Our intellectual property litigation experience includes prosecution and defense of patent and trademark infringement actions and competitor false advertising litigation under 43(a) Lanham Act. Our services in this area include:
Paragraph IV, Hatch-Waxman, patent and FDA litigation
Representing clients in enforcing their patents and trademarks, and defending against claims of infringement and disputes concerning inventorship and ownership
Developing strategic litigation strategies including counterclaiming and alternative business objectives such as cross-licensing
Participating in administrative proceedings before the Patent Office Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board
Advising on all aspects of patent litigation including infringement and validity analysis
Prosecution history issues relating to priority of invention and inequitable conduct; patent misuse and damages; antitrust issues and preliminary and permanent injunctions
Counseling on all aspects of trademark litigation including trademark and trade dress infringement, likelihood of confusion analysis, protection of good will and brand value of client products, oppositions to pending trademark applications and petitions to cancel existing registrations
Litigating claims of unfair competition, tortious interference, antitrust and related state law claims.
Patent Protection, Licensing, and Freedom to Operate
When working with clients, our attorneys seek to craft patent applications that look beyond mere patentability to meaningful enforceability when tested in litigation or in other contexts. With extensive experience in both FDA regulations and patent law, we are well-positioned to advise companies on the complex inter-relationship between the two.
Our objective is to provide patent counseling that covers the range of issues from prosecution to protection from infringement. We also assist in finding ways to maximize a patent portfolio’s value in the marketplace by employing such strategies as licensing and freedom to operate.
We are experienced in foods, drugs, supplements, cosmetics, medical devices, biotechnology, and human and animal life sciences, providing our clients with patent advice and representation that is fully sensitive and responsive to particular business and regulatory contexts.
The full extent of our patent counseling includes:
Analyzing patentability for new technologies
Conducting U.S. and international patent searches encompassing state of the art and infringement
Providing opinion letters related to freedom-to-operate, non-infringement and validity/invalidity
Counseling on Hatch-Waxman issues pertaining to branded and generic drug products including non-patent exclusivity periods for new drugs, patent term extensions and expedited FDA approval processes
Providing strategic IP counseling related to infringement risk analysis, mitigation, patent design-around and maintenance and review of IP Portfolios
Counseling on and assistance in International Trade Commission (ITC) matters including proceedings initiated under Section 337 of the U.S. Tariff Act
Preparing and filing of United States and foreign patent applications and patent maintenance
Assistance in patent proceedings such as IPRs, re-examination, interference, and infringement