Patent Prosecution

Overview

Turning an invention into an asset takes more than a bright idea. It requires protecting that invention with commercially relevant patent claims and making it a part of a robust patent portfolio.

Blank Rome’s patent team provides turnkey global patent prosecution solutions for clients of all sizes—whether it is a start-up company filing its first patent application upon which it will build its fortune or a Fortune 100 multinational with a portfolio of thousands of multidiscipline patents.

Blank Rome invests the time up front understanding our client’s business, analyzing its current position in the marketplace, and anticipating future needs. Our objective is to develop a patent prosecution strategy that is tailored to best fit the needs of our clients, whether it is blocking competitors, cross-licensing others in the marketplace, deriving licensing income, or other business goals.

While we are often hired to serve as a company’s full-service, external IP department, we also collaborate closely with in-house IP teams to manage patent portfolios and help develop in-house policies and procedures that may be used to cultivate a company’s inventions and proprietary “know-how,” turning them into long-term strategic intellectual property assets.

How We Can Help

Blank Rome has a deep bench of 38 patent prosecutors who have the technical, legal, and business acumen to secure patents that are both strong and enforceable.

We draft, file, and prosecute more than 1,600 U.S and foreign patent applications annually. And, with more than 28,000 patents under our active management, we know the ins-and-outs of diverse portfolios, including those with design patents and utility patents in a wide array of technical disciplines, including electrical; chemical; biological; pharmaceutical and biotech; mechanical; materials; software; and business methods.

In order to fully maximize our clients’ investments, our approach is to prepare and prosecute high quality patent applications that describe all embodiments of our clients’ inventions at strategically telescoping levels of detail. Having a rich and fully-realized description of our clients’ inventions in their patent specifications leads to reduced pendency times before the U.S. Patent & Trademark Office (“USPTO”) and arms our patent attorneys and agents with the details they need to overcome the growing challenges of patent eligible subject matter (35 U.S.C. 101) and enablement (35 U.S.C. 112) rejections at the USPTO. Our team also takes advantage of the USPTO’s innovative programs to further prosecution in an efficient and timely manner, including First Action Interview Program, After Final Consideration Program, and Track One prioritized examination. These tools have proven successful in securing strong patent rights in an efficient manner. By strategically seeking the correct scope of coverage for our clients’ inventions, their patents are also more immune to invalidity challenges after issuance, e.g., via inter partes review (“IPR”) proceedings filed by competitors or opponents in federal district court litigation.

We do not just prosecute patents in the first instance, but handle all forms of post-grant proceedings for our clients as well:

  • IPRs to determine patentability of claims in issued patents
  • reissue proceedings to correct errors in the coverage of issued patents
  • reexamination proceedings to reconsider the patentability of issued patents

What Sets Us Apart

  • 50 attorneys and patent agents registered to practice before the USPTO, 38 actively prosecuting patents
  • 7 former patent examiners
  • 13 attorneys and patent agents with doctorate and advanced degrees in the natural, applied, and engineering sciences
  • 13 attorneys and patent agents with in-house experience
  • Working with emerging technologies, such as blockchain, artificial intelligence (“AI”), deep learning, and robotics
  • Supported by talented IP professionals and systems to ensure that all applications are filed, prosecuted, and defended in a cost-effective manner

Blank Rome has earned a reputation as one of the top law firms in intellectual property in the United States.

  • 2019 U.S. News & World Report—Best Lawyers (Woodward/White, Inc.) nationally ranked us Tier 2 for Patent Law.
  • 2018 Chambers USA: ranked Blank Rome for Intellectual Property in Texas.
  • 2018 IAM Patent 1000 (Globe Business Media Group) listed Blank Rome in Texas as highly recommended overall in the prosecution category, and was recognized in the categories of transactions and litigation and in D.C. as recommended in the prosecution and transactions categories, and recognized in the category of litigation.
  • 2017 IPR Intelligence Report (Patexia) ranked Blank Rome as a Top 50 firm for Inter Partes Reviews
  • 2017 Managing IP – IP Stars (Euromoney Institutional Investor PLC) lists Blank Rome as a Recommended Intellectual Property Firm – Pennsylvania.

Experience

  • Manage the worldwide patent portfolio of Amphenol, a major producer of electronic and fiber optic connectors, cable and interconnect systems such as coaxial cables. 
  • Manage the worldwide patent portfolio of Methode Electronics, a major designer, manufacturer, and marketer of component devices and sub-systems worldwide for Original Equipment Manufacturers on information processing and networking equipment, voice and data communications systems, consumer electronics, automobiles, aerospace vehicles, and industrial equipment.  Products employ electrical, electronic, and optoelectronic technologies such as sensors, interconnects, and controls. 
  • Manage the worldwide patent portfolio of Arthrex, a global medical device company and leader in new product development and medical education in orthopaedics. 
  • Manage the patent portfolio of Dominion Resources, a power and energy company headquartered in Richmond, Virginia, and one of the country’s largest utilities.
  • Manage an extensive U.S. and foreign patent portfolio for District of Columbia Sewer and Water Authority. DC Water collaborates with many research organizations throughout the world, and has developed innovative aerobic and anaerobic biotechnologies for removing nitrogen and other nutrients from wastewater.
  • Act as patent prosecution counsel to Cirrus Logic International Semiconductor, a major semiconductor supplier whose audio processors and converters feature in many professional audio and consumer entertainment products.
  • Acts as patent prosecution counsel to First Solar, an American photovoltaic manufacturer of solar panels, and a provider of utility-scale solar power plants.
  • Acts as patent prosecution counsel to Glatfelter, a multibillion dollar global manufacturer of specialty papers and engineered products.
  • Act as U.S. patent prosecution counsel for Japan-based Yamaha Music. The technologies relate to instrumental music, digital signal processing, silencers for brass instruments, electronic transducers for pianos, bows for violins, synthetic materials for clarinets, etc.
  • Serves as U.S. patent prosecution and enforcement counsel for Alaska Structures, a leading supplier of rapid-deployed fabric shelters and HVAC systems for military and non-governmental operations
  • Handle several portfolios of prosecution and IP licensing work for an American multinational technology company related to patents involving software algorithms, gesture recognition, displays batteries, power supplies, message auto correction, and improvements to user experience.

Team

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