Patents & Utility Models

Ladas & Parry brings a well-rounded global perspective to its clients’ problems and concerns in the protection of useful inventions under the patent laws of every country around the world. Our team of skilled practitioners covers all areas of technology, including technical backgrounds in the electrical, computer, mechanical, chemical and biotechnology arts. Our attorneys also have backgrounds and experience in computer and telecommunications-related hardware and residential and cloud-based software, internet and e-commerce, business methods, and semiconductor devices.

We regularly coordinate and handle patent matters in every part of the world. Many of our practitioners are admitted to practice not only before the United States Patent and Trademark Office, but also before the European and British patent offices. Our global expertise has equipped us to explain to clients and take advantage of the differences between the patent practice in an applicant’s country of origin and the country where an applicant is seeking foreign patent protection or enforcement, and to therefore reduce the frustrations that are often felt when seeking or enforcing patent rights away from home. Moreover, we often apply knowledge of foreign practice to the drafting and prosecution of U.S. patents for preserving rights if patent protection is later sought overseas, and we assist in choosing the most cost-effective way to secure protection in a particular jurisdiction, for example by pruning applications to remove text that may be un-needed, or even in countries providing such options, selecting an alternative form of protection such as a utility model as the best way for doing this.

Our extensive and multifaceted experience in providing timely, expert advice and assistance in acquiring, licensing, enforcing and defending patents worldwide helps clients recognize and use intellectual property assets for realizing their business goals.

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+ Patent Prosecution

Our attorneys have extensive experience in the drafting and prosecution of patent applications, both domestically and internationally, in all areas of technology, including the electrical, computer, mechanical, chemical and biotechnology arts. With members admitted to practice before patent offices beyond the USPTO, offices located in Europe, and longstanding and carefully evaluated relationships with associates around the world, we frequently serve as the single point of contact for consistent and expert prosecution of related patent applications around the world and minimized duplication of effort that can otherwise occur.

Our group files over 5,000 patent applications worldwide on an annual basis.

+ Post Grant Challenges and Proceedings

Changes in U.S. patent law under the America Invents Act (AIA) have affected the ability of private parties to challenge issued patents. Post-Grant Review, Inter Partes Review and the Transitional Program for Covered Business Methods are some of the more recently established proceedings that may be used for challenging the validity of an issued patent in the United States. We assist clients in these proceedings as well as in other post-grant proceedings such as reexamination and reissue.

+ Strategy, Counseling and Licensing

Our international expertise in patent matters gives us a unique perspective to serve our clients, whether they are private inventors or Dow Jones 30 corporations. Globalization has put increasing demands on the patent profession and requires timely and expert advice on such disparate matters as for example:

  • Selection of countries in which to seek patent protection to obtain the best value for the money for a particular product or invention;
  • The relative strengths of protection for software or business method inventions in countries and/or regions such as the United States, Europe and Japan;
  • The usefulness of patent protection in a fast moving market;
  • The best form(s) of protection for a new product in a given country, whether utility patents, utility models, design patents, trade dress or copyright protection such as with software;
  • Advantages or disadvantages in a particular situation to use a patent treaty such as the PCT or the European Patent Convention.

We have extensive experience in preparing opinions on patentability, validity and infringement on U.S. and European patents. We also prepare Freedom to Operate Opinions which are useful for clients interested in introducing new products to market but who are unsure of whether there exists a serious risk of patent infringement.

Our global expertise is invaluable in the licensing arena where it is important to understand the strengths and weaknesses of a client’s global patent portfolio while at the same time being conscious of possible antitrust implications of certain license terms in the United States or the European Union.

+ European Patent Office Oppositions

We actively oppose and defend European patents before the European Patent Office, and also in advising on the strategic value of doing so or not doing so. It is in such proceedings that our understanding of the differences between the United States approach to obviousness and the European approach to inventive step across the breadth of a claim becomes particularly important.

+ Litigation and Enforcement

We work closely with our U.S. litigation team to enforce our clients’ patent rights and defend our clients’ business activities from third party claims against them.