Patent Counseling & Prosecution

Cooley's Patent Counseling and Prosecution practice provides sophisticated patent services to 1,000+ clients worldwide across a range of industries. The team consists of 90+ attorneys and patent professionals across the US and UK, majority of whom hold PhDs or advanced degrees in science and engineering. The team brings to bear decades of experience drafting, prosecuting, defending and opposing patents at the US Patent and Trademark Office and the European Patent Office. In addition to our on the ground coverage in the US and UK, we have a carefully vetted network of counsel with whom we partner located in key jurisdictions worldwide.

We help clients formulate and implement effective intellectual property development and protection strategies. The group's services include conducting patentability analyses, developing plans for building economically efficient patent portfolios, preparing patent applications, and corresponding with patent offices of various jurisdictions around the world to ensure global patent rights. Our lawyers also assist companies to avoid infringement of third party patent and intellectual property rights. Such services include performing third party patent searches, analyzing third-party patent and intellectual property rights, maintaining periodic patent watches on third-party competitors and preparing non-infringement and invalidity opinions.

The firm's patent lawyers are often involved in patent and commercial litigation matters, as well as patent due diligence surrounding mergers, acquisitions, funding and other transactions. Given our patent lawyers' extensive involvement in these types of matters, we have developed a deep understanding of value. As a result, we understand what creates commercial value in a patent portfolio, and have a keen appreciation of the interface between prosecution and enforcement.

For details about the specific technologies with which we have experience, please explore our strength in any of the following technology fields:

Key Facts

  • Fully integrated patent prosecution, counseling, licensing and litigation practice creating cost efficiencies and unified patent strategies
  • One of the largest patent groups among AmLaw 50 firms with 90+ lawyers and professionals across the US and UK
  • The group includes a dedicated 50+ person life sciences patent team, nearly 90% of whom hold PhDs (one of the top three largest life sciences patent groups in the US)
  • 24,000+ patents under our management across 120+ jurisdictions worldwide
  • Since 2010, we have prepared and filed 9,800+ patent applications and managed 14,000+ foreign filings (non-US)
  • In 2015, we obtained nearly 2,000 patents for our clients, and provided patent due diligence support on 75+ business transactions, including venture financings, mergers and acquisitions and licensing transactions
  • 100+ inter partes review and covered business method review proceedings before the PTAB; 100+ inter partes and ex parte reexams
  • Extensive international patent filing network
  • Full sequence management capacity, including database access, sequence management and sequence listing generation

Staffing 

  • 90+ USPTO and EPO registered professionals across the US and UK
  • Full patent support unit headquartered in the US (Washington DC) including docketing, file support and international filing staff (35+ staff members)
  • Electronic filing staff, including 35+ trained patent secretaries across offices
  • Extensive international patent filing network
  • Full paralegal support facilities (20+ paralegals with IP experience)
  • Prior art and patent diligence search services (20+ registered patent agents)

We work closely with lawyers in other groups within the firm to provide legal advice regarding patents and patent portfolios, including for example:

  • the Mergers and Acquisitions group and Venture Capital group to assist in corporate transactions such as mergers, acquisitions, and capital investments in target companies;
  • the Technology Transactions group to assist with in-bound and out-bound licenses or sales of patent and intellectual property rights; and
  • the Intellectual Property Litigation group to develop and execute patent enforcement strategies for clients seeking to enforce their patent rights or who are accused of violating the patent rights of others.

Related Practices

PTAB Digest

Cooley provides you with a first-of-its-kind tool that tracks and analyzes key Patent Trial and Appeal Board decisions. Visit PTAB Digest.

Expanding Cooley's National IP Practice

We now count 45+ PhDs among our 50+ life sciences patent professionals. Together, we serve many of the world's most innovative companies. Intelligently. Read here.

Resources to start and build your business. Cooley GO.


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