Patent

In many industries, patents are the foundation upon which successful organizations are built. However, there are significant obstacles to the development and protection of valuable patent assets, and difficulties in navigating the minefield of other parties’ patents. We are adept at helping clients overcome these obstacles to obtain and leverage patent rights and to avoid patent infringement problems.

Patent Portfolio Development & Management

Morse patent professionals are experienced in all aspects of the development and management of patent portfolios in the U.S. and abroad, including:

• Working with scientists and management to create procedures for identification, documentation, and assessment of new ideas;
• Conducting prior art searches and providing patentability advice to aid in developing patent filing strategies;
• Drafting patent applications which extract maximum value from core inventions;
• Prosecuting patent applications before the U.S. Patent Office using efficient and creative strategies to obtain claims which support our clients’ business objectives;
• Collaborating with local counsel in countries worldwide to obtain patent protection in foreign jurisdictions;
• Counseling clients and affiliated personnel with regard to patent best practices and evolving law; and
• Reviewing activities and products of others to identify infringement of client rights.

Assessment of Patent Rights of Others

Clients are often faced with the question of what impact the patent rights of others may have on the client’s own activities or the activities of potential partners. We help clients answer these questions by:

• Conducting freedom-to-operate searches to identify third party patents and patent applications of relevance in the U.S. and abroad;
• Analyzing patent claims to determine their proper scope as an aid to design-around efforts;
• Reviewing proposed activities in view of third party patents to minimize risk of infringement, particularly during product development stage;
• Assessing identified patents for validity and enforceability; and
• Collaborating with local counsel in foreign countries to oppose key competitor patents.

Patent Opinions

Clients often need to obtain formal or informal opinions on issues of patentability, non-infringement, validity, and/or enforceability. We work with our clients to determine the type and formality of opinion appropriate for the circumstances, and we provide well-supported documents on which our clients can confidently rely in business transactions and contested proceedings.

Patent Due Diligence

A determination of the strength and value of patent assets is a frequent and important aspect of business transactions. We assist our clients in evaluating patent issues in connection with potential venture capital and private equity financings, public offerings, mergers & acquisitions, licensing transactions, and potential litigation.

Helpful Links

uspto.gov
wipo.org
patents.google.com
epo.org
autm.net
massbio.org