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Patent Prosecution & Counseling

Miles & Stockbridge understands that intellectual property (IP) assets play an increasingly important role in our clients’ ability to achieve their strategic goals. We offer a strong team of highly skilled patent practitioners with experience and applied knowledge in all phases of the patent process, including prosecution of individual patent applications, litigation, and instituting and defending post-grant challenges of patents. The foundation of our success in securing patent protection for our clients is our well-planned patent process. Our patent lawyers first assess whether an invention is distinctive enough to receive patent office approval and whether the proposed claims are properly positioned against the competition. We then assess the invention’s strategic position in our client’s patent portfolio, advise on the use of design patents to secure additional product patent protection, where appropriate, and determine the best application procedure. We also perform freedom-to-operate analyses for possible infringement conflicts before clients attempt to introduce a new product or product family, and we offer guidance on how to circumvent any such possible conflicts while still gaining innovative advantage. Finally, we employ post-grant procedures (e.g., inter partes review, covered business method review, reexamination) to defeat infringement claims or to strengthen our clients’ own claims as needed.

The success of our patent counseling process integrates the basic strengths of our IP practice:

  • We use our legal, technical and business skills, in combination with our specialized knowledge of the patent procurement and adjudication process, to represent a wide range of U.S. and international clients, including industry-leading corporations, high-tech ventures, universities and nonprofit research institutions.
  • We represent clients in all aspects of their operations and intellectual property asset management at each stage of their growth and development.
  • Our patent lawyers have the industry knowledge and practical training across a spectrum of the mechanical arts, electrical arts, chemical arts and life sciences.
  • We understand each client’s products and processes, no matter how complex.
  • We understand the interaction between patent law and product technology, which gives our clients a distinct advantage as we pursue their patent claims.

We are keenly aware that today’s economic conditions demand that our clients receive the maximum value for their investment in IP assets. Our lawyers excel at aligning those assets with their business and product development directions so that valuable IP budget allocations are deployed in the most effective manner possible. Ours is not a simple “wait for instructions and react” practice; in contrast, in many cases we are intrinsically involved with our clients’ management of their IP assets. We have developed strategic approaches, including a database-driven IP decision support system to assist clients in accomplishing their business goals. For example, we design and participate in cross-functional teams to integrate our clients’ functional disciplines into an IP management process that accommodates all stakeholders. This process can include identifying third-party prior art, as well as forward-looking IP asset tracking and management that includes estimated lifecycle cost per asset to support an ongoing cost-versus-benefit analysis. Our approach also includes the application of project management principles to help a client manage its IP budget and control IP spending.