PATENT PROSECUTION QUICK FACTS

Top 80 Patent Firm
Intellectual Property Today, 2011

More than 50 attorneys, many of whom have Ph.D.s or other advanced science degrees

More than 30 registered patent attorneys and patent agents

 

PRACTICE FOCUS

Commercialization

Counseling

Design-around counseling

Due diligence for transactions

Foreign filings

Freedom-to-use opinions

Infringement analysis

Intellectual property

Intellectual property audits

Interferences

Licensing and divestments

Patent infringement opinions

Patent litigation

Patent prosecution

Patent validity opinions

Patentability evaluations

Patentability searches

Portfolio evaluations

Portfolio management

Right-to-use opinions

 

INDUSTRY FOCUS

Automotive

Biotechnology

Consumer products

E-commerce

Electro-optical devices

Financial services

Homeland security

Microprocessors

Nanotechnology

Packaging

Pharmaceuticals

Semiconductors

Software

VoIP and wireless

 

SCIENCE AND TECHNICAL DEGREES

Applied molecular biology

Astronomy-physics

Biochemistry

Biological sciences

Chemical engineering

Chemistry

Computer engineering

Computer science

Economics

Electrical engineering

Management information

Mathematics

Mechanical engineering

Microbiology

Molecular biology

Molecular genetics

Molecular parasitology

Natural science

Organic chemistry

Physics

 
Patent Prosecution
the rules are changing


These are uncertain times in patent law. Court decisions are striking at the heart of the patent statute—including the criteria for determining obviousness and patentable subject matter. The U.S. Patent and Trademark Office (USPTO) has radically decreased allowance rates and overhauled its rules affecting claims and appeals. And on Capitol Hill, debates rage on fundamental changes to patent statutes that have been in place for nearly 60 years.

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.

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.

Venable's historical allowance rate for U.S. patent applications is significantly greater than the allowance rate of the U.S. Patent and Trademark Office.  In 2010, our allowance rate was 76%—25% higher than the allowance rate for the U.S. Patent and Trademark Office.

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

Patent Prosecution

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

Patent Prosecution Experience image

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.

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.

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.

With a deep bench of former patent examiners and attorneys with industry experience and advanced technical degrees, Venable has long been 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.