Patent Prosecution

Clear guidance in the changing patent landscape

We have entered a new era in patent protection. Recent U.S. Supreme Court and Federal Circuit cases have scaled back the rights of patent holders and applicants. Additional legislative and patent office rule changes are expected, and they may significantly alter patent prosecution strategy. At Finnegan, we see these developments as an opportunity to think creatively. You need a focused approach and experience on your side to obtain the best possible protection. We apply our experience to your advantage. Nearly 60 of our professionals have served as patent examiners at the U.S. Patent and Trademark Office. The insights of these professionals, along with their deep technical backgrounds, enable us to advise you on the best path to protect your valuable IP assets. 

Your innovations drive change. We help protect them.

Finnegan has both the focus and breadth of talent to protect your most important IP assets. We practice in virtually every area of intellectual property law and bring a meticulous comprehension of the ideas we protect, advocate, and leverage. Our patent prosecution practice prides itself in delivering solid protection for some of the most complex and significant innovations that shape advances in business and science.

More than 90 of our professionals hold Ph.D.’s in disciplines ranging from neurobiology to electrical engineering. We have assisted businesses and organizations in industries as diverse as consumer goods, pharmaceuticals, aerospace, medical devices, and agriculture to name a few. We regularly join brainstorming meetings with our clients and inventors. Our deep understanding of the technology allows us to build strong, defensible patents. We work with our clients to build effective patent strategies, from idea to issuance and beyond.

Your ideas are global. So is our network.

Inventiveness and risk taking must be rewarded both in the United States and abroad for a company or organization to prosper. Our offices in Asia and Europe and our professional relationships with over 200 firms throughout the world help our clients obtain patent protection in other countries and help our international clients obtain patent protection in the United States. 

Areas of patent prosecution

We work with clients to devise effective strategies, from assessing needs for patent protection through defending patents in court. Our patent prosecution practice covers all areas of patent law, including:

• Application preparation, filing and prosecution strategies: 
  • Utility, plant, and design inventions
  • U.S. and foreign protection, including practice under
    the Patent Cooperation Treaty (PCT)
• Administrative appeals
• Interferences
• Petitions and protests
• Reissues 
• Reexaminations (inter partes and ex parte)
• European oppositions 

Beyond the patent

As your needs evolve, Finnegan brings experience in patent transactions, due diligence, portfolio management, opinions, and counseling.

The strongest and best patents are less likely to be litigated. But should your protection be challenged or infringed, Finnegan brings proven experience and an impressive track record. Finnegan is consistently ranked as one of the top U.S. law firms for intellectual property services: #1 or #2 Tier U.S. Law Firm for Patent Contentious and Prosecution Work, 2005-2012 (Managing Intellectual Property) and #1 Tier U.S. Law Firm for Intellectual Property, 2007-2011 (Chambers USA). In addition, our lawyers have argued more IP cases before the U.S. Court of Appeals for the Federal Circuit than any other law firm. More than 40 of our lawyers are former clerks of the Federal Circuit or its predecessor courts. And several of our lawyers have argued cases before the U.S. Supreme Court.

We work with diverse innovators

Finnegan regularly partners with companies and organizations of all sizes, from innovative start-ups to global leaders across all industries. 

Representative clients include:

• Accenture
• AstraZeneca
• Boston Scientific
• Caterpillar Inc.
• Eastman Chemical Company
• Elan Corporation
• FivePrime Therapeutics, Inc.
• Imerys
• Intertrust Technologies
• Nuvera Fuel Cells, Inc.
• Research in Motion
• SAP AG
• Sony Corporation
• Takeda Pharmaceutical Company
• Toshiba Corporation