Patent

Intangible Assets


All of Blank Rome’s patent attorneys are registered to practice before the U.S. Patent and Trademark Office.  All hold bachelor’s and advanced degrees in chemical, mechanical, electrical, environmental, or nuclear engineering, or in physics or life sciences.  Through education and experience, our attorneys are equipped to handle technologies in many industries, including emerging areas such as biotechnology, pharmaceuticals, semiconductors, and electronics.

We represent clients in every phase of the patent application process:  from initial consultations with the inventor and prior-art searches through drafting of the specifications and claims, filing of the application, meeting with the patent examiner, responding to U.S. Patent and Trademark Office (PTO) actions and, if necessary, appealing such actions before the PTO’s Board of Patent Appeals and Interferences, the U.S. District Court for the District of Columbia, and the Court of Appeals for the Federal Circuit.  Our representation of clients also includes:

Patent Inter Partes Review.  Blank Rome counsels and represents parties in patent inter partes reviews conducted by the USPTO to determine patentability of claims in issued patents. 

Patent Reissues.  Blank Rome counsels and represent clients in connection with reissue proceedings conducted by the PTO to correct errors in the coverage of issued patents.

Patent Reexaminations.  The Firm provides counseling and representation with respect to reexamination proceedings conducted by the PTO to reconsider the patentability of the subject matter of issued patents in light of prior art not considered by the examiner during the original application process.

Infringement Studies and Validity Opinions.  We conduct analyses to determine whether a given article or process may infringe the claims of a patent, and provide opinions regarding patent validity or the patentability of subject matter proposed for patenting.  Blank Rome's activities in this area include thorough searches for relevant prior art.

Foreign Patent Prosecution, Litigation, and Licensing.  Through an international network of associated firms, we assist clients in obtaining patents in all countries that afford patent protection, and in dealing with infringement suits and other patent matters that arise in those countries.  In particular, Blank Rome regularly assists clients obtaining patents in the European Union and the Pacific Rim.

Select Engagements

  • Represented company which designs, manufactures, and markets electronic stimulation and bone growth devices used in the electronic stimulation of muscles and joints for rehabilitation, pain relief, and other purposes.  We have represented this company from their very first patent application, and they now have scores of patents and applications filed around the world.  Blank Rome is involved in all aspects of developing and implementing their patent strategy, including investigating potential enforcement actions.  Representative patents include non-invasive medical treatment devices and the software that controls the operation of those devices.
  • Provided ongoing patent advice and prosecuted numerous patents for a university’s physical science and life science programs.  Representative patents include imaging systems, non-invasive medical testing and diagnostic systems, as well as the software that controls the operation of those systems.  Blank Rome secured patent protection for technology, which combines high-image quality with high-speed halftone rendering.  Blank Rome also procured patent protection for technology, which is found in state-of-the-art laser vision-correction systems. 
  • Provided ongoing patent advice and prosecuted numerous patents for company which designs, manufactures, and markets component devices and subsystems worldwide for original equipment manufacturers (OEM) of information processing and networking equipment, voice and data communications systems, consumer electronics, automobiles, aerospace vehicles, and industrial equipment, including patent applications for software relating to process control and design control in manufacturing.  Products employ electrical, electronic, and optoelectronic technologies such as sensors, interconnects, and controls. 
  • Provided intellectual property advice and prosecuted numerous patents for a patent foundation in the field of analytical chemistry, particularly microfluidics. Those miniaturized analysis systems operate on microscaled structures engineered on a microchip and have application in clinical and forensic sciences. The technology is conducive to integration of different functions on a single microchip. For example, DNA sample preparation, purification, and PCR amplification can be integrated on a single microchip for rapid, low-volume DNA analysis.
  • Represented one of the largest manufacturers of access catheters in the world, with facilities in the United States and internationally in patent and trademark procurement, opinion, and litigation matters.

Patent Litigation

Blank Rome’s patent litigation attorneys have represented numerous clients in infringement suits and declaratory judgment actions, both on the patent enforcement and defense sides.  All of Blank Rome’s patent attorneys are registered to practice before the U.S. Patent and Trademark Office (PTO) and hold bachelor's and advanced degrees in chemical, mechanical, electrical, environmental, or nuclear engineering, or in physics or life sciences

Select Engagements

  • Organization of greenkeepers, in patent-interference proceeding and related appeal to the Federal Circuit in case involving rights to patent on nonmetallic golf cleats used by entire golf-shoe industry.
  • Manufacturer of secure and specialized systems for satellite, avionics, and marine communications, in an arbitration proceeding in which a scientist sought damages in excess of $175 million, contending, among other things, that the company, to which he had transferred the rights to certain patents, had failed to exploit his new technology, thereby reducing his royalties.
  • Successfully represent clients in litigation involving the sales and income tax treatment of the sale and purchase of software programs—both canned or pre-written software and custom software.
  • Software and billing, customer care, and telemanagement services company, in the prosecution of a series of software patent infringement cases, reaching $50 million in favorable settlements.
  • Producer and distributor of dietary products in plaintiff patent infringement litigation regarding chromium picolinate and methods-of-use claim.
  • Seller of vitamin and mineral feed supplement in the patent application preparation and prosecution related to ranitidine formulation and in clearance opinion work related to tacrolimus and epoprostenol.
  • Developer of computer-aided detection software for mammography applications in a vigorously contested patent infringement action involving CAD analysis, user interface, and display for mammography systems. The case settled before trial, with a very favorable result for our client.
  • Research and development company responsible for technology transfer from Israel's leading center of research and graduate education in an action to review decision of U.S. PTO in interference proceeding involving rights to TNF binding proteins.
  • Global designer and manufacturer of automotive safety systems and components in an action for patent infringement involving gas-generating composition for automobile airbags.  Settled after hearing before decision.
  • Manufacturer of art supplies in an action for patent infringement involving art product.  Settled after decision in hearing adopting client’s claim construction.

Pharmaceutical Patent Practice

Blank Rome's patent litigators have considerable knowledge and experience with a variety of legal issues affecting generic companies, including representation in Abbreviated New Drug Application (ANDA) litigation following a paragraph IV certification.  Blank Rome's capabilities include the following:

  • Identification of potential targets for paragraph IV certification, including analysis of Orange Book patent prosecution history and analysis of generic competition for near-term paragraph IV submissions
  • Rendering of noninfringement, invalidity, and freedom-to-operate opinions with respect to the paragraph IV target selection as well as continued monitoring of generic competition and potential late-listed patents
  • First-chair trial and litigation experience in pharmaceutical patent cases in federal courts throughout the United States

Through our affiliations with other professional organizations, we also provide economic and technical analysis to determine market viability of particular projects.

Select Engagement

  • Defended a manufacturing and marketing company of specialty prescription pharmaceutical products as a generic drug manufacturer in several patent infringement actions, including multidistrict litigation commenced by a major pharmaceutical manufacturer against nine generic drug manufacturers.

Chemical Patent Practice

Blank Rome's patent litigators have considerable knowledge and experience with a variety of legal issues involved in managing chemical patent portfolios.  Our diverse technical backgrounds and experiences help us to better understand complex chemistries and highly technical engineering issues. 

Select Engagements

  • Oil company against another oil company in patent infringement litigation in Wilmington, Delaware, federal court involving a $5–10 million claim relating to intellectual property involved in oil refinery “cracking” processes.
  • Provided ongoing patent advice and prosecuted numerous patents for leading developer, designer, manufacturer, marketer and distributor of copper, aluminum, and fiber-optic wire and cable products for the communications, energy, industrial, and specialty markets.

ITC/Customs Enforcement of Patents 

As part of its international trade practice, Blank Rome counsels and represents clients in international trade investigations and enforcement actions.  Our attorneys further assist clients seeking the issuance of exclusion orders enforced by the U.S. Customs Service against infringing imported merchandise. Blank Rome has handled more than 20 cases before the International Trade Commission, both complainant and respondents, involving the enforcement of patent rights against products being imported into the United States, including successful representation of a complainant resulting in the ITC issuing the first temporary exclusion order under Section 337.

We have initiated or defended against International Trade Commission Tariff Act investigations involving registered and common law trademarks, proprietary trade dress, patents, and copyrights.  We provide counseling and representation before the U.S. Customs Service against infringing imported merchandise, as well as investigations to determine whether such remedies should be revoked or modified.  In addition, Blank Rome has particular experience advising clients on the North American Free Trade Agreement, the accord on Trade Related Aspects of Intellectual Property Rights, and the Customs Modernization Act.



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