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Patents& Prosecution

Our attorneys excel at obtaining broad, affordable, and enforceable patents for clients across a spectrum of technologies that include inventions relating to medical devices, software and firmware, semiconductors, optical systems, fluidics, materials, and electrical systems.

Overview

Our Patents & Prosecution Practice Area attorneys excel at obtaining broad, affordable, and enforceable patents for clients across a spectrum of technologies that include inventions relating to medical devices, software and firmware, semiconductors, optical systems, fluidics, materials, and electrical systems. We have extensive legal and technical experience with a wide variety of clients––including Fortune 500 companies––in the aerospace, aviation, pharmaceutical, and automotive fields, giving us a thorough understanding of the intricacies of successfully extracting value from and commercializing patents.

From initial patent preparation and guiding the drafted patent through its rigorous US Patent and Trademark Office examination to enforcing against potential infringers, our attorneys utilize their cross-industry knowledge to deliver results aligning with the unique needs of each client.

Prosecution

Our attorneys and patent agents draft patents at a reasonable cost, always keeping our clients’ business goals in mind. We have substantial experience representing clients before the US Patent and Trademark Office, including offensive and defensive use of post-review proceedings. Additionally, our attorneys maintain relationships with numerous international law firms, ensuring our clients can obtain equally effective foreign patent protection.

Transactional

Our patents and prosecution attorneys use their deep industry knowledge and legal skills to conduct due diligence and other forms of investigations involved in the transfer by sale or licensing of patent, trade secret, and other rights, helping clients maximize the value of their intellectual property with sound portfolio management. We handle transactional matters such as preparing and negotiating patent license agreements, confidentiality agreements, know-how licenses, and IP and technology transfer agreements.

Litigation Support

We proactively counsel clients on avoiding court battles in patent enforcement matters, but, when necessary, we help clients prepare for litigation and aggressively defend them against third-party patents and infringement charges in federal courts across the country. We manage disputes involving a variety of technologies that include automotive parts and accessories, business systems, electronic instruments, medical devices, optical storage media, pharmaceuticals, sporting goods, and telecommunications equipment.

Representative Experience
  • Prepared and prosecuted a patent application directed to a method of electrospinning medical implants.

  • Prepared a provisional patent application and non-provisional patent application directed to an epicutaneous allergy treatment and immunization protocol as well as an associated device.  

  • Prepared a provisional patent application and non-provisional patent application directed to an electrospun medical device for dialysis patients to improve treatment.

  • Prepared a provisional patent application directed to a satellite configured to be launched into Earth's low orbit and controlled remotely or though pre-programmed instructions to capture and remove space debris from Earth's orbit.

  • Successfully enforced a client's federal trademark registration through a cease and desist letter and encouraged the infringer to immediately adopt a less-similar mark.

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We're Growing in DC!

We’re excited to announce Barclay Damon’s combination with Washington DC–based Shapiro, Lifschitz & Schram. SLS’s 10 lawyers, three paralegals, and four administrative staff will join Barclay Damon while maintaining their current office in DC’s central business district. Our clients will benefit from SLS’s corporate, real estate, finance, and construction litigation experience and national energy-industry profile, and their clients from our full range of services.

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