patent prosecution, opinion

Patent Prosecution

McHale | Slavin has extensive experience in all areas of patent prosecution for matters before the U.S. Patent and Trademark Office (USPTO) and other patent offices throughout the world. Our firm handles patentability assessments, preparation of all types of patent applications, inventorship determination, assignments and worldwide filing of patent applications. We work with the client to develop a prosecution strategy best suited to the client's needs. In addition, we handle appeals, reexaminations, reissues and interferences. We work closely with our foreign associates in local prosecution, oppositions and appeals of foreign applications. This enables our client to gain and maintain protection of their intellectual property throughout the world.

Our firm couples strengths in all areas of intellectual property law with a depth of experience in all areas of technical subject matter to provide our clients with the highest caliber of counseling and opinions. Our staff includes several former USPTO examiners and a former Director of the USPTO Office of Petitions. These employees enable our firm to keep pace with the latest developments and policies in the USPTO.

Our patent prosecution services include:

  • Performing patentability and validity searches of the prior art.
  • Preparing patentability opinions.
  • Preparing provisional, non-provisional and design patent applications for filing in the U.S. and foreign countries.
  • Prosecution domestic and foreign patent applications.
  • Evaluating and preparing patent licensing agreements.
  • Preparing confidentiality agreements.
  • Evaluating and resolving inventorship issues.
  • Preparing and prosecution reissue and reexamination applications.
  • Prosecuting applications before the U.S. Board of Patent Appeals and Interferences.

Our firm's experience in intellectual property law, in conjunction with our knowledge of the technical subject matter, enables us to develop unique and successful prosecution strategies for both domestic and foreign patent applications. Our attorneys and agents have a depth and breath of technical and legal backgrounds that enables them to quickly and correctly grasp legal issues regarding complex legal technological issues without burdening our clients with getting us up to speed. This helps our clients maximize the value of their intellectual property assets. Contact us for additional information or to schedule a consultation.