With the recent passage of the America Invents Act, patent law was substantially changed for the first time in nearly 60 years. Basic tenants of U.S. patent law were rearranged, and new procedures were introduced. The U.S. Patent and Trademark Office (USPTO) is still drafting new rules to comply with the revisions.
Venable attorneys are at the forefront in developing strategies for a new era of patent law. We listen carefully to our clients' goals, inventory their creative assets, identify the competition, outline a sound plan tailored to the client's needs, then implement that plan efficiently, while keeping in mind the shifting landscape.
A record of success for inventors and portfolios.
Led by a team of experienced patent attorney-scientists and engineers from a broad variety of technical disciplines, we have prepared and prosecuted tens of thousands of patents worldwide for U.S. and international clients.
We strive to obtain the broadest possible scope of claim coverage for our clients, while trying to reduce prosecution history estoppel. To ensure quality, we employ standard controls at the various stages in the life cycle of a patent application.
With these efforts to obtain high-quality patents for our clients, one might believe this leads to a lower allowance rate. On the contrary, Venable's historical allowance rate for U.S. patent applications is significantly greater than the allowance rate of the USPTO. In 2010 and 2011, our allowance rate was 76% and 78%, respectively – approximately 25% higher than the allowance rate for the USPTO.
We advise clients ranging from emerging technology companies, to universities, to large multinational organizations with complex patent portfolios that span the globe. In audits of their IP assets, we help our clients find hidden value, evaluate new technology, survey the competition for possible infringements and assess the patents of potential acquisition targets.
WE HAVE YOUR PATENT NEEDS COVERED
From idea, to application, to patent, worldwide.
We counsel clients from the initial step of evaluating an idea through every phase of writing and prosecuting patent applications. Our Washington, DC headquarters location facilitates the efficient prosecution of patent applications with USPTO examiners.
Our foreign filing group maintains an extensive network of overseas law firms that obtain protection for Venable clients around the world. The network also enables us to obtain protection for international clients who seek to protect their inventions in the United States.
EXTENSIVE EXPERIENCE AT EVERY STEP: FROM PATENT TO COMMERCIALIZATION
Overcoming obstacles at the USPTO.
A Web-search-engine company was having a difficult time with an examiner at the USPTO. It worked with two other law firms before calling Venable. We reviewed its filings, reviewed all the prior art, wrote new claims and personally interviewed the examiner. Our care and attention to detail coupled with our knowledge of patent prosecution and the inner workings of the USPTO put the company’s prosecution back on track. After the patent issued, the company gave Venable responsibility for its entire portfolio.
Building a portfolio from the ground up.
A venture capital concern sought counsel to help its companies in developing patent portfolios to protect their innovations. We audited the companies’ IP assets and designed and tailored individualized portfolio strategies for each company that captured and perfected unprotected innovations. We met with the companies monthly and developed their portfolios in the United States and around the world.
Repairing and managing a major portfolio.
A pharmaceutical company was struggling internally as well as with the USPTO on matters related to the complex tasks involved in managing more than 800 patents and 200 trademarks. We reviewed nearly 1,000 files, applied portfolio management best practices and took over the prosecution seamlessly.
Providing advice that pays for itself in savings.
Venable recently completed one component of a long-term engagement through which it guided a Forbes Top 100 Private Company’s research and development efforts to further penetrate its market in a very challenging economy. The efforts included both defensive and offensive patent counseling to ensure that the client’s efforts respected the rights of others while erecting barriers to entry for competitors. The efforts are expected to result in our client saving $19.6 million over the next five years.
Pursuing due diligence to help a client steer clear of a bad deal.
An air-vehicle manufacturer planned an acquisition that it believed would strengthen its technology portfolio. The company asked Venable to look at the target company’s patent portfolio. As we investigated the patents, we found problems related to validity. Based on our analysis, we recommended that the client reconsider the acquisition. The client took our advice and sidestepped a potentially poor investment.
With a deep bench of former patent examiners and attorneys with industry experience and advanced technical degrees, Venable is one of the nation’s leading patent law firms. Our patent prosecution work is reinforced by a strong corps of patent strategists and patent litigators skilled at advising clients on maximizing the value of their intellectual property portfolios.