Patent Counseling and Prosecution

In Depth

Cooley has one of the largest global patent groups among any of the AmLaw 20 law firms, with 90+ lawyers and patent professionals worldwide. We represent 3,500+ companies in all aspects of patent counseling and prosecution. At Cooley, we don’t just focus on acquiring patent rights. We understand that patents are just one component of a bigger strategy, so we provide holistic patenting services and advice geared toward improving the bottom line, increasing shareholder/investor value, attracting strategic partners, and positioning our clients for growth and success. By looking at patent rights from all angles and working with companies across all levels, we’re able to anticipate what’s on the road ahead.

Cooley’s global patent counseling and prosecution team assists clients in the strategic acquisition, protection and monetization of patent rights in the US, Europe and other commercially significant markets around the world. Our team of patent lawyers, located in offices across the US and Europe, brings to bear decades of experience drafting, prosecuting, defending and opposing patents at the USPTO and EPO. In addition to our coast-to-coast coverage across the US and Europe, we have a carefully vetted network of counsel with whom we partner in key jurisdictions worldwide.

Given our deep experience in this area, we understand what creates commercial value in a patent portfolio and are able to anticipate and mitigate risks for our clients. We are regularly called upon to lead investor- and company-side due diligence surrounding mergers, acquisitions, fundings and other transactions. Our team has led 1,000+ investor- and company-side patent due diligence reviews.

We also pair up with our internal litigation teams to defend our clients’ patent positions across federal courts and have significant experience leading inter partes reviews, Patent Trial and Appeal Board (PTAB) and reexam proceedings at the USPTO, as well as oppositions, appeals and observations at the EPO.

Areas of Practice

• Strategic patent counseling
• Patent prosecution and procurement
• Portfolio management, analysis and monetization
• FTO and patentability analysis, non-infringement and invalidity opinions
• Patent diligence (investor-side and company-side)
• Patent in-licensing and out-licensing
• Protecting IP during strategic collaborations and transactions
• IPRs/PTAB proceedings and reexams (USPTO)
• Oppositions, appeals and observations (EPO)
• Patent enforcement strategies and litigation