Matters

  • Managed prosecution of extensive patent portfolios, including for a Fortune 200 company with thousands of active patent applications.
  • Drafted, filed, and prosecuted hundreds of utility patent applications through the United States Patent and Trademark Office (USPTO) and internationally via the Patent Cooperation Treaty (PCT).
  • Collaborate with foreign associate law firms to secure patent protection across multiple jurisdictions in North America, Europe, Asia, and South America.
  • Successfully defended a startup client in a series of ex parte reexaminations initiated by a Fortune 100 company, thus maintaining validity of multiple patents.
  • Successfully appealed and overturned dozens of USPTO rejections before the Patent Trial and Appeal Board (PTAB).
  • Filed and successfully prosecuted reissue patents to correct issues and broaden claim scope.
  • Negotiated an exclusive patent licensing agreement with a major university on behalf of a biotechnology startup client.
  • Conducted in-depth patent mining and portfolio mapping sessions with inventors and executives to identify untapped potential and close patent portfolio coverage gaps.
  • Performed IP due diligence analyses for acquisitions, licensing, standard-essential patent (SEP) compliance, and freedom to operate.
  • Provided litigation support for several high-stakes intellectual property disputes (e.g., patent infringement, trade secret misappropriation, and trademark infringement).