Patent Prosecution and Counseling

We advise a broad range of companies, from emerging growth businesses to established global enterprises. Our team files more than 1,000 U.S. patent applications annually, manages hundreds of international filings, and represents over 1,000 active patent clients.

Patent Strategy and Portfolio Development

• Directed global patent strategy for a gene therapy collaboration portfolio comprising more than 250 patents and applications, identifying opportunities to extend exclusivity and optimize patent term.
• Managed a worldwide patent portfolio of more than 2,500 patents and applications across more than 30 countries for pharmaceutical programs spanning early-stage and commercial products.
• Advised life sciences companies on patent strategy for antibody, gene therapy, and diagnostic platforms, aligning portfolio development with product pipelines and commercialization goals.
• Assisted clients in developing global patent strategies to protect core technologies across the United States, Europe, and Asia.

Patent Preparation and Prosecution

Drafted and prosecuted U.S. and foreign patent applications across a broad range of technologies, securing hundreds of patent allowances worldwide.

• Secured patents supporting FDA-approved therapies and clinical-stage pharmaceutical products, including treatments for depression, glaucoma, and antiviral applications.
• Prepared and prosecuted patent applications in fields including semiconductors, wireless communications, AI, cloud systems, and medical devices.
• Obtained patents for technologies ranging from medical devices and implants to consumer products and advanced energy systems.

Global Patent Portfolio Management

Managed international patent portfolios and coordinated prosecution across multiple jurisdictions, including the United States, Europe, Japan, China, and Southeast Asia.

• Represented Asia-based clients, including Japanese and Chinese companies, in securing and managing U.S. patent protection and global IP strategies.
• Coordinated PCT filings and global prosecution strategies for technology and life sciences companies operating in multiple markets.
• Advised multinational clients on cross-border IP strategies, including export control considerations and international portfolio alignment.

Due Diligence and IP Transactions

Conducted IP due diligence and strategic counseling in connection with venture financings, public offerings, licensing transactions, and mergers and acquisitions.

• Supported major transactions including licensing and collaboration deals involving pharmaceutical and biotechnology companies.
• Represented Boston Scientific in intellectual property due diligence in connection with its acquisition of Cardiac Pathways.
• Advised clients on structuring and evaluating IP assets in connection with investment, acquisition, and commercialization strategies.

Post-Issuance Proceedings and Patent Challenges

Prepared and filed ex parte and inter partes reexamination requests challenging competitor patents, resulting in claim rejections and strategic advantages in related disputes.

• Successfully handled post-grant proceedings, including PTAB matters and European patent oppositions, resulting in confirmation or invalidation of key patent claims.
• Prosecuted reissue applications to expand claim coverage and strengthen patent protection against competitor products.
• Coordinated post-grant strategies aligned with litigation and enforcement objectives.

When should a company start thinking about patent protection?

Companies should begin considering patent protection as early as possible in the innovation process, ideally before public disclosure or commercialization. Early planning allows for more flexibility in protecting key aspects of the technology and aligning intellectual property with product and business strategy.

How do you determine what is worth patenting?

Not every idea should be patented. We work with clients to identify the innovations that are most valuable from a business perspective, focusing on technologies that support competitive differentiation, commercialization, and long-term strategic goals. This often includes evaluating technical advantages, market positioning, and potential design-around risks.

How should a patent portfolio align with business strategy?

A patent portfolio should reflect how a company intends to compete and grow. We help clients build portfolios that support product development, protect core functionality, and position the company for licensing, partnerships, and expansion into new markets. The goal is to create intellectual property that has practical business value, not just legal protection.

How do you build a patent portfolio that supports investment or acquisition?

Investors and acquirers look for portfolios that demonstrate clear ownership, defensibility, and alignment with the company’s core technology. We focus on building portfolios that are coherent, scalable, and tied to key products and markets, helping clients present intellectual property as a meaningful driver of enterprise value.

How do you manage global patent filings and coordination?

We regularly coordinate patent strategies across multiple jurisdictions, including the United States, Europe, and Asia Pacific. This includes managing foreign associates, aligning filing strategies across regions, and adapting to local requirements while maintaining a consistent global portfolio strategy.

How do you handle large or complex patent portfolios?

We manage portfolios ranging from early-stage filings to large, multi-jurisdictional portfolios involving thousands of patents and applications. Our approach focuses on organization, prioritization, and ongoing strategic review to ensure that portfolios remain aligned with business objectives as technologies and markets evolve.

How do patent prosecution and transactions or licensing work together?

Patent strategy plays a critical role in transactions and licensing. We work closely with our corporate and transactional teams to ensure that portfolios are structured to support due diligence, negotiations, and deal execution. This integrated approach helps maximize the value of intellectual property in financings, partnerships, and M&A.

How do you approach cost control in patent prosecution?

We emphasize thoughtful portfolio design, prioritization, and efficient execution. By aligning patent strategy with business goals and focusing resources on high-value assets, we help clients avoid unnecessary filings and manage costs over time while maintaining strong protection.

Do you use technology or AI to improve efficiency?

Yes. We have developed customized internal tools, including AI-enabled systems, to streamline aspects of the patent application and portfolio management process. These tools improve efficiency and consistency, while our attorneys and patent agents remain fully engaged in developing strategy and drafting applications, ensuring that quality and judgment are not compromised.

When should a company consider changing patent counsel?

Companies often revisit their patent counsel as their needs evolve. This may occur when portfolios grow in size or complexity, when costs become difficult to manage, or when a more integrated approach is needed to support transactions, licensing, or global strategy. In these situations, companies often look for counsel that can provide both technical depth and practical, efficient execution.