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Patent Prosecution

The preparation and prosecution of patent applications is a key focus of Edell, Shapiro & Finnan. In a typical year, we prepare and file hundreds of national and Patent Cooperation Treaty applications in the U. S. Patent and Trademark Office for our clients. We work with each client to develop a patent portfolio effective to meet the business goals of the client, whether the client is a Fortune 500 company with an extensive patent portfolio, or a start-up company striving to protect its innovations and gain a foothold in the marketplace. A well-designed patent portfolio serves as a barrier to competitors, as well as providing protection when approaching third parties in an effort to further business objectives. Having strong IP rights enables a company to control its assets and their exploitation.

Skilled Professionals

Our attorneys, agents, and technical writers possess a breadth of technical expertise and industry experience. Our patent prosecution professionals hold degrees in key technical fields, including electrical engineering, computer science, mechanical engineering, biology, chemistry, and chemical engineering. Many of our professionals worked as engineers or in-house counsel before coming to Edell, Shapiro & Finnan. Our professionals are registered to practice before the U.S. Patent and Trademark Office, with most of our attorneys having over a decade of experience in patent prosecution. It is this depth of education, technical expertise, and legal experience that enables us to analyze technical and legal issues in a results-oriented manner to achieve the goals of our clients.

Knowledge of and Access to the USPTO

Many of our attorneys previously worked as examiners at the U. S. Patent and Trademark Office. As a result, we understand the breadth of strategic options available during prosecution, as well as practical implications of policies and procedures within the Patent Office. With this knowledge, we are able to effectively navigate the U.S. Patent and Trademark Office and provide value to our clients.

Our offices are located near the U.S. Patent and Trademark Office, which allows us to quickly and easily conduct personal interviews with patent examiners, as well as access the resources of the Patent Office.

Services

National Prosecution

Our professionals represent clients before the U.S. Patent and Trademark Office by preparing and prosecuting patent applications on utility, plant, and industrial design inventions (including expedited and accelerated patent prosecution); preparing appeals and interferences for submission to the Board of Patent Appeals & Interferences; preparing petitions; and planning and executing strategic prosecution techniques in support of litigation.

International Prosecution

We provide a full range of international intellectual property services for patent protection outside the U.S. We have relationships with an extensive network of foreign law firms located across the continents that share our vision for providing reliable, cost effective services to clients. We trust these foreign associates to handle matters quickly and effectively. Our international services include preparation and prosecution of applications filed under the Patent Cooperation Treaty (PCT), the coordination and filing of foreign utility patent applications; coordination of foreign industrial design registration; and assisting in foreign opposition proceedings.