Patent Counseling & Prosecution

We help clients manage

• Rapidly emerging technology
• Identification of innovations
• Changing government laws and regulations
• Research and development plans and expenditures
• A competitive patent landscape

Patent experience with breadth, technological depth

• Patent attorneys, paralegals, and docketing staff providing a wide range of patent services to a large base of domestic and international corporations
• Attorneys registered to practice before the U.S. Patent and Trademark Office
• Technical degrees in wide range of disciplines: chemical engineering, chemistry, biotechnology, mechanical engineering, textile technology, electrical engineering, physics, among others
• Depth of experience in patent application preparation, filing, prosecution, opinions, client counseling, patent portfolio management, and post-grant practice
• Knowledge of U.S. and foreign patent policies, treaties, and regulations
• Nationally recognized patent practitioners and patent practice

In-house, academic, and government perspectives

Our team brings you real world, practical perspectives and includes

• Former in-house patent counsel
• Former patent examiners
• Former clerks for the U.S. Court of Appeals for the Federal Circuit
• Adjunct intellectual property law professors
• Attorneys with experience as leaders in the patent community
• PhDs with technical experience in various areas of Life Science

Our clients range from biotechnology start-ups, to medical and research institutions, to global companies

Our clients span industry sectors and are both large and small, ranging from entrepreneurs and start-ups to established household names.  Clients we've served include medical and research institutions, global specialty chemical companies, U.S. financial institutions, and clients in a range of business areas, including

• Industrial and Specialty Chemicals
• Automotive systems
• Mechanical seals and composite coatings
• Medical treatments
• Nutritional products
• Paper and papermaking chemicals
• Biotechnology
• Small molecule and biologic drugs
• Pharmaceutical products and processes
• Polymer science
• Software
• Transgenic plans and new plant cultivars

Geographic reach and global portfolio services

Clients who do business on a worldwide basis have entrusted us to maintain a large portfolio of domestic and international patent application filings.  In addition to our work representing clients across the United States and around the globe, we bring to you a network of patent legal contacts around the world.  Nelson Mullins also brings to you an IP legal team with experience representing clients in transactional proceedings and in IP litigation in the United States, Europe, Asia, and South America.

Extensive knowledge of life science and antibody-related technologies

Our experience in the area of antibody-based therapeutics and related platform technologies includes providing client services to over 30 leading companies in the field.  More particular experience areas include:  Antibody formats (Humanized, chimeric and fully human antibodies, Alternative scaffolds, Glycoforms, Antibody drug conjugates, Bispecific and multispecific formats), Antisense and RNAi, Discovery technologies (Phage and yeast display, Affinity maturation, Acellular expression, Transgenic production), FDA labelling/clinical trials, Gene Therapy, Green technologies, Metabolites, Nutraceuticals, Personalized medicine/ biomarkers, Prodrugs, Recombinant proteins, Salts/polymorphic crystal forms, Sequencing technologies, and Small molecules.

Our patent counseling and prosecution services help you 

• Be ahead of the curve in connection with a technology or an industry
• Seek and obtain patent protection for new innovations
• Understand the competitive patent landscape in a new technology or industry
• Implement a patent strategy that embraces and addresses business needs and objectives, including when patents provide a competitive advantage
• Stay informed about changing government patent policies and regulations that affect a business
• Take action in a nimble fashion when patent protection is sought
• Make informed decisions about spending and resources as it relates to maintaining and licensing a patent portfolio
• Respond and advance strategies in connection with re-examination, opposition, reissue, interference, interpartes, and post grant review proceedings

Following is a selected sampling of matters and is provided for informational purposes only. Past success does not indicate the likelihood of success in any future matter.

Select Patent Experience

• Represented 3D measurement, imaging, and realization technology company in patent infringement case involving laser scanners and point cloud processing
• Represented automotive technology company and production engineering company in suit involving tire inflation systems for semi-trailers
• Represented global specialty chemicals company and prepared and prosecuted patent applications in areas of surfactants, additives, master batches, dyes, and pigments
• Represented a major U.S. financial institution in preparation and prosecution of patent applications for inventions in areas including information security, on-line banking, on-line financial transactions, financial instruments and products
• Represented medical and research institutions in preparation and prosecution of patent applications in bio-chemical systems, bioengineering and medical-related inventions
• Managed patent portfolio for client related to seed treatment technology, including transgenic plants
• Prosecuted and managed patents for international pharmaceutical client
• Managed entire patent portfolio, including opinions and multiple pre-litigation studies, on behalf of nutritionals manufacturer
• Built several unique “patent matrixes” for multiple clients, enhancing the connection between IP owned and business objectives to maximize value returned from IP investment
• Worldwide patent counseling and strategic planning, including patent prosecution, freedom to operate evaluations, opinion work, public offerings, agreements, licensing, due diligence analyses, interferences, and oppositions involving a variety of biotechnologies, particularly antibody-based therapeutics
• Developed and implemented effective IP strategies, including: building strong patent portfolios that protect and facilitate commercialization of products and assessing freedom to operate for a broad range of clients, from start-up biotechnology companies to established pharmaceutical corporations
• Consolidated domestic and international patent portfolios from multiple counsel, resulting in improved portfolio management and cost containment
• Secured more than 600 clean technology-related patents, including 90 patents in the clean technology field during the past few years; clean technologies included fuel cells, solar cells and wind turbines
• Assisted a leading automotive company in developing and managing its U.S. patent portfolio for its next generation alternative energy vehicles
• Assisted a designer and manufacturer of solar sheets with protecting the technology it developed for aviation aircraft critical to U.S. national security
• Served as lead outside patent counsel in connection with a patent portfolio related to RNA based antisense therapeutics
• Coordinated Oppositions, Appeals, and Third Party Observations in Europe with local co-counsel
• Conducted intellectual property due diligence for a biopharmaceutical client's Initial Public Offering which led to raising more than $60 million in the IPO
• Managed a key patent portfolio for a biopharmaceutical client in the field of mRNA
• Managed the intellectual property (IP) portfolio for a Fortune 500 pharmaceutical client's antibody product program, including filing several patent applications throughout the world
• Represented a Fortune 500 client in the intellectual property due diligence related to the company’s acquisition of a privately held biotechnology company, and managing the IP patent portfolio for several of the acquired companies pre-clinical products, including an innovative monoclonal antibody
• Long-standing U.S. patent prosecution counsel for leading international manufacturer of textile yarn spinning and winding equipment with U.S. patent portfolio of several hundred patents
• U.S. and International patent prosecution counsel for leading worldwide manufacturer of industrial, commercial and consumer adhesive tapes
• U.S. and International patent counsel for leading manufacturer of plumbing pipes and fittings