business skills, in combination with uniquely-qualified specialized knowledge of the patent procurement and adjudication process, 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 clients 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 computer systems, computer software, electronic devices, semiconductors, medical devices, metallurgy, packaging materials, mechanical systems, agricultural chemistry, polymer chemistry, small molecule chemistry, genetic engineering, biotechnology, pharmaceuticals, biologics, and associated methods of manufacture.  We understand each client’s products and processes, no matter how complex. And our patent team includes lawyers who are intimately familiar with the United States Patent and Trademark Office (USPTO) processes — one of our members, for example, was formerly a USPTO Administrative Patent Judge who authored nearly 200 written opinions in patent cases. We understand the interaction between patent law and product technology, and that gives our clients a distinct advantage as we pursue their patent claims.

We are keenly aware that today’s economic conditions demand that our clients receive the maximum value for their investment in IP assets.  Our lawyers excel at aligning those assets with strategic business and product development directions so that valuable IP budget allocations are deployed in the most effective manner possible.  Ours is not a simple “wait for instructions and react” practice; in contrast, in many cases we are intrinsically involved with our clients’ management of their IP assets.  We have developed a strategic approach – employing Miles & Stockbridge’s database-driven Intellectual Property Decision Support system along with a web-based visibility and decision-support application -- which our clients have found useful to follow for accomplishing their business goals.  For example, we design and participate in cross-functional teams to integrate our clients’ functional disciplines into an IP management process which accommodates all stakeholders.  Examples of particular tasks include identifying third-party prior art, and forward-looking IP asset tracking and management including estimated lifecycle cost per asset for ongoing cost vs. benefit analysis.  Our IPDS includes dashboard summaries for ease of status and management, and our approach also includes the application of project management principles to managing the IP budget and controlling IP spend.  

Miles & Stockbridge’s IP lawyers understand that a strong patent prosecution team — being possessed of the highly-specialized knowledge required by the process of preparing and filing the patent application, and filing responses and amendments to the objections of the patent examiner — is the foundation to effective patent law counsel. The USPTO has specific and often complex rules about the content and examination of applications, because enforcement of patent rights, and defending our clients against allegations of infringement of others’ rights, such as inter partes review, reexamination, and infringement lawsuits frequently hinge on complicated actions undertaken during the prosecution process. Our lawyers include not just former USPTO examiners, but also former USPTO judges who are often engaged by other law firms and lawyers from many of the country’s top patent litigation firms -- to serve as experts on patent procedure.  We utilize our deep procedural knowledge to help clients draft and prosecute patent applications that withstand the most rigorous technical and legal challenge.

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, one of the services we offer is to perform patent searching for possible infringement conflicts before clients attempt to patent and introduce a new product or product family, and we 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 clients’ patents — and which occasionally may also show 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.