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IP Prosecution and Portfolio Management

Overview

The intellectual property team at Crowell & Moring helps clients across the United States and abroad realize the full value of their intellectual property and defend against unauthorized use of their ideas— assets often described as "today's international currency." Successful strategy, protection, and management of intellectual property rights can play a significant role in the broader success or failure of a business venture, especially where substantial effort and capital investment are devoted to the development of new technology or new ideas.

Innovations typically involve a broad range of technologies, and our IP team has in-depth experience in the full spectrum of scientific disciplines and the products and processes to which they give rise. Our lawyers apply their technical backgrounds and experiences to guide clients in a variety of industries, including electrical, mechanical, and chemical engineering; pharmaceuticals and life sciences; software, online services, and computer science; and telecommunications.

IP Strategy and Transaction Services

Our lawyers have extensive experience in all aspects of intellectual property transactions, and apply their focused knowledge in a wide range of industries, including aerospace, defense contracting, health care, financial services, telecommunications, biotech, software, semiconductors, and electronics. Lawyers from our Corporate Group and Intellectual Property Group work together closely to structure, negotiate, and implement IP transactions involving patents, trademarks, copyrights, trade secrets, know-how, and most other forms of intellectual property. As a benefit of our close working relationship with the firm's Government Contracts Group, we have substantial knowledge and extensive experience with issues arising when licensing IP to governmental entities, including patent and technical data rights issues.

IP Prosecution

Crowell & Moring’s prosecution team has significant experience protecting the innovations of clients. Our lawyers assist the firm's clients in obtaining valuable proprietary rights for their inventions through the preparation and prosecution of utility and design patent applications, registration of copyrights and trademarks, and negotiation of a range of licensing, non-disclosure, and trade secret agreements. We also advise clients in the development and implementation of cost-effective patent procurement strategies and programs, regularly monitoring the regulatory and judicial landscape to best assist in meeting their business objectives.

Portfolio Management

Our team not only has significant experience and success before the USPTO, but also with managing large patent portfolios in many—if not all—jurisdictions around the world, and we are familiar with the issues that come with managing such a portfolio. We counsel clients on the design and implementation of IP portfolio management procedures, including invention recordkeeping, intercompany invention reporting, patent incentive programs, patent reviews, proprietary information protection programs such as employee consulting, confidentiality, and invention agreements, trade secret protection practices and policies, employee exit procedures, "clean room" design-around procedures, and copyright maintenance, licensing, and enforcement programs. We also provide due diligence assessments of newly developed technologies and in connection with the acquisition of intellectual property.

Contacts

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Insights

Client Alert | 5 min read | 09.03.25

If You’re Not First, You’re Last: Federal Circuit’s First Review of an AIA Derivation Proceeding

Nearly a decade and a half after the passage of the Leahy-Smith America Invents Act (“AIA”), the Federal Circuit finally had its first occasion to review an appeal of a derivation proceeding that was litigated before the Patent Trial and Appeal Board (“Board”) in Global Health Solutions LLC v. Selner. This case provides helpful guidance for patent litigators regarding the proper legal framework in a derivation proceeding and serves as a reminder that patent applications should be filed as soon as possible. As the facts of this case show, it is important that inventors retain documents and other evidence of the conception of their invention, as well as its communication to others, should there be any challenge to their invention....

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Insights

Client Alert | 5 min read | 09.03.25

If You’re Not First, You’re Last: Federal Circuit’s First Review of an AIA Derivation Proceeding

Client Alert | 3 min read | 07.22.25

AI Innovation: What Companies Need to Know About How the USPTO is Implementing AI Technologies to Modernize its Workflows

Client Alert | 3 min read | 07.02.25

USPTO's Upcoming Changes to the Accelerated Examination Program

Firm News | 5 min read | 07.01.25

Highly Regarded Patent Team to Join Crowell & Moring in London

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Professionals

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Insights

Client Alert | 5 min read | 09.03.25

If You’re Not First, You’re Last: Federal Circuit’s First Review of an AIA Derivation Proceeding

Nearly a decade and a half after the passage of the Leahy-Smith America Invents Act (“AIA”), the Federal Circuit finally had its first occasion to review an appeal of a derivation proceeding that was litigated before the Patent Trial and Appeal Board (“Board”) in Global Health Solutions LLC v. Selner. This case provides helpful guidance for patent litigators regarding the proper legal framework in a derivation proceeding and serves as a reminder that patent applications should be filed as soon as possible. As the facts of this case show, it is important that inventors retain documents and other evidence of the conception of their invention, as well as its communication to others, should there be any challenge to their invention....

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Contacts

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Insights

Client Alert | 5 min read | 09.03.25

If You’re Not First, You’re Last: Federal Circuit’s First Review of an AIA Derivation Proceeding

Nearly a decade and a half after the passage of the Leahy-Smith America Invents Act (“AIA”), the Federal Circuit finally had its first occasion to review an appeal of a derivation proceeding that was litigated before the Patent Trial and Appeal Board (“Board”) in Global Health Solutions LLC v. Selner. This case provides helpful guidance for patent litigators regarding the proper legal framework in a derivation proceeding and serves as a reminder that patent applications should be filed as soon as possible. As the facts of this case show, it is important that inventors retain documents and other evidence of the conception of their invention, as well as its communication to others, should there be any challenge to their invention....

View All Insights