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Patent Office Examinations - Prosecution

Finnegan annually files approximately 2,500 U.S. and 1,000 foreign patent applications for utility, plant, and design inventions. We also file under the Patent Cooperation Treaty (PCT). The technologies at issue span nearly every industry sector, including semiconductors, medical devices, chemicals, metals, pharmaceuticals, biotechnology, industrial manufacturing, robotics, consumer electronics, computer software, and business methods.

Our patent prosecution practice includes recognized experts and seasoned professionals, as well as experienced junior team members with relatively low billing rates and often extensive technical and/or prosecution experience. They have science and/or engineering backgrounds, and many hold advanced degrees in their technical fields and/or have worked in the industry. Most of our professionals also have litigation experience that enables them to provide the highest quality work by prosecuting applications with an eye toward enforcement.

We train our professionals to draft and prosecute patent applications strategically and with the clients’ interests and instructions always at the forefront. We strive to add value from the invention mining/invention disclosure stage by collaborating with the client’s scientific contributors to set boundaries and to define the scope of the developed invention. We also seek to effectively communicate the achievements of our clients’ inventions to the USPTO and convey the boundaries and advantages of the inventions during the patent prosecution process. We distilled best practices from years of experience assisting clients with business decisions regarding their intellectual property and developed a proprietary system for understanding, developing, and using patent portfolios in a wide range of business decisions – the Finnegan Patent Portfolio Platform system. Contact us to learn more about the FP3 system.

Our priority is to employ teams that allow us to take a primary role in developing a valuable global patent portfolio in an effective and cost-efficient manner. Our professionals are well versed in the standards of patentability and patent procedures in foreign patent offices around the world. They are able to provide a well-coordinated, consistent, and comprehensive global prosecution strategy that maximizes patent protection and minimizes costs associated with foreign filing and prosecution. These efforts result in stronger foreign patents and reduce the risk of complications in any U.S. litigation that may arise involving a U.S. counterpart patent.