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Patent Prosecution

Hodgson Russ attorneys work with Fortune 500 companies, universities, startups, and individuals to secure protection for their ideas and inventions. We provide comprehensive advice relating to obtaining patent protection for our clients’ technologies at the U.S. Patent and Trademark Office and globally in collaboration with a network of patent attorneys in all major countries.

Our attorneys guide clients through the decision whether to file for a patent, including:

  • Initial discussion and review of the technology
  • Execution and analysis of prior art searches
  • Evaluation of patentability

We prepare and prosecute patent applications before the U.S. Patent and Trademark Office. This includes:

  • Drafting utility and design patent applications with claims tailored for the client’s existing products and future commercial strategy
  • Analyzing and responding to office actions
  • Conducting interviews with patent examiners to accelerate prosecution
  • Filing divisional and continuation applications to expand coverage
  • Appealing adverse decisions to the Patent Trial and Appeal Board
  • Coordinating patent prosecution to maximize coverage while strengthening the client’s intellectual property strategy

We assist clients with post-issuances proceedings, license agreements, and technology transfers. Additionally, our attorneys assist clients with freedom-to-operate searches and opinions, infringement and validity opinions, and design-around strategies. We also actively advise clients on strategies related to the development and management of global intellectual property portfolios.

Our patent attorneys have degrees in engineering, chemistry, and the biological sciences, with many holding advanced degrees. Most of our attorneys have experience working in academia or industry, in fields that include software, energy, semiconductors, microelectronics, manufacturing, plastics, information technology, automotive, nanotechnology, chemicals, and life sciences.

We approach complex multi-discipline technologies as a team by bringing together attorneys with relevant technical backgrounds. Our depth and breadth of technical knowledge make Hodgson Russ an attractive firm for clients seeking protection for their technologies—whether simple or complex.

We regularly assist clients with:

  • Prior art searches and reviews
  • Patent mapping and identification of the applicable patent landscape
  • Patentability opinions
  • Identification of strategies for protecting inventions as patents or trade secrets
  • Preparation and prosecution of U.S. and foreign patent applications
  • Advice on recent case law as applied to patent strategy
  • Strategies for global protection of technologies, products, and innovations
  • Strategies for building strong and valuable patent portfolios
  • Freedom-to-operate opinions
  • Invalidity and non-infringement opinions
  • Patent workshops and seminars for executive staff, researchers, and engineers

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