Patent Prosecution

Patent Prosecution

Technical insight, efficient strategies and proven portfolio management experience.

Forward-thinking companies require equally forward-thinking patent counsel to help them keep pace with — and lead — in today's innovation-driven global marketplace. Hunton & Williams LLP's patent team provides a full range of patent services, including preparation, prosecution, portfolio management, monetization, litigation, licensing services and counseling, all undertaken with an understanding of the unique business, legal and technical issues facing our clients.

The importance of protecting, managing and developing your intellectual property portfolio — and respecting the rights of others' portfolios — cannot be understated. At Hunton & Williams, nearly 50 attorneys and patent clerks located in geographically diverse offices provide informed, comprehensive solutions to entities ranging in size from Fortune 100 companies to small start-ups, drawn from diverse industries, including financial services providers, software developers, biotechnology and pharmaceutical companies, venture capitalists, colleges and universities and telecommunications providers, among others. Regardless of the company, technology or scope of a project, we actively partner with our clients to develop portfolios and applications that help achieve strategic goals, taking into account the company type, market intricacies and industry standards. We offer all of our clients technical skill, business acumen and legal experience as we guide them through the processes and procedures involved in obtaining comprehensive protection for the full life cycle of their patents.

Technical Experience
The patent group includes ten former examiners at the US Patent and Trademark Office, with substantial experience in the software, biotechnology, semiconductor, chemical, electrical and mechanical arts. We also have numerous patent attorneys with PhDs and ten with master’s degrees in areas relevant to client technologies and products. In addition, our attorneys have held in-house counsel positions and have worked as engineers, chemists, programmers, computer scientists and researchers for leading companies. This extensive real-world and technical experience fosters skillful representation in a wide range of technical disciplines and allows our attorneys to respond quickly and knowledgeably to client needs.

Portfolio Management and Counseling
Hunton & Williams engages with client personnel at the workforce and management levels to develop and oversee worldwide maintenance programs and manage portfolios, gaining an in-depth understanding of the existing portfolio, identifying areas of opportunity, developing plans to strengthen intellectual property assets and obtaining maximum protection for those assets. We are currently responsible for the management of more than 23,000 patent matters, ranging from providing advice on single patents to the management of multinational corporate portfolios.

We have established corporate intellectual property programs for clients — including patent education and awareness programs, monetization efforts, competitor portfolio monitoring programs, focused patent estate development initiatives and assistance with product design — to ensure right to practice. These partnerships allow Hunton & Williams to understand the business aims of our clients, identify future opportunities and develop all-inclusive patent programs that are directed toward accomplishing those goals.

Prosecution
In recent years, Hunton & Williams has handled more than 15,000 patent applications, and our attorneys represent clients on a daily basis before the United States Patent & Trademark Office. As part of a full-service IP practice, our attorneys and agents have participated in the full life cycle of a patent. Accordingly, we prepare and prosecute patent applications that secure the strongest claims possible and build strong, defensible patents and portfolios. In addition to carefully drafting patent applications and procuring patent rights, the team’s broad patent litigation and licensing experience are invaluable in obtaining patents that can be effectively licensed or enforced against infringers.

All patent prosecution is handled by attorneys and agents registered to practice before the USPTO, and we coordinate international patent filings through the team’s foreign filing specialists, international offices in Europe and Asia and network of foreign agents. Our typical approach to prosecution is to assign specific technology areas to attorneys with relevant technical backgrounds. In doing so, the team becomes familiar with the company and relevant prior art, and can grow with the docket. We are careful to distinguish between technologies to ensure that the appropriate team member is handling the portfolio, developing an understanding of the technology and patents as well as the concerns and challenges facing in-house legal counsel.

Patent Opinions
The preparation of thorough and well-reasoned opinions is critical for our clients' strategic agendas. Many "bet the company" decisions turn on the strength of intellectual property claims — hence, we offer opinions on patentability, validity and infringement, risk analysis, conduct landscape and freedom to operate studies and evaluate the validity of patents through prior art analyses. We have handled hundreds of patent and prior art analyses in the last five years, and when necessary or appropriate, we collaborate with our colleagues from the firm's transactional, antitrust, privacy and other practices.

Our efforts are designed to meet each client’s needs and support their business objectives. For example, we may conduct a freedom to operate investigation early on in a research program to identify potentially problematic competitor patents and patent applications to help guide a company's business and research strategy, including whether to commence or continue a particular commercial research program. We also conduct late-stage freedom to operate investigations, such as the final clearance investigation before a new drug is launched or before a company makes a major IP acquisition. Given the importance of these freedom to operate analyses, we typically coordinate our investigations with skilled patent search providers to ensure that nothing is overlooked. In each matter we are careful to assemble a team of attorneys with the most appropriate technical experience to best assess the scope and validity of the claims. Moreover, as these investigations may be global in nature, in some instances we may coordinate our efforts with foreign associates in different jurisdictions.

International IP and Prosecution and Portfolio Management
We have filed patent applications in virtually every country in the world with a patent system on behalf of our clients. To facilitate our international patent practice we have developed longstanding relationships with foreign associates across the world, enabling Hunton & Williams to react swiftly and appropriately wherever a client issue arises. Our network of foreign associates is not only practical from an experience perspective, but from technical and cost-saving ones as well.

To further facilitate our international patent practice we have on staff a number of individuals who handle foreign filing and foreign docketing, PCT filings and PCT related formality requirements. Our team also includes an annuity department that ensures all foreign patent matters are maintained in good standing by coordinating payment of annuities and sending timely annuity reminders to the client, should clients choose to take advantage of the service.

A number of attorneys in our group have substantial experience in foreign opposition practice and have (in association with foreign counsel) defended oppositions by third parties or submitted oppositions against competitor patents in different jurisdictions including Australia, Brazil, Europe, and Korea. We closely monitor Opposition due dates for client patent matters we prosecute, and for some clients closely monitor the prosecution of competitor patents in different jurisdictions that have the potential to be opposed. Some of these oppositions have involved numerous parties and have taken many years to resolve. Our attorneys have also been involved in other post-grant procedures such as invalidation proceedings, and we have filed Third Party Observations on behalf of clients in competitor patent applications.

Rankings and Honors
Our successful approach to serving client needs has been noticed by numerous ranking organizations. Hunton & Williams was named as a "Go-To" litigation practice by Fortune magazine, a ranking based on an independent survey of general counsel at America’s 500 largest companies, who named Hunton & Williams one of the firms most frequently called upon for major litigation. In 2012 we were named as a leading patent practice in Benchmark Litigation: The Definitive Guide to America's Leading Litigation Firms and Attorneys and named as one of the nation's busiest patent practices in America by IP Law & Business.

These awards continue a long tradition of citations in major publications for the firm's handling of our clients' patent matters. Our team has been recognized as a leading intellectual property practice by Intellectual Property Today, Legal 500, IP Almanac, Corporate Counsel, US News and World Report and the Chambers USA Guide. While we appreciate the rankings and honors bestowed upon us by outside sources, we are most proud of our consistent record of success on behalf of our clients.

Client Service
We understand that a robust patent portfolio and skilled protection are critical to your IP and business objectives. As a full-service law firm, Hunton & Williams is able to supplement the skills and services provided by our patent attorneys with the experience and knowledge of our colleagues in other practices, such as antitrust & competition, bankruptcy, food and drug, mergers & acquisitions and others, when necessary. Our commitment to aligning our service approach to your business objectives is evidenced by our approach to communication, use of advanced technology to manage complex matters, staffing and fee arrangements.