Patent Prosecution and Counseling

Patent Prosecution and Counseling

• Successfully supported a U.S.-based oncology company in connection with strategic counseling and patent prosecution to support its novel antibody platform technology and product pipeline.
• Secured patent prosecution and portfolio development for a variety of medtech devices related to treatment of skin conditions.
• Obtained a critical patent for the top-selling video game accessory in the world.
• Prepared, filed and prosecuted an accelerated patent application resulting in a notice of allowance within thirty days of filing the application and grant of the U.S. patent in under four months.
• Led strategic counseling, patent prosecution and due diligence for a NASDAQ-listed otic drug delivery company.
• Successfully secured numerous U.S. patents for leading Japanese motor company.
• Secured patents and provided strategic counseling leading to the commercialization of coronary stents.
• Successfully represented a China-based regenerative medicine company and separately a China-based ophthalmic company in connection with strategic counseling and patent prosecution.
• Managed strategic counseling, patent prosecution and due diligence for a U.S.-based oncology drug delivery company.
• Provided strategic counseling and patent prosecution for a U.K.-based skincare and dermatology company.
• Provided strategic counseling, patent prosecution and due diligence for a U.S. university spinoff diagnostic company.
• Led strategic counseling and patent prosecution for a U.S.-based point-of-care (POC) diagnostic company.

Patent Post-Issuance

• Prepared and filed numerous successful ex parte reexamination requests of competitor patents resulting in strategic delay of potential litigation and establishing intervening rights for the client.
• Handled a successful ex parte reexamination of a client’s patent asserted in litigation resulting in certification of the originally patented claims and substantial settlement of related litigation.
• Prepared, filed and successfully prosecuted a post-grant invalidity attack of a U.S. patent asserted against the client resulting in a final rejection and non-certification of originally patented claims and favorable settlement terms for the client in related litigation.
• Successfully managed a post grant inter partes reexamination of a client’s patents asserted in litigation resulting in certified claims that read on the competitor’s products.
• Successfully handled post grant opposition of a client’s European patent in the European Patent Office resulting in confirmed claims that read on the competitor’s products.
• Obtained a reissue patent for the client including original claims and new claims reading on a competitor’s products.