Patent Counseling and Transactions

Strategic Patent Guidance for Innovation and Business Development

Patents protect the technical innovations that differentiate products, create competitive advantage, and drive business value. But patents are complex legal instruments requiring strategic thinking to maximize their benefit. This practice provides patent counseling that helps clients identify what to protect, how to protect it, and how to leverage patent rights in business operations and transactions. Representation spans technology sectors from software and electronics to life sciences and manufacturing.

Innovation Assessment and Protection Strategy

Effective patent protection begins with understanding what innovations warrant investment. Counsel works with inventors and R&D teams to identify potentially patentable developments, evaluate commercial significance and competitive impact, assess patentability including novelty and non-obviousness, consider trade secret protection as an alternative where appropriate, and prioritize protection resources based on business value. Strategic assessment ensures patent investments align with business objectives rather than accumulating registrations without purpose.

Freedom to Operate Analysis

Before launching products or implementing processes, companies need to understand whether they risk infringing third-party patents. Freedom to operate analysis involves searching for relevant patents, analyzing claim scope and potential applicability to client activities, evaluating validity and enforceability of identified patents, assessing infringement risk levels, and developing strategies to address identified risks. When potential conflicts are identified, counsel advises on design-around options, licensing opportunities, and risk management approaches. Proactive FTO analysis prevents costly enforcement actions and enables confident business decisions.

Patentability and Prior Art Analysis

Before investing in patent prosecution, clients benefit from thorough analysis of patentability. Prior art searches identify existing patents, publications, and public uses that may affect patentability. Patentability opinions evaluate novelty and non-obviousness in light of identified prior art, assess potential claim scope, and provide prosecution recommendations. Understanding the prior art landscape enables informed decisions about where to invest prosecution resources and how to position applications for success.

Patent Landscape and Competitive Analysis

Understanding the broader patent environment provides strategic context for both offensive and defensive planning. Patent landscape studies map protection across technology areas, identifying white space opportunities and heavily patented zones. Competitive analysis examines competitors' patent positions, filing trends, and portfolio strength. Technology monitoring tracks new filings in relevant areas. Landscape intelligence informs R&D direction, acquisition targets, and partnership opportunities.

Opinion Letters and Due Diligence

Patent opinions provide formal legal analysis supporting business decisions and managing risk. Non-infringement opinions analyze whether specific activities would infringe identified patents. Invalidity opinions assess whether asserted patents are likely valid and enforceable. Freedom to operate opinions comprehensively survey relevant patent landscape. Opinions prepared with appropriate rigor can demonstrate good faith to avoid willful infringement findings and satisfy investor or lender due diligence requirements. Counsel provides opinion work meeting the standards necessary for legitimate reliance.

Patent Transactions

Patents are valuable assets that can be bought, sold, licensed, and used as collateral. Transaction support includes patent due diligence examining ownership, scope, validity, and encumbrances of patent assets. License negotiation structures terms that balance licensor and licensee interests. Assignment documentation ensures proper transfer of patent rights. Representations and warranties allocate risk appropriately. Understanding both patent law and transaction practice enables effective support for patent-focused deals.

Post-Grant Proceedings Strategy

The Patent Trial and Appeal Board provides mechanisms for challenging patent validity outside district court litigation. Inter partes review, post-grant review, and covered business method review each have distinct requirements and strategic considerations. Counsel advises on whether to initiate PTAB proceedings against threatening patents, defends client patents against petitions, and coordinates PTAB strategy with district court litigation where both are pending.

International Patent Coordination

Patent rights are territorial, requiring separate protection in each country of interest. International patent strategy addresses which countries warrant filing based on business activities and competitive concerns, Paris Convention and PCT filing strategies, coordination with foreign counsel, and cost management across large international portfolios. Strategic international coordination ensures global protection appropriate to business needs while managing costs.