Patents

The Intellectual Property (“IP”) group is a major focus of the firm and includes a team of attorneys, paralegals, full-time docketing professionals and numerous other staff to support the diverse business needs of our clients. Of the attorneys within the practice, over 30 are patent attorneys with backgrounds ranging from chemistry/biotechnology to electronics and software to mechanical engineering.

Our attorneys work together in efficient, appropriately staffed teams to meet the individual needs of each client. Most of our patent team leaders have at least a decade or of patent law experience and can provide counsel in patent applications, prosecution, opinions, litigation and portfolio transition management. Lastly, our dedicated docket team uses market-leading software to manage more than 10,000 active matters.

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Calfee’s IP practice is firmly focused on patent prosecution, opinion work, and counseling.  Our patent prosecution experience runs the gamut including, for example:

  • Preparation and filing of provisional and non-provisional patent applications;
  • Prosecution of utility and design patent applications;
  • Appeals and oral arguments to the Board of Patent Appeals and Interferences;
  • Continuation and divisional practice;
  • Ex Parte and Inter Partes Reexaminations; and
  • Foreign patent prosecution assistance, including oppositions;

Our patent prosecution practice has significant experience with many types of patent prosecution strategies.  We understand that disruptive or core technologies may require prosecution strategies different from incremental or sustaining technologies.  Our patent prosecution practice also has significant experience with high-volume, fixed fee patent strategies.

Opinions

Calfee’s patent practice is regularly called on to provide a spectrum of opinions.  These include defensive opinions, such as non-infringement and invalidity opinions.  Calfee is also called upon to provide Rule 11 analyses and opinions regarding a third party competitor’s  infringement of our client’s patents.  Calfee is also routinely asked to provide second opinions of other firm’s patent opinions.

Calfee’s opinion work is centered around potential new product launches in crowded mechanical, chemical or electrical/software arts.  In this regard, Calfee has developed various strategies for searching and analyzing a wide range of patent landscapes to meet available client budgets.

Calfee further employs a two-attorney review of all opinions to ensure that all reasonable positions have been considered.  One of these attorneys is typically an experienced patent attorney litigator, who brings a litigation perspective to the opinion process.  Calfee’s opinions have taken a wide range of forms, including formal written work product (ranging from being more summary to extremely detailed in nature), graphical (e.g., Power Point) presentations, and combinations of the foregoing.

Counseling

Along with opinions, Calfee’s patent practice is routinely called upon to provide counseling on a wide range of matters, including competitive patent portfolio analyses and threats, design-around, non-infringement, invalidity positions, as well as due diligence for patent-related mergers and acquisitions.  For new business ventures or new product designs, our patent practice has significant experience analyzing competitor patent portfolios and counseling business unit leaders on associated risks and design-around alternatives.  Calfee’s patent practice is relied upon daily by many Fortune 1000 companies.

Patent Litigation

Calfee’s patent practice includes a bench of patent attorneys with deep litigation experience.  This experience includes all aspects of patent litigation including discovery, claim construction, summary judgment, trial, and appeals to the Court of Appeals for the Federal Circuit.  Calfee’s patent litigators are involved in offensive and defensive client representations in a wide range of technologies in the mechanical, electrical, software, and chemical arts.

Docketing Capabilities

Calfee’s patent practice includes a sophisticated docket team and system.  The team includes 5 full-time docket professionals that continually interface with a commercial IP docket/management  system.  Currently, the docket system includes over 10,000 active matters.  Those active matters include over 2,500 pending patent applications and 6,600 granted patents worldwide.  Our docketing team also has experience with large transfers of entire patent portfolio’s, including the recent addition of over 2,500 matters for one client.

On a daily basis, all incoming and outgoing correspondence is routed through the docketing department to ensure all relevant information is communicated and properly recorded.  Reportable events and other actions taken by any team member are docketed daily.   Every week, each team member receives a list of all matters docketed for action in the coming six week period.  Each team member also receives daily reminders from the docket department concerning matters with deadlines for which action has not yet been taken.

On the technology side, Calfee uses a market-leading docketing software system employing various industry standard components to create an “open” architecture supporting efficient data exchange.  As a result, we can provide clients with specific docket information and reports on their IP portfolio in numerous formats and as often as desired.

Portfolio Transition Management

Calfee has a large amount of experience in managing the transfer of large patent portfolios in various stages of prosecution or maintenance.  In recent years, we have received and successfully integrated into our practice the patent portfolios (both domestic and foreign) of a number of large and small clients.