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Patent Office Examinations

With more than 50 years of experience handling all aspects of patent law, Finnegan has in-depth knowledge of the complexities and nuances of patent office examinations, from prosecution, reexaminations, reissue proceedings, and appeals to the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO), to handling all aspects of oppositions before the European Patent Office (EPO) and United Kingdom Intellectual Property Office (UK IPO).

Our practice includes 220 professionals registered to practice before the USPTO and nearly 50 former patent examiners. All have science or engineering backgrounds, and many hold advanced degrees in their technical fields or have worked in the industry. These professionals are supported by a substantial infrastructure of experienced personnel and systems developed to prepare, file, prosecute, and defend patents in a cost-effective manner.

We assist businesses and organizations in industries as diverse as consumer goods, pharmaceuticals, aerospace, medical devices, and agriculture, to name a few. Our professionals’ extensive technical backgrounds combined with decades of experience in patent law enable us to build solid patents and effective prosecution strategies, from idea to issuance and beyond. We are often involved at the initial stages of evaluating technology for patentability during brainstorming meetings with our clients and inventors, ultimately benefiting our drafting and prosecuting the patent applications. As our clients’ needs evolve, we bring experience in patent transactions, due diligence, portfolio management, opinions, counseling, and litigation. 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 before district courts, the U.S. International Trade Commission, the PTAB, and appellate courts.

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.

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.

Reexaminations

Finnegan attorneys have handled more than 270 reexaminations in the last five years. Under the America Invents Act (AIA), ex parte reexamination proceedings, which have unique rules and procedures, remain an important option to consider when challenging the validity of a patent. We are experienced in all procedural aspects of reexamination and regularly advise clients on litigation strategies that include reexaminations as offensive or defensive tactics. And as a recognized leader in reexaminations, other AIA proceedings, and patent litigation in district courts and before the International Trade Commission, Finnegan attorneys have an educated and distinctive perspective on how best to utilize the reexamination proceeding as part of an overall strategy for attacking a patent.

Reissue Proceedings

Patent reissue allows a patentee to correct a wide variety of errors in an issued patent if the error renders the patent partially or wholly inoperative or invalid. In the last five years, Finnegan has handled more than 100 patent reissue proceedings. Filing a reissue has associated risks and limitations, especially when attempting to broaden patent claims. Finnegan attorneys have extensive experience in mapping out a course of action in view of those inherent risks and limitations. We regularly counsel patent owners through the thicket of reissue challenges to achieve a cost-effective strategy that meets the goals for not only the patent at issue but also the client’s portfolio as a whole.  

Appeals to the PTAB

The PTAB has the authority to hear and adjudicate appeals from applicants on adverse patentability decisions in patent applications and patent reissues and reexaminations. The appeal process is triggered by filing a Notice of Appeal, proceeds with a briefing of the issue(s) by applicant and examiner with an optional oral hearing, and then concludes with a written decision by the PTAB. Applicant’s written and oral advocacy is not only a key to a successful appeal, but also understanding when to seek an appeal in prosecution, and keeping a watchful eye on enforcement issues. Finnegan attorneys understand the complexity and strategy involved.

Our experience spans from appeals in a multitude of technical fields with varying issues of contention. We also appreciate the impact that an appeal can have on a global patent portfolio along with its potential business implications. We draw on our collective experience to guide clients through appeals