Patent Prosecution and Counseling

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.

Venable attorneys are leaders in developing strategies for this new era of patent law. 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 also provide strategic counseling, freedom-to-operate analysis, licensing, due diligence, patent strategy, agreements, and global patent landscape searches for life sciences, information technology, and other industries.

Beyond prosecution, our PTO Contested Proceedings Group is built around seasoned patent litigations and is dedicated to representing both patent challengers and patent owners before the Patent Trial and Appeal Board (PTAB).

A Record of Success for Inventors and Portfolios

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. Venable's historical issue rate for U.S. patent applications is significantly greater than the allowance rate of the USPTO.

Our clients include emerging technology companies, universities, and large multinational organizations with complex patent portfolios that span the globe. In audits of their IP assets, we help them find hidden value, evaluate new technology, survey the competition for possible infringements, and assess the patents of potential acquisition targets.

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.

Overcoming Obstacles at the USPTO

A Web search-engine company was having a difficult time with an examiner at the USPTO. The company 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 was issued, this company gave Venable responsibility for its entire portfolio.

Building a Portfolio from the Ground up

A venture capital firm 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.

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

Client Focus

  • Artificial Intelligence
  • Automotive
  • Biotechnology
  • Blockchain
  • Consumer products
  • E-commerce
  • Electro-optical devices
  • Financial services
  • Homeland security
  • Medical devices
  • Microprocessors
  • Nanotechnology
  • Packaging
  • Pharmaceuticals
  • Semiconductors
  • Software
  • Toys and games
  • 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


  • Managing Intellectual Property 
    • IP Litigation, 2013 – 2020
    • Copyright, 2013 – 2021
    • Trademark, 2013 – 2020, 2022
    • Patent Prosecution, 2013 – 2021
  • IAM Patent 1000, The World's Leading Patent Professionals, 2012 – 2021
  • Chambers USA
    • Intellectual Property: Patent Prosecution, District of Columbia, 2016 – 2023
    • Intellectual Property: Patent, New York, 2019 – 2023
  • U.S. News-Best Lawyers
    • Firm of the Year, Technology Law, 2017, 2022
    • Best Law Firms, Litigation – Patent (Tier 1), Washington, DC, 2012 – 2020