Patent Prosecution

Jackson Walker adds value to intellectual property

Click here to view a chart detailing the areas of expertise of our registered patent attorneys and agents

While Jackson Walker's client representation ranges from single inventors to large companies to universities, our goal for each client is always the same: to guide our client through the maze of regulations and procedures involved in obtaining a patent so as to secure a patent commensurate with the goals and business strategy of the client. In this regard, our attorneys assist clients to develop intellectual property portfolios that serve specific business objectives so as to yield clear strategic returns. In many cases, this means seeking the broadest claims to which an invention is entitled so as to foreclose competitors from market share. In other cases, this may involve the filing of defensive patents to ensure that a client can operate in a space uninhibited by their competitors. As corporate initiatives are increasingly driven by intellectual property, the quality of patent prosecution advice rendered to a client can have enormous financial consequences.

Areas of Expertise

Jackson Walker attorneys' expertise affords our clients the fullest range of patent prosecution services and capability to render such advice:

• Preparation and filing of provisional and non-provisional patent applications
• Comprehensive patent prosecution services in the U.S. for utility, design, and plant patents
• Prosecution of international patent applications under the Patent Cooperation Treaty ("PCT")
• Coordination of patent prosecution in foreign countries and regions
• Counseling on "shop rights"
• Prosecuting interference contests to resolve priority in invention
• Patent appeals to the Patent Trial & Appeal Board of the U.S. Patent Office
• Filing and prosecution of reissue applications and reexamination requests and defending patents in reexamination proceedings
• Rendering legal opinions on the strengths and weaknesses of patents
• Rendering legal opinions on patentability, right-to-use, validity, enforceability, and infringement
• Patent infringement litigation in all federal courts
• Patent appeals in the Federal Circuit and the U.S. Supreme Court
• Patent litigation in the ITC and other specialized tribunals
• Patent portfolio audits, counseling, and management
• Post-grant review for patents issuing from applications filed after March 16, 2013
• Inter partes review
• Supplemental review, which can be used to "cure" inequitable conduct
• Transitional Program for Covered Business Method Patents
• Derivation proceedings and pre-issuance submissions

To permit our clients to build a patent portfolio that is integrated with their business strategies, we seek early on to understand the strategic goals of each client. We also counsel our clients on how to best build a portfolio that maximizes both core technologies and non-core technologies. Likewise, we counsel clients on processes and procedures for identifying potentially patentable technology and prioritizing inventions based on the strategic goals. (Click here for "R&D Tax Credits Memorandum")

We also work with our clients to ensure they and their employees—inventors, engineers, professors, graduate students—understand the patent process and follow policies and guidelines that protect against inadvertent loss of rights in an invention. In this regard, we routinely conduct industry and in-house seminars on the patentability process, including procedures on documenting conception of an invention, limitations on public written disclosures of the invention (such as in marketing materials or research papers), use of diligence in pursing an invention, and the disclosure requirements necessary to ensure that any issued patent is as defensible as possible.

One critical component to developing a patent portfolio with the greatest possible value to a particular client is to monitor the direction of research and types of patents that are being filed. All too often, companies expend resources pursuing non-core technology that does not fit into any identified strategy of the company.

In another regard, we assist our clients in assessing possible commercial return on investment in the inventions for which patents are sought. Owners of intellectual property rights must insure that they do not fall into the trend of expending a significant amount of resources that only yield incremental increase in the owner's patent portfolio. It is crucial to consider how a patent is to be utilized:

• Develop business assets, products, and services
• Generate licensing revenues
• Discourage litigation from competitors ("Defensive Patents")
• Create and strengthen alliances with other companies

Of course, these considerations must be carefully balanced with the scope of claims available for patent protection and the realities of commercialization, licensing, and litigation.

The firm provides patent prosecution and counseling services in a wide range of technical and business areas, in almost every industry, and in both the retail and commercial markets, including consumer products, pharmaceuticals, life sciences and medical technology, manufacturing, oil and gas, energy, automotive, power generation, financial services, computers, and telecommunications. Members of our intellectual property group offer patenting expertise in the following specific areas, among others:

Medical
• Aortic perfusion catheters
• Biomedical equipment
• Biotechnology
• Biochemical
• Cardiology
• Catheters
• Chemical/Chemistry
• Chemistry - analytical and immunological testing
• Medical Prosthesis
• Methods of medical/surgical procedures
• Methods of medical treatment, detection, diagnosis, and prophylaxis
• Molecular Biology
• Microbiology
• Neurosurgery
• Ophthalmology
• Orthodontics
• Orthopedics
• Pacemakers
• Pharmaceutical
• Radiation imagery chemistry
• Surgical instrumentation

Electrical
• Aircraft communications systems
• Analog signal processors
• Battery or capacitor charging and discharging
• Digital signal processors
• Electrical audio signal processing systems and devices
• Electrical cabinets
• Electrical generators
• Electrical lamps and discharge devices
• Electrical measuring and testing systems
• Electrical resistors
• Electrical power supply or regulation systems
• Electrical transmission or interconnecting systems
• Electronic circuits
• Electric motive power systems
• Oscillators
• Silicon waiver processing
• Sensors
• Semiconductors
• Semiconductor manufacturing, processing and equipment
• Tuners
• Wave transmission lines and networks

Chemical
• Acrylate and methacralyate monomer manufacturing processes
• Biodegradable dispersants
• Biodegradation of ethers
• Chemical reactor enhancements
• Consolidation treatments for subterranean formations
• Corrosion reduction techniques
• Downhole cementing mixtures and processes
• Downhole stimulation and treatment fluids
• Emulsion separation techniques
• Enhanced downhole fluid recovery techniques
• Environmental recovery and reuse of discarded materials such as rubber tires
• Environmentally benign waste water treatment processes
• Heat exchanger design
• Optimization of reactor catalysts
• Paint stripping compositions
• Polymer inhibition enhancements
• Relative Permeability modifier fluids
• Styrene monomer manufacturing processes
• Thermal oxidizer operations for the treatment of waste gases
• Viscoelastic surfactant fluids and gelling agents

Telecommunications/Internet/Computers
• ADSL Modems
• Analog/digital signal processing
• Business methods
• Communications
• Computer software
• E-commerce
• Instrumentation
• Internet protocol networking
• Telecom

Mechanical
• Ammunition and explosives
• Boilers
• Brakes
• Bulk food preparation
• Ceramics
• Conveyors
• Distillation
• Down hole tools
• Gas separation
• Glass manufacturing
• Heat exchange
• Internal combustion engines
• Law enforcement
• Load structure processes and apparatus
• Lubrication
• Machine elements or mechanisms
• Manufacturing
• Measuring and testing
• Metal deforming
• Oil drilling and well bore completion equipment
• Offshore structures
• Optics
• Packaging equipment
• Personal security devices
• Power plants
• Pre-cast concrete retaining walls
• Pre-cast concrete traffic barriers
• Pressure relief devices
• Refrigeration
• Sports equipment
• Static structures
• Traffic barriers
• Underground storage vaults
• Valves and valve actuation

Other
• Plants
• Design patents