Turning an invention into an asset takes more than a bright idea. It requires protecting that invention with commercially relevant patent claims. Turning patents into useful and enforceable assets may require the development of a portfolio of patents providing strategic coverage. Patents can have a limited life compared to other IP assets so it’s essential to have thorough guidance when developing a patent portfolio.
Leveraging a patent or patent portfolio into an assertion program takes insights into a company’s business and how that business may benefit and/or be impacted. Will the assertion be against competitors, vendors, or unrelated companies? Is there risk to the company’s business interests, for instance, an assertion against a competitor may impact a customer. To be successful, assertion programs generally require a strong commitment to litigation. Is the company truly prepared to take its assertion to court? Is there a risk that the infringer may have a claim back against the company? Since each new suit is immediately picked up by the press, the company may want to consider a communication plan for the press and customers before launching a suit. A litigation team that understands business is needed to help a company create an assertion plan, that will maximize success and limit downside.
Sometimes, it is your success—through a product or service—that causes you to be the target of a patent assertion. If you are sued, to best protect your business, and the great ideas and products that make up that business, you need a seasoned litigation team that knows how to win at trial, but also understands that not every victory happens in court.
How We Can Help
We work with our clients to draft, file, and prosecute hundreds of utility and design applications annually from conception through product development and commercialization to build the strongest and broadest multinational patent portfolio. In addition, we counsel our clients on managing patent portfolios in order to curate and develop strong intellectual assets.
Blank Rome’s patent team provides prosecution across a variety of technologies, including: electrical, chemical, biological, pharmaceutical, mechanical, materials, and software, along with design and business method patents.
We consider our clients’ unique short- and long-term goals, the type of invention to be protected, competitive IP activity, and the strength of protection required, as well as the risk and opportunities inherent in their industry.
Enforcement and Defense
We take a proactive approach to identifying products that infringe on our clients’ patents, and develop strategies to remove those products from the marketplace. When seeking to enforce a patent, or when threatened with attempted enforcement by another party, our IP litigators seek opportunities for early resolution through understanding each clients’ business objectives and the best ways to limit their competitors’ options.
In the past five years, we have represented clients in more than 400 patent infringement suits and declaratory judgment actions. We move quickly to develop a comprehensive strategy that supports successful trial preparation, including aggressive motion practice and carefully crafted discovery and e-discovery strategies, but makes way for successful settlement as well.
We are adept at handling the most complex and challenging patent litigation in U.S. district courts and in the U.S. Court of Appeals for the Federal Circuit. Further, with offices in Houston, New York, Philadelphia, Wilmington, Los Angeles, and Washington, D.C., we are on the ground in the most active patent litigation docket jurisdictions in the country.
We also counsel and represent parties in inter partes reviews, reissue proceedings, and reexamination proceedings. Blank Rome is ranked in the top 50 firms for either petitioner or patent holder.
Our goal is to create a cost-effective strategy that effectively links our clients’ intellectual property to their company’s commercial strategy in order to maximize the value of their patent portfolio, whether that means protecting inventions or cross-licensing others, blocking competitors, deriving licensing income, or other strategic objectives.
What Sets Us Apart
Blank Rome has earned a reputation as one of the top law firms in intellectual property in the United States.
- 2021 U.S. News & World Report—Best Lawyers® (Woodward/White, Inc.) nationally ranks:
- Copyright Law
- Litigation – Intellectual Property
- Litigation – Patent
- Patent Law
- 2019 Chambers USA: ranked Blank Rome for Intellectual Property in Texas
- 2018 IAM Patent 1000 (Globe Business Media Group):
- Texas: highly recommended overall in the prosecution category, and was recognized in the categories of transactions and litigation
- D.C.: recommended in the prosecution and transactions categories, and recognized in the category of litigation
- 2017 IPR Intelligence Report (Patexia): Top 50 firm for Inter Partes Reviews.
- 2017 Managing IP – IP Stars (Euromoney Institutional Investor PLC): Recommended Intellectual Property Firm – Pennsylvania.