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Patent Prosecution, Litigation and Portfolio Management Print PDF

Overview

PIB Law’s Patent Group is made up of skilled patent experts that collaborate with clients on the identification, prosecution, and enforcement of their intellectual property – specifically, their domestic and international patents.  Our team works integrally with both in-house counsel and inventors to masterfully craft and prosecute patent applications, adhering to the clients’ intellectual property objectives, and genuinely capturing the best scope of their inventions.  We also counsel clients on patent litigation strategies, including potential risks and costs.  Our patent practitioners’ specific knowledge of science and technology, combined with their real-world experience, allow PIB Law to best serve our clients efficiently and successfully.

Patent Prosecution and Portfolio Management

PIB Law’s Patent Group manages clients’ domestic and foreign patent portfolios for clients of all sizes, and for many different technologies.  PIB’s patent expertise includes:

  • Drafting, filing, prosecuting, and maintaining U.S. patent applications with the U.S. Patent & Trademark Office (“USPTO”);
  • Conducting prior art searches and preparing patentability reports;
  • International prosecution management, including filing Patent Cooperation Treaty (“PCT”) applications with the World Intellectual Property Organization (“WIPO”), and other direct foreign patent filings; and
  • Portfolio management, including assisting in key decisions regarding patent filings, both in terms of our clients’ individual protection strategy and budgetary concerns.

Patent Litigation

PIB Law’s Patent Group provides intellectual property litigation expertise in complex areas of patent law, as well as for complex technologies.

PIB Law’s attorneys represent clients in all aspects of patent litigation, including:

  • Patent infringement in federal court districts nationwide;
  • Patent reexamination proceedings, including filing petitions with the Patent Trial and Appeal Board (“PTAB”) for Inter-Partes Review (“IPR”), Post Grant Review (“PGR”), or Covered Business Method (“CBM”), and participating in those PTAB proceedings;
  • Litigation support to provide technical expertise to client litigation teams;
  • Conducting investigations into third party patent infringement on behalf of clients, and providing invaluable assistance and guidance with policing and protecting clients’ intellectual property; and
  • Defensive strategies against non-practicing entities (“NPEs”).

PIB Law also acts as business counselors, providing intellectual property advice and counsel on the prevention of third party infringement claims and the avoidance of litigation.  We provide critical counsel at all stages of an intellectual property dispute, allowing us to place our clients in the best position possible to obtain a favorable result. 

Due Diligence and Opinions

PIB Law’s Patent Group provides due diligence and opinion counsel for intellectual property matters.  PIB’s Patent Group are particularly skilled in:

  • Performing Due Diligence for patent transfer, valuation, and general patent-related activities for merger or acquisition (“M&A”) transactions;
  • Preparing Freedom to Operate (“FTO”) opinions;
  • Preparing Infringement or Validity opinions;
  • Preparing Design-Around opinions or patent “fence/landscape” reports; and
  • Tracking patent asset ownership and status.

Patent Transactional Services

PIB Law’s Patent Group provides transactional patent services to patent owners, purchasers, licensors, licensees, and assignees.

The PIB Patent Group provides clients patent transactional services including negotiating and drafting:

  • Patent assignments;
  • Patent licensing agreements;
  • Patent maintenance; and
  • Patent transfer, including the sale of clients’ patents as well as the acquisition of third-party patent portfolios.