Technical Experience and Capabilities

Many of the firm’s IP lawyers are registered patent lawyers authorized to practice before the United States Patent and Trademark Office (USPTO). Lawyers who practice in this area have a wide range of prior academic and industrial experience that make Morris, Manning & Martin uniquely qualified to assist clients involved in complex, cutting‑edge technology matters and disputes.

All lawyers in the IP Group have engineering and science degrees and many have years of practical technical work experience. This combination of excellent technical, academic, education and industrial work experience gives our lawyers a distinctive edge in assisting technologically sophisticated clients with all of their patent needs.

Patent Searching Services

Generally, we provide six types of searching services: patentability, infringement, state-of-the-art, assignee, validity and patent watching.

Patentability. Many clients elect to conduct a preliminary patentability search prior to preparing and filing a patent application. Such searches often are useful in evaluating whether to make the additional investment of pursuing patent protection for a particular invention. Patentability searches can be conducted within very short turnaround times.

Infringement. An important aspect of the firm’s approach to patent disputes is counseling clients how to avoid litigation. Infringement searches, also called “product clearance” searches or “right-to-use” searches, often are conducted prior to introducing a new product in a patent‑intensive industry. The report from this type of search helps clients evaluate the risk of infringing patents of third parties. These searches also aid in the design‑around process, when design changes to a product are made to lower the risk of infringement. When appropriate, the firm can generate a non-infringement opinion with respect to a particular patent. Such non-infringement opinions, although not binding on a court, are nevertheless a virtual necessity for avoiding a finding of “willful infringement” in the event of litigation.

State-of-the-Art Search. A state-of-the-art search, also called a “technology survey,” provides a broader view of a particular field of technology than a patentability search or an infringement search. This type of search often is conducted as part of an evaluation whether to enter that technical field. The search is intended to pull up a comprehensive collection of patents in the designated technical field. The purpose of a state-of-the-art search is to see who the players are in a particular field and how extensive their portfolios are, as well as provide information about the prospects for patentability and the risks of infringement.

Assignee Search. This type of search is intended to locate patents owned by a particular company or in the name of a particular individual.

Validity Searching. This type of search helps assess whether a patent is valid or invalid, in view of prior art. A validity search is often conducted on a patent asserted by a third party in a charge of infringement. Also, a validity search should be considered for your own patents prior to initiation of litigation to verify the strength of a potentially valuable patent.

Patent Watching. Some clients maintain a watch over certain fields of technology. Patent watching services help companies keep tabs on competitors by conducting patent searches using databases around the world.

Patent Application Preparation and Filing

To obtain patent protection requires preparation of an extensive legal/technical document that describes the invention in such detail as to enable a person skilled in the art to make and use the invention. The document contains detailed technical information about the field of the invention, the background of the technology, technical problems that the invention addresses, consideration of known prior art, a summary of the invention, a collection of drawing figures (block diagrams, flow charts, state diagrams, schematic diagrams, database schemas, messaging formats, etc.), a brief description of the drawing figures, a detailed description of the invention in full enabling terms, a description of the best mode or “preferred embodiment” of the invention and a set of claims that set forth the invention in which property rights are asserted and an abstract.

The most important aspect of patent procurement is the preparation of the patent application. Our lawyers work closely with clients to obtain the necessary information for preparing and filing the patent application.

The USPTO has issued over six million patents. The majority of these patents are of questionable quality and create little or no value for their owners. Many of the Firm’s clients desire to create substantial value for their companies through procurement of quality patents, realizing the importance of patents in the valuation equation in financing transactions, as well as in establishing legal barriers to competitors in the field.

Our lawyers are attuned to the quality issues that are important in creating value for clients. When clients authorize preparation of a regular or non-provisional patent application, we work together to obtain the necessary information to prepare a thorough, high quality patent application.

Following preparation of the application, a filing strategy is developed and implemented. The filing strategy typically includes the filing of a U.S. patent application and/or an international patent application under the Patent Cooperation Treaty. Our lawyers discuss the advantages of the different filing strategies and assist clients in selecting the filing strategy that best serves their objectives.

Patent Prosecution

Stages of patent procurement after a U.S. patent application is filed are called “prosecution.” Patent prosecution is a deadline‑oriented administrative law practice before the USPTO. Our lawyers have extensive experience in all phases of patent prosecution. The USPTO imposes many administrative rules with deadlines designed to keep the prosecution process flowing and delays on the part of the patent applicant or the Patent Office affect the term of the patent. Upon receipt of an Official Action (also called an “Office Action” or an “Examiner’s Action”) from the USPTO, the client promptly is notified of the action. Depending on the client’s goals and instructions, the lawyer will provide comments and recommendations for handling the Office Action.

Actions taken to pursue a patent can include preparation of a legal brief, telephone interviews with the Examiner, face‑to‑face interviews with the Examiner, continuing examination procedures and preparation of affidavits in support of patentability. Our lawyers provide information regarding the risks and costs of available courses of action and counsel clients on which course of action to select.

Our lawyers occasionally are requested to take over the prosecution of a patent application or portfolio of applications in mid‑prosecution. Specific recommendations about the available options will be provided on request.

Appeals

Despite the best efforts of clients and lawyers, the USPTO sometimes refuses to grant a patent. In circumstances where a patent is denied, an appeal may be filed. Appeals are taken first to the USPTO’s Board of Patent Appeals and Interferences (BPAI) and, if necessary, to the Court of Appeals for the Federal Circuit (CAFC).

Our lawyers have experience in procedures before the BPAI and the CAFC. Procedures typically include preparation and filing of briefs, followed by oral argument.

Portfolio Maintenance

Once a patent has issued, maintenance fees must be paid at periodic intervals during the life of the patent to keep it in force. These fees are due at the end of 3½, 7½, and 11½ years. The firm dockets the dates for payment of these maintenance fees and provides a reminder to clients of upcoming due dates for payment.

The firm maintains a sophisticated docketing system to keep track of the relevant information about client patent portfolios including dates for response, payment of fees and other similar deadlines.

Upon request, the firm can provide a comprehensive status report about a client’s portfolio, which is often useful for management oversight. These reports typically include the status of application preparation, any outstanding Office Actions and due dates, maintenance fee due dates and patent expiration dates. The content and format of these reports can be customized to meet a client’s informational needs.

Correction of Patents ‑ Reissue and Reexamination

A common reason for patent invalidity is the discovery of prior art that was never considered by the USPTO during prosecution. In some cases, patents can be corrected and therefore re‑validated. Minor errors, typically typographical, can be corrected with a Certificate of Correction application.

A reissue proceeding can be conducted when a patent suffers certain types of errors that occur without deceptive intent. A reexamination proceeding can be conducted when a substantial new question of patentability exists based on unconsidered prior art patents or printed publications. Our lawyers have experience in both forms of patent correction procedures.

Invalidation of Third-Party Patents via Reexamination

In certain cases, patents owned by third parties can be invalidated via a reexamination proceeding. This procedure can be useful when the third party’s patent presents a risk of infringement to the client or the client has already been accused of infringement. When relevant prior art patents or printed publications are discovered that were not considered by the Patent Office during the initial prosecution and such materials raise a substantial new question of patentability, a request for reexamination can be filed. If the materials are compelling enough, some or all of the claims of the patent in question can be canceled.

A request for reexamination, if desired, can be filed anonymously to the client. A new inter partes reexamination proceeding recently was instituted at the USPTO. Under the new inter partes reexamination procedure, a person who believes that a certain patent is invalid may submit prior art to the USPTO and submit arguments and evidence of the patent’s invalidity. In the right circumstances, such an inter partes reexamination can provide for a less expensive resolution of a patent dispute than litigation in the courts.

Our lawyers have successfully invalidated a number of third-party patents that were threats to clients. Some cases involved patents that already were in litigation, while other cases were successful in warding off litigation.

Patent Interferences

In today’s highly competitive environment, competitors may be seeking patent protection for inventions very similar, if not identical, to a client’s products. Under current U.S. law, the first inventor is entitled to the patent, not the first to file a patent application (which is the rule in most countries). The patent laws provide for an “interference” procedure to determine who is entitled to receive a patent when there is a conflict. Patent interferences are litigation‑like proceedings in the USPTO to determine who is the first inventor where two or more applicants are claiming the same invention.

Fortunately for most clients, interferences are relatively rare - less than one percent of all patent applications are the subject of an interference. Our lawyers have handled a number of patent interferences, some highly contentious and bitterly contested.

Freedom to Operate, Opinions, Validity, and Infringement Studies

Freedom to operate studies help clients find a clear path to making and selling their products and are essential in any patent-intensive industry.

Clients occasionally encounter patents that appear as a roadblock to product development or receive cease-and-desist letters demanding cessation of alleged infringement.

When put “on notice” of possible patent infringement, clients should consider asking our firm to conduct an infringement or invalidity study to provide, if possible, a non-infringement or invalidity opinion. The lack of such an opinion is a major factor considered by courts when deciding to impose increased damages - up to treble damages - for willful infringement.

A non-infringement opinion usually requires review of the subject patent’s file history and involves a detailed consideration of the accused product (whether proposed or present). The firm can assist clients in “designing around” problem patents by making changes to a product to avoid infringement.

An invalidity opinion is usually based on prior art discovered in a validity search (prior patents or technical literature) on prior art in the form of products on sale more than one year, or technical publications over one year old.

Licensing and Other Asset Transactions

Patent portfolios can produce significant revenue streams for clients having commercially valuable technology. Our lawyers have extensive experience in drafting and negotiating license agreements, as well as evaluating and revising license agreements proposed by third parties.

Patents, which are a form of intangible property, can serve as collateral for loans and other types of secured transactions and can be bought and sold. Financial institutions sometimes require patent owners to pledge their IP assets in financial transactions. Our lawyers often assist clients - both lenders and borrowers - in structuring transactions to accomplish their technology asset management objectives.

Our firm can recommend, draft and negotiate all types of licensing and security agreements, including exclusive, non‑exclusive, field‑of‑use, territorial, know‑how, combined patent/copyright (for computer‑based technology) and foreign.

International Patent Services

Some clients elect to pursue patent protection for their technology in foreign countries. Our firm helps clients protect their technology in almost every country having a patent system. In addition, the firm assists companies located outside of the U.S. in filing and pursuing U.S. patents.

Morris, Manning & Martin maintains a network of foreign associate attorneys in all commercially significant countries. When intellectual property advice is needed about the laws of any country, our lawyers often can find the answer internally or can obtain the needed advice by a foreign associate.

Because different countries have different patentability standards, it is important that arguments for patentability made in one country are consistent, to the extent possible, with arguments made in other countries to avoid issues of enforceability. Our lawyers work closely with foreign associates in selected countries to maintain consistency in a client’s patent portfolio.

Most foreign countries have a system of annuities to keep patents and patent applications in force (as contrasted with “maintenance fees” in the U.S.). Our firm utilizes an annuity docketing system and the services of various international annuity payment services to keep track of due dates and payments for foreign patent annuities. Annuities, like foreign filing fees and foreign associate legal fees, must generally be paid in the currency of the foreign country. Our firm offers clients the option of establishing an escrow account for the purpose of paying foreign annuities and other fees, thereby relieving the client of the trouble and expense of making foreign currency payments.

Morris, Manning & Martin also can provide foreign patent searching services in select countries. Searches can be conducted in most commercially significant countries with online patent databases on short turnaround, if needed. In other cases, foreign associates are utilized for searching services.

Intellectual Property Acquisitions - Audits - Due Diligence Reviews

When a company plans to acquire new technology from a third party, our firm can assist in the evaluation process by conducting an intellectual property audit or “due diligence” review.

A review of the intellectual property assets in question often can reveal hidden strengths of the assets, as well as weaknesses that lead to negotiations for a lower purchase price, or indemnity provisions to mitigate risk, or, on occasion, cancellation of the transaction.

Due diligence reviews also are conducted preparatory to public or private offerings of securities, licensing transactions, or secured transactions involving patents as assets. Our lawyers have extensive experience in conducting due diligence reviews and working closely with transactional lawyers on the client’s team to coordinate all aspects of the transaction.

Intellectual Property Valuation Assessment

Companies with intellectual property assets, such as patent portfolios covering critical areas of technologies developed by the company or licensed from third parties, usually enjoy increased valuation in venture capital financing transactions, public securities offerings, and mergers or acquisitions. Valuation of “intellectual capital” includes valuation of both intellectual property and personnel assets. Our lawyers have experience counseling clients in valuation determinations for purposes of negotiating corporate transactions. We work closely with the client and financial advisors, such as accountants, M&A experts, and underwriters to help ensure that the value of the intellectual property assets is taken into account when arriving at a corporate valuation.

Management of Intellectual Property Programs

Our lawyers can assist management in preparing and recommending employment agreements, invention assignments, disclosure document programs, research and development notebooks and other invention records. Our lawyers can present in‑house seminars on procedures involving the development of inventions, searching and analyzing search results, preserving evidence of conception and reduction to practice, preparing patent applications and other aspects of the patent process.

Upon request, our lawyers can prepare and deliver presentations about a client’s patent portfolio, in coordination with R&D managers, to prospective investors, management and boards of directors. Periodic portfolio reviews and presentations can help technology‑based companies maintain a proper focus on the R&D process, as well as a cost-benefit analysis patent program.