Patent

Overview

Our patent professionals work with clients ranging from early-stage start-ups to world-leading brands to analyze, prepare, protect, and monetize their inventions.

We have over 90 professionals with technical expertise in the mechanical, electrical, computer, life sciences, and chemical arts. Included in this group are lawyers, agents, scientists, and engineers assembled into leveraged client service teams. Through this model, we provide the best possible technical and legal service within each client’s budget. Additionally, with such a large group of technical professionals, we are able to go deeper into each discipline to best match our clients’ own professionals.

Patent Portfolio Management

Clients benefit from our strategic management of patent portfolios. We work closely with stakeholders to provide the prior art analysis needed to make informed business decisions on whether to pursue patent protection, and whether there are risks associated with taking the invention to market. We are keenly aware of the way in which each individual patent application fits into the client’s overall portfolio and strategy.

Our services also include monitoring and analyzing competitor patents and patent portfolios to add a forward-looking, proactive piece to the portfolio management strategy. In the modern competitive patent landscape, it is more important than ever to monitor and quickly adapt to the patents and pending applications of your competitors. Our time-tested patent monitoring solutions, combined with the latest tools and technology, are primed to help clients move forward into the new patent law era.

No portfolio management approach would be complete without the ability to manage and maintain the valuable portfolio of granted patents. Michael Best provides a flexible range of post-grant services. We can work closely with all of the major annuity service firms to seamlessly transition responsibility for maintenance fees and annuities after grant. Alternatively, we can retain responsibility in-house and work directly with clients to ensure that ongoing annuities and maintenance fees are systematically evaluated and timely paid.

Post-Grant Capabilities

Michael Best has the experience and resources necessary to successfully litigate in inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) proceedings, and has achieved successful outcomes for petitioners and patent owners in a number of IPR proceedings and concurrent litigation. We also have experience with other post-issuance proceedings, including derivation proceedings, supplemental examination, and ex parte reexamination.

Accused infringers and patent owners alike need counsel who can not only navigate through these proceedings and rules effectively, but also handle any related litigation involving the same patents. Michael Best has attorneys and other professionals who are experienced in Patent Office dispute proceedings and in district court patent litigation; we routinely assemble teams that achieve our clients’ goals in both forums. In addition, our deep bench of patent prosecutors, engineers, and scientists ensures that each team has substantial technical and prosecution experience.

We stay abreast of the latest developments in post-grant practice, and we help clients stay up to date through our newsletter At the Board and our webinars and live events.

Global Patent Protection

The trend toward a global economy makes it more important than ever to protect your inventions around the world. The challenge is to navigate the laws of each country in order to attain the best possible outcome.

Michael Best maintains close affiliations with law firms around the world to provide the best possible representation outside the United States. As a member of Lex Mundi, an association of independent law firms, we provide our clients with access to a full range of legal services and in-depth local market knowledge in more than 100 countries. We also actively monitor changes in foreign patent law.

Patent Engineer and Scientist Program

Michael Best was the first firm in Wisconsin — and one of the first law firms in the Midwest — to establish a robust Patent Engineer and Scientist Program more than 15 years ago. Since then, we have attracted a highly qualified group of professionals from industry and academia, and trained them in patent prosecution and other intellectual property matters.

These engineers and scientists are versed in the latest technologies and technical developments, and they handle all aspects of patent drafting and prosecution. They also assist our lawyers in conducting patentability and clearance investigations and provide technical support in patent litigation matters, including PTO proceedings such as inter partes reviews and ex parte reexaminations — all at significant savings to our clients.

Agreements and Technology Transfer

Our attorneys have the experience and technical knowledge to assist our clients in handling a wide array of agreements in fields such as technology transfer, patent and technology licensing, and software. Our professionals are active members of the Association of University of Technology Managers and the Licensing Executives Society, and regularly speak and comment on licensing issues.

We represent a variety of licensing clients including Fortune 500 companies, start-ups and emerging ventures, and more than twenty universities nationwide. We regularly counsel these clients on strategies designed to maximize the value of their properties through licensing. We assist emerging company licensees in finding professional management and in obtaining third-party financing.

We also counsel clients and draft agreements in computer-related areas such as software development, SAAS, EULA, open source, software escrow, web development, and many more.

Patent Litigation

Our patent litigators are skilled and experienced trial lawyers with a track record of success in the most complicated matters. We have a demonstrated ability to master even the most technical of subject matters, and many of us have technical educational backgrounds and work experience as engineers and scientists. Most important, many of our patent litigators are registered before the PTO, which qualifies them to serve as lead counsel in the newest form of patent litigation: AIA trials.

In 2013, the America Invents Act (AIA) introduced three new proceedings to challenge the validity of patents in the PTO. These proceedings have revolutionized patent litigation, in many cases supplanting traditional patent litigation in district courts. From the start, Michael Best has represented our clients both prosecuting and defending AIA trials with success. We have argued multiple appeals in AIA trial matters before the Federal Circuit Court of Appeals, including several cases that addressed issues of first impression. Michael Best’s role in these cases and the breadth of our AIA trials practice are the result of our deep tradition of practicing before the PTO, broader litigation experience, and ability to bring extensive technical expertise to bear in almost any field.

Any client with significant IP assets benefits when their attorneys understand every aspect of the underlying technology and have a long tradition of handling all aspects of patent matters in all contexts — including representing clients before the PTO in patent prosecution matters and now AIA trials and in district court, both enforcing and defending against infringement allegations. To read more about our IP litigation capabilities, click here.

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