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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.

Insights

Client Alert | 4 min read | 02.02.24

Federal Circuit Denies Cellect’s En Banc Rehearing Petition: Patent Term Adjustment May Invalidate Patent in Light of Earlier-Expired, Related Patent for Obviousness-Type Double Patenting

The Federal Circuit recently denied a petition for rehearing en banc in the much watched In re Cellect matter.  The landmark panel decision determined how obviousness-type double patenting (“ODP”) is impacted when patent term adjustment (“PTA”) is added to the term of one or more patents in a family under 35 U.S.C. § 154(b), resulting in different terms for the family member patents that would otherwise expire on the same day....

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Professionals

Insights

Client Alert | 4 min read | 02.02.24

Federal Circuit Denies Cellect’s En Banc Rehearing Petition: Patent Term Adjustment May Invalidate Patent in Light of Earlier-Expired, Related Patent for Obviousness-Type Double Patenting

The Federal Circuit recently denied a petition for rehearing en banc in the much watched In re Cellect matter.  The landmark panel decision determined how obviousness-type double patenting (“ODP”) is impacted when patent term adjustment (“PTA”) is added to the term of one or more patents in a family under 35 U.S.C. § 154(b), resulting in different terms for the family member patents that would otherwise expire on the same day....

Insights

Client Alert | 4 min read | 02.02.24

Federal Circuit Denies Cellect’s En Banc Rehearing Petition: Patent Term Adjustment May Invalidate Patent in Light of Earlier-Expired, Related Patent for Obviousness-Type Double Patenting

The Federal Circuit recently denied a petition for rehearing en banc in the much watched In re Cellect matter.  The landmark panel decision determined how obviousness-type double patenting (“ODP”) is impacted when patent term adjustment (“PTA”) is added to the term of one or more patents in a family under 35 U.S.C. § 154(b), resulting in different terms for the family member patents that would otherwise expire on the same day....