Patent Prosecution and Counseling

Companies need sound strategies to procure and protect their intellectual property and increase their value. Many firms register patents, but Orrick’s IP team formulates long-term protection plans based on experience gained at the PTO, in co-development and licensing discussions, and at trial. Every attorney at Orrick who prosecutes patent applications also has substantial litigation experience. This experience ensures that every patent application drafted by Orrick reflects the lessons learned in the courtroom. Nothing sharpens an attorney’s ability to be critical of patent prosecution work better than seeing whether patents prove to be enforceable in court—and if not, why not. An attorney who has witnessed the consequences during trial of a slipshod patent disclosure, an unnecessary limitation in a claim, or a careless concession to overcome a prior art reference, will forever after be vigilant against making such a mistake in his or her own patent prosecution work.

Orrick's IP lawyers, who were chosen by Law360 as an "IP Group of the Year," advise clients in procuring patents and trademarks and in IP protection strategies throughout the world. We help clients establish best practices during the inventive and patenting processes which will bolster the patent’s validity and scope. In addition, Orrick’s lawyers are well versed in patent reexaminations, and patent reissue proceedings as well as have experience in these Patent Office practice areas.

Representative clients include:

  • Acresso Software, Inc.
  • Agilent Technologies, Inc.
  • AltaRock Energy, Inc.
  • Azalea Networks, Inc.
  • Bausch & Lomb, Inc.
  • Bell Helicopter Textron, Inc.
  • Cadence Design Systems, Inc.
  • Easton-Bell Sports, Inc.
  • Elan Medical, S.A.S.
  • InstallShield Corporation
  • Life Technology Corporation
  • Macrovision Solutions Corporation
  • Naturex SA
  • Panasonic Avionics Corporation
  • Spinal Kinetics, Inc.

Contacts for Patent Prosecution and Counseling

Attorneys

Anthony, William L.
PartnerSilicon Valley (650) 614-7453
Brooks, James C.
PartnerLos Angeles (213) 612-2281
Cooper, Monte
Of CounselSilicon Valley (650) 614-7375
Daybell, Don
Senior AssociateOrange County (949) 852-7735
Feeman, Vickie L.
PartnerSilicon Valley (650) 614-7620
Heafey, Michael F.
PartnerSilicon Valley (650) 614-7645
Isackson, Robert M.
PartnerNew York (212) 506-5280
Liu, Zheng (Jen)
Senior AssociateSilicon Valley (650) 614-7699
Michel, Clifford R.
Of CounselNew York (212) 506-3678
Mingrone, Denise M.
PartnerSilicon Valley (650) 614-7682
Mulville, Kurt T.
PartnerOrange County (949) 852-7740
Passananti, Hardip B.
Senior AssociateOrange County (949) 852-7755
Rigatti, Diego
PartnerMilan + 39 02 45 41 3861
Shean, Mark J.
Senior AssociateOrange County (949) 852-7765
Stockwell, Davin
Of CounselOrange County (949) 852-7725
Stone, Samuel B.
Of CounselOrange County (949) 852-7790
Sutton, Theresa A.
Contract AttorneySilicon Valley (650) 614-7307
Tabler, William Benjamin
Senior AssociateNew York (212) 506-5284
Wang, David E.
PartnerSilicon Valley (650) 289-7181
Ward, Lisa C.
PartnerSeattle (206) 839-4340
Yan, Carol
Managing AssociateBeijing +86 10 8595 5733
Zhang, Shelley
Senior AssociateBeijing +86 10 8595 5668


Special Advisors*

Conner, Brenda Patent Agent** Orange County (949) 852-7798
bconnor@orrick.com
Leighton, Carl Scientific Advisor* New York (212) 506-5024
cleighton@orrick.com

*Special Advisors provide valuable support and guidance to our lawyers. They do not practice law.

**Patent Agents are licensed to practice before the USPTO.

 

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