Patent Counseling and Prosecution

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Dechert’s patent counseling and prosecution practice provides comprehensive, long-range strategic advice on protecting and enhancing IP positions to deliver competitive advantage and maximize value. Our services extend from ensuring adequate and proper IP documentation and disclosure to patent prosecution, protection, licensing and enforcement.

We focus exclusively on the life sciences, chemical and medical technology industries, representing pre-public and discovery stage biotechnology, chemical and pharmaceutical firms as well as established, publicly traded international pharma and medical device companies. Our strategic advice is informed by years of industry knowledge and experience as well as significant scientific and technical acumen. A majority of our patent counseling lawyers have Ph.D., M.D. or other advanced scientific degrees, and a number have postdoctoral research experience in academic or industrial settings.

Our lawyers’ credentials and experience enhance their ability to liaise with our clients’ scientists, executives and legal teams to assure that the firm’s research and development aligns with its business objectives, to optimize the competitive advantages and revenue opportunities presented by IP and to overcome any IP barriers to innovation. Our lawyers’ solid background in science and technology and extensive experience in IP counseling and prosecution also enhance our ability to provide superior advice on issues relating to proper documentation and disclosures and to draft and prosecute to issuance all necessary patent applications.

Leading legal referral guides recognize our expertise. In Chambers USA’ s “nationwide life sciences” rankings, it selected us as a top law firm, noting our “good reputation for contentious IP.” Chambers also included Dechert partner Dr. Ann M. Caviani Pease, chair of our Life Sciences/Pharmaceutical Group, among the nation’s leading lawyers in “nationwide life sciences: IP/patent litigation.” The Legal 500 (U.S.) also has praised our “outstanding IP transactional team” and Best Lawyers in America has recognized a number of our lawyers as standouts in intellectual property, biotechnology and technology law.

Another key strength of our practice is our ability to perform insightful IP portfolio reviews and provide business-oriented guidance. We identify opportunities to exploit and maximize IP value through enhanced protection and creative licensing and royalty arrangements that will advance or protect a client’s market position, fuel its business growth or incorporate into its investment strategy. We also help clients mitigate risk, counter competitor challenges and comply with regulatory requirements.

In addition to handling patent filing, claiming and prosecution, we advance and defend our clients’ interests in reissue, reexamination, interference and opposition proceedings. We also perform invalidity, non-infringement and freedom-to-operate analyses and, for our pharmaceutical clients, formulate early defenses against potential ANDA filers.

In conducting IP portfolio reviews for companies that are considering acquiring or investing in intellectual property, we bring a seasoned ability to identify potential problems concerning the targeted IP—knowledge which we can then leverage to negotiate more favorable deals and to recommend value-enhancing solutions. We also assist clients in identifying, assessing and pursuing funding options.

Working collaboratively with our IP transactional lawyers, we help clients manage their IP to achieve its full potential by assessing, through market research, a transaction’s short- and long-term potential, and then structuring licensing deals to afford our clients maximum permission and ownership provisions to protect a future position. We regularly handle a full range of IP transactions, including strategic alliances, co-promotion agreements, discovery-and-development licenses, co-development arrangements, acquisitions, and exclusive provider and distribution deals.

Our patent counselors and trial lawyers partner to develop complex enforcement and defense strategies in multi-party suits, as well as strategies that exploit proceedings running concurrently in U.S. courts and the U.S. Patent and Trademark Office. We have represented clients in interferences, both as stand-alone matters and as adjuncts to complex litigations and foreign oppositions, involving a broad range of technologies.