Patent Prosecution and Litigation

Patent Prosecution and Litigation

Developing strategies at the speed of innovation.

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 prosecution and litigation 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 partner closely with each client to understand their unique business and legal goals, and to develop effective patent strategies that are mindful of both.

Technical Experience
The patent group includes ten former examiners at the United States Patent and Trademark Office, with substantial experience in the software, cryptography, biotechnology, semiconductor, chemical, electrical and mechanical arts. We also have numerous patent attorneys with PhDs and ten with master's degrees in technical areas most relevant to client technologies. In addition, our attorneys have held in-house counsel positions and have worked as engineers, chemists, 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.

Litigation
Hunton & Williams offers clients access to skilled trial lawyers with expansive experience handling patent litigation in key venues, including the United States District Courts for the Eastern District of Texas, for the Eastern District of Virginia and for Delaware. When combined, our broad technical experience and courtroom skill lead to successful results for clients, in matters involving biotech, medical devices, Internet software, cable television systems, pharmaceuticals, textiles, graphic security and telecommunications technologies. In addition to our district court experience, we have handled numerous high-profile appeals before the United States Court of Appeals for the Federal Circuit.

Team members are actively involved in all aspects of the IP cycle, including preparation, procurement, counseling, opinions and licensing of patents, copyrights and trademarks. This experience allows us to see the broader picture in litigation. As such, we have the skill and experience to develop a thorough understanding of each matter, and handle all phases of litigation. We operate strategically, assessing the likelihood of success, developing a litigation strategy and plan, budgeting for the case, handling discovery, presenting a compelling case at trial and designing effective and creative settlement options — effectively and efficiently representing our clients and their interests.

Licensing and Monetization
Hunton & Williams has more than 20 years of experience helping clients obtain the maximum competitive and financial advantages from the exploitation of their intellectual property assets. Our attorneys were among the first in the United States to create and implement industrywide patent assertion and licensing programs, which have since been nationally recognized as both innovative and effective. Through these and other licensing and litigation programs, Hunton & Williams attorneys have been involved in patent licensing programs that have led to the collection of more than $2 billion in royalties.

Members of our team routinely handle various types of IP transactions for licensors and licensees, including patent and technology license agreements, software licenses, trademark licenses, joint development agreements, commercialization agreements, nondisclosure agreements and IP security agreements.

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.