How is it that we can converse in almost any technology about most any patent issue? Our team members hold diverse and oftentimes advanced technical degrees, including in microbiology and molecular biology, biochemistry and polymer chemistry, biomedical engineering, chemical engineering, civil engineering, electrical engineering, and mechanical engineering, genetics, medicine, pharmacology, and physics.
Our skilled attorneys, patent agents, and scientific and technical advisors devote their practices to patent prosecution, counseling, opinions, agreements, and diligence matters.
Counseling
Leason Ellis’ attorneys bring clarity and strategy to intellectual property law. Counseling is imbued in everything we do. Our professionals bring a remarkable breadth of knowledge about every aspect of IP law and are able to apply it to help advance the business interests of our clients.
Beyond our technical acumen, what makes Leason Ellis attorneys so effective is the depth of trust our clients place within us when it comes to putting their issues in perspective, solving the hardest problems, and making better decisions on how to protect their inventions and innovations. That is why companies large and small hire us as their trusted advisors.
Due Diligence
Acquiring or investing in a new venture or growing company can be an exciting, yet risky, endeavor.
Leason Ellis assesses IP risks and provides comprehensive insight into the target company’s IP assets through our enhanced diligence process. The combination of our deep technical and scientific expertise and our sophisticated patent prosecution experience enables us to: (1) fully understand the target company’s technology, (2) meaningfully evaluate the strength of the patent assets as applied to the core technology, and (3) handicap patent infringement risk by conducting targeted freedom to operate studies.
We also undertake analyses of entire portfolios to locate gaps in patent coverage, uncover new opportunities, and provide services to help determine the proper value of a single patent or an entire portfolio.
Filing and Prosecution
Our patent attorneys have obtained thousands of issued patents to serve as arrows, shields and currency in our clients’ arsenals. Whether drafting and filing new patent applications, or advocating for our clients throughout the patent examination process, both domestically and throughout the world, we work closely with inventors, technical personnel, and client management teams to ensure that all aspects, features, and details of the invention are faithfully captured and represented throughout. We not only file patent applications, we also prosecute them before the U.S. and foreign patent offices to obtain issued patents with the broadest available coverage.
License Agreements
We advise our clients in a wide range of patent licensing matters from simple license agreements, to cross-licensing agreements, collaboration and joint development agreements.
Whether representing the licensee or the licensor, we are able to negotiate and draft practical and effective business-oriented license agreements without unnecessary legal jargon.
Market Clearance / Freedom to Operate
During the course of technology and product development, “freedom to operate” searches may help avoid infringement on “in-force” patents.
After searching, we provide risk assessments relating to the possibility of infringing granted patents and pending applications. We assess the strength of non-patent disclosures in the public domain (that might, say, shield a product from claims of infringement), and work closely with our clients to navigate and design around existing patents in order to avoid potential infringement.
Patent Watch Services
After a client has secured a patent, or a freedom to operate opinion, our attorneys can act as sentries and continue to monitor the latest developments in a given field or area of technology.
Leason Ellis can track competitors’ patent filings (sneaky, but permissible) and determine if they pose a developing challenge to a client’s business. We can also keep track of patents and applications directed to technologies of interest, and update the client if they become abandoned, rejected or expired—a nifty set of services designed to empower patent stakeholders.
Reexamination
Leason Ellis is one of the foremost firms in the area of patent reexamination, with a successful track record in connection with high-stakes reexamination matters in a number of technology areas. While prior results do not necessarily guarantee a similar outcome, our experience brings sophistication and savings that benefit our clients.
Reissue
Like a reexamination, a reissue proceeding can be started in the U.S. Patent Office and Trademark Office (USPTO) after a patent issues. It can only be started by patent owners, and it can determine the patentability of the claims of the issued patent on grounds beyond prior patents and publications. If filed within two years of issuance, it can result in broader claims. Leason Ellis has significant experience in this type of post-grant USPTO proceeding.
Searching
Before filing a new patent application, it’s sometimes prudent to know whether a similar idea has already been described in patent and non-patent literature. That’s where patent searching comes into play.
We utilize patent search results to provide well-grounded opinions on the patentability of new inventions and how best to tailor the claims of the patent to obtain the broadest protection possible.
