Patents protect technological advancement. The following sections describe Ware, Fressola, Maguire & Barber LLP’s capabilities in securing patent rights, in designing approaches for exploiting those rights, and in devising approaches to avoid patent disputes with others.
R & D
We work in all major areas of technology, such as the electrical, computer, software, chemical, life-sciences and mechanical fields, to facilitate the identification and proper handling of nascent inventions. Our firm counsels clients on the treatment of technological developments at the threshold of the patent process, so that inventions are not disqualified from patent coverage by front-end oversights.
Our firm prepares and files patent applications for inventions having utility, design patent applications for ornamental design aspects of an article of manufacture, and provisional patent applications. A provisional patent application can be a less formal description of an invention than a regular utility patent application; it affords a client one year before deciding to invest in a regular utility patent application, while providing a priority filing date for the subject matter of the provisional application that can be relied upon in any later filed utility application in the US or in other countries. Prior to filing a patent application, we may also perform a limited search of the prior art, and based on what we find, give our opinion on whether the invention is patentable.
After a patent application is filed with a set of claims intended to protect the invention, we monitor the progress of the application through the United States Patent and Trademark Office (USPTO). In due time, we receive a communication from the USPTO, which may include a rejection of the claims. Typically, we respond by arguing for the patentability of the claims as originally filed, or by amending the claims and arguing for their patentability as amended.
If a patent issues, we remind the client when it is time to pay the periodic fees charged by the USPTO to maintain the patent.
Throughout the process of preparing and filing an application, and in turn, responding to communications from the USPTO regarding the application, it is our goal to be accessible and responsive to the needs of our clients.
Clients with a software invention (or independently-created software) may register a copyright on the corresponding code. Under certain circumstances a patent can be granted on what is in essence software — with claims directed to the process set out by the software and to an apparatus operative according to the process — so we may advise clients to file a patent application for the protection it can also offer. Our firm has prepared and filed patent applications for software implementing processes carried out in devices of all kinds, on standalone computers as well as on networks, and on networks of networks, including the Internet.
Life Science Inventions
A recently coalescing subject matter area in patent practice is “life sciences.” This sector is concerned with the application of disciplines such as biochemistry, chemistry, biology, botany, zoology, microbiology and physiology to the solution of problems relating to all aspects of human disease and translation to patients. We are experienced across the spectrum of IP-related life science endeavor, including:
- patent procurement;
- patent portfolio management;
- strategic counseling;
- opinion work regarding patent infringement or validity issues;
- agreement work in connection with generic drug manufacture and marketing or collaborative R&D as well as asset-acquisition, merger or licensing transactions;
- due diligence in support of the foregoing;
- litigation in the courts along with administrative contests in the USPTO; and
- preservation of trade secrets.
Freedom to Operate in the Marketplace
We are often asked to provide an analysis as to whether any patents currently in force and owned by others would exclude the client from making a product or using a process in which the client is interested. Commensurate with the circumstances, this may be in the nature of a survey of multiple patents called a right-to-use study, or a more detailed evaluation called a non-infringement opinion. To provide a right-to-use analysis, we perform a search of patents in force, examine those that are potentially problematic, and prepare an opinion based on the relevance of the patents we find. To provide a non-infringement opinion, we give our views on whether a particular patent owned by another excludes the client from making or using a product or process of interest. Thus, the reasoning used in arriving at the opinion is set out in sufficient detail that the client can readily rely on it if they have to defend against a charge of willful infringement.
Developing a Strategy
Because obtaining a patent can require a significant investment of time and money, and because there are many ways to protect an invention, it is usually advisable for us to assist a client in formulating a patenting strategy. In some cases, an invention is better protected as a trade secret; in other cases, it is better to obtain a patent. But even if a patent is the instrument of choice, it is often advisable that the client decide on the overall goal to be achieved with its invention. We counsel our clients to decide on both long-term and short-term patenting strategies to ensure that the patent protection applied for is in fact what is wanted.
We work with a network of attorneys abroad to obtain patent protection in countries around the world. Patents in foreign countries can be obtained by directly filing an application in the foreign country or by filing an International Application (also called a PCT Application). A PCT Application allows a client to defer paying filing fees in the different countries where it contemplates proceeding and to secure a non-binding search and examination opinion as to patentability from a government patent office. When patents are granted, we attend to maintenance of those rights by payment of requisite annuities at the prescribed times.
For More Information
We welcome you to contact Ware, Fressola, Maguire & Barber for more information about our patent law practice.