Patent Prosecution

While our clients range 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 that aligns with the goals and business strategy of the client.

We assist our clients in developing intellectual property portfolios that serve specific business objectives. 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 includes filing for defensive patents to ensure that a client can operate in a space uninhibited by their competitors. 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.

As corporate initiatives are increasingly driven by intellectual property, the quality of patent prosecution a client receives has enormous financial consequences. We have what it takes to make our clients succeed.

We provide 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. Our attorneys are well versed in the following areas and technologies:

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

William R. Borchers

William R. Borchers

Partner, San Antonio
210.978.7723

Raman N. Dewan

Raman N. Dewan

Partner, Austin
512.236.2013

Temple Keller

Temple Keller

Senior Counsel, Austin
512.236.2036

Mark H. Miller

Mark H. Miller

Partner, San Antonio
210.978.7751

Brit Nelson

Brit Nelson

Partner, Houston
713.752.4419

Wasif Qureshi

Wasif Qureshi

Partner, Houston
713.752.4521

Dan Smith

Dan Smith

Partner, Dallas
214-953-6140

Cline H. White

Cline H. White

Senior Counsel, San Antonio
210.978.7783

Dan Smith

November 30, 2023
Attorney News

Dan Smith’s Move to Jackson Walker Named a Top 3 PTAB Lateral Move of 2023 by Patexia

Patexia has listed Dallas partner Dan Smith’s move to the firm as one of the top three lateral moves of 2023 of attorneys who focus on Patent Trial and Appeal Board (PTAB) proceedings. The rankings were released as part of Patexia’s PTAB Intelligence Report covering trends, patterns, and shifts within the PTAB domain.

Brit Nelson and Wasif Qureshi

July 28, 2023
Attorney News

‘Managing IP’ Recognizes Brit Nelson, Wasif Qureshi, and Jackson Walker’s Patent Prosecution Team in 2023 Edition

Managing IP has recognized Brit Nelson and Wasif Qureshi as 2023 Patent Stars in Texas and on the national level, and has also named Jackson Walker as a recommended law firm in Texas for patent prosecution.

Arthur Gollwitzer with Jackson Walker logo

September 24, 2021
Mentions

Arthur Gollwitzer Discusses Federal Circuit Decision in Patent Suit Involving Foreign Company

Following a decision by the Federal Circuit Court of Appeals to deny a mandamus petition by Chinese smartphone manufacturer OnePlus Technology, Law360 spoke with Jackson Walker partner Arthur Gollwitzer about the case.

Brit Nelson and Wasif Qureshi

July 14, 2021
Attorney News

‘Managing IP’ Recognizes Brit Nelson, Wasif Qureshi, and Jackson Walker’s Patent Prosecution Team

Managing IP has recognized Brit Nelson and Wasif Qureshi as 2021/22 “IP Stars” for Texas, and has named Jackson Walker as a recommended law firm in Texas for patent prosecution.

D Magazine Best Lawyers in Dallas 2021 (May 2021)

April 28, 2021
Attorney News

‘D Magazine’ Names 23 Jackson Walker Attorneys Among “Best Lawyers in Dallas” for 2021

Jackson Walker congratulates the 23 attorneys recognized among D Magazine’s list of the “Best Lawyers in Dallas” for 2021.

John Jackson with Jackson Walker logo

December 8, 2020
Mentions

Violate My Patents? See You in Texas | The Texas Lawbook

With an estimated 1,500 patent infringement lawsuits expected to be filed in 2020 in U.S. district courts in Texas, John Jackson spoke with The Texas Lawbook about the COVID-19 pandemic and its impact on patent disputes as hearings have moved to an online forum.

June 22, 2018
Insights

The Supreme Court Has Blessed International Lost Profits

Although the U.S. may have the largest markets for some products, there is little doubt that international markets collectively dwarf those domestically in some industries.

June 12, 2018
Mentions

‘Law360’ Quotes Wasif Qureshi on Impact of TC Heartland Decision

Last year, in TC Heartland LLC v. Kraft Foods Group Brands LLC, the U.S. Supreme Court placed tighter restrictions on where patent owners can file infringement lawsuits.

More Patent Prosecution News

We regularly handle all areas or patent prosecution, including:

  • Preparation and filing of provisional and nonprovisional 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 and Appeal Board (PTAB) of the U.S. Patent and Trademark 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 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

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