Patent Infringement / Non-Infringement Analysis

A comprehensive patent infringement analysis involves comparing each limitation of a claim with different aspects of a product, method or system. For infringement, a product, method or system must meet all limitations of the asserted claim either literally or under doctrine of equivalents. The United States patent system allows for designing-around a claim to encourage creativity and innovation. Companies design-around to avoid infringement.

Patent Validity / Invalidity Analysis

Patent validity / invalidity analysis involves analyzing patentability and enforceability of a patent in view of the prior art. An abstract idea, law of nature or natural phenomena cannot be patented. However, its application may get patent protection if it adds significantly more to it. It must also be novel, non-obvious and fully and particularly described. For a patent owner, knowing the strength of the patent is critical for effective pre-suit investigation and handle future challenges. On the other hand, an alleged infringer almost always attacks validity of a patent.

Freedom-to-Operate Opinions

Freedom to operate opinions (also sometimes referred to as market clearance or right-to-practice) are particularly important when launching a new product, process or service. It involves an analysis of issued patents and pending applications that the product, process or service may infringe.

Patent Search

Patent searches are helpful for inventors to check whether their invention is already covered by someone else’s patent or not. It involves a process similar to a patent infringement analysis, the difference being that the analysis is not limited to a previously identified patent, but involves searching for patents that may be infringed by the invention and then analyzing those patents.

Patent Landscape Analysis

Patent landscape provides an overview of patent activity and innovation in a technology or industry. It can be a great tool for research, development, policy, business or legal decision-making. Companies and organizations of all sizes may conduct a patent landscape analysis for a variety of reasons – R&D of new products, identifying potential opportunities for licensing, potential infringement risks, pre-market entry etc.

Patent litigation landscape is constantly changing, imposing heavy burden on companies including legal costs. Having experience in assisting clients on both sides – plaintiffs or defendants – we practice litigation strategies that are cost-effective to preempt and be ready for future challenges. We strategize early resolutions on disputes, while staying ready for the long fight, through: Settlement Negotiations, Early Motion to Dismiss, Jurisdictional Challenges, and Declaratory Judgment.

Successful monetization of new technologies requires a comprehensive strategy that includes a company’s market position, short-and-long term business goals, and the emerging and competitive technological landscape.  To that end, our attorneys focus on maximizing clients’ patent portfolio to best fit client’s business goals.

We also assist our clients develop a comprehensive IP strategy by integrating patents, trademark, copyright and trade secrets.

We work with reputable foreign IP counsel in Europe, Asia and South America to ensure our clients are effectively represented globally.

Licensing is a lucrative method to monetize IP assets (such as patents).  Not all inventors want to make or sell products or services.  Licensing allows inventors to profit from their invention by allowing others to use the invention in exchange of royalties from sales or other compensation.

In-licensing helps companies develop a product or service for which someone else owns the technology. Some companies prefer in-licensing to lower risks and costs associated with invention and early development of a product or service. Manufacturing companies utilize in-licensing for mass-market production of goods. Companies also use in-licensing to protect themselves from potential allegations of infringement if someone else owns the technology for a a product or service, or even a part of a product or service, that a company makes, uses, sells, offers to sell or imports.

Tech transactions are routine, yet crucial, aspect of research and development. Intellectual property plays a crucial role in corporate transaction matters, in both domestic and global markets.