Preti Flaherty’s Intellectual Property Group works with clients to develop creative and cost-effective strategies for securing, maintaining, commercializing, and enforcing rights in patents and other intellectual property in the United States and throughout the world. Our goal is to help clients make sensible decisions on intellectual property issues based on a solid understanding of those issues and their business implications. By applying our extensive legal and technical experience to their intellectual property needs, we provide businesses with a competitive edge and help them monetize valuable assets.

Our clients range from multinational corporations and major research institutions to start-ups and entrepreneurs. We understand that intellectual property issues must be viewed in the context of where the client is now and where the client wants to go. Our team has extensive experience in finding solutions to help clients meet a wide variety of needs.

Patent Prosecution
Preti Flaherty’s patent attorneys prepare and prosecute U.S. and international patent applications in all technologies. The technical understanding and sophistication of our attorneys allows them to efficiently prepare patent applications in the most complex technologies and provides the quick understanding necessary to assess protectability in urgent situations. As need arises, reissue and reexamination proceedings are also regularly handled by the firm.

Our patent team prepares and prosecutes patent applications in all major countries of the world through long established relationships with our counterparts in other countries. We are especially active in the fields of electronics, mechanics, biotechnology, medical devices, computer systems, software, electro-optics, materials and chemistry. Our team is composed of many attorneys with advanced technical degrees who have had active careers as engineers or technologists.

Our attorneys provide strategic counsel to their clients by conducting patent infringement and patent validity studies and advising on portfolio management issues in a wide variety of sophisticated technologies. We regularly conduct extensive prior art investigations of national and international scope.

Another important aspect of our patent practice is our experience working with clients in instituting effective patent policies and procedures to support key objectives. This often includes the establishment of a corporation patent committee or other mechanism for the evaluation of invention disclosures submitted by employees and consultants of the client companies.

Technical Experience
Preti Flaherty’s Intellectual Property Group brings decades of experience in both the technical and legal aspects of technology development and IP asset management. Most members of our group hold at least one technical degree and several hold advanced technical degrees. Our attorneys have technical backgrounds in fields such as:

  • Biotechnology
  • Chemical engineering
  • Computer systems
  • Electro-mechanical devices
  • Electronic devices & systems
  • Environmental science
  • Materials
  • Medical and laboratory devices
  • Physics and mechanics
  • Semiconductors
  • Software
  • Structures

Licensing & Other Agreements
The Preti Flaherty patent law team understands the practical world of high technology and has extensive experience and expertise in the negotiation and preparation of intellectual property and technological agreements. We help to ensure that intellectual property rights, including trade secrets and know-how, are honored by drafting appropriate agreements.

We draft and negotiate a wide variety of intellectual property agreements, including:

  • Patent and Know-how License Agreements
  • Development Agreements
  • Agreements for the License or Transfer of Trademarks and Copyrights
  • Employee Patent, Copyright and Trade Secret Agreements
  • Consulting Agreements
  • Research and Development Agreements
  • Joint Venture Agreements
  • Confidential Disclosure Agreements

Patent Clearance Studies & Opinions
Our patent attorneys regularly perform patent clearance and freedom-to-operate studies and provide opinions on infringement, validity and ownership issues relating to patents as well as other intellectual property rights.

Patent Litigation
When necessary, we have cleared the way for client’s operations at home and abroad through negotiation with and litigation against those who violate clients’ intellectual property rights or claim conflicting intellectual property rights. Our Intellectual Property Group has substantial litigation experience before the U.S. Patent & Trademark Office, federal courts and, in association with foreign counsel, foreign courts and patent and trademark offices. We work with clients to develop litigation strategies designed to secure the desired result as quickly and cost-effectively as possible and we have an excellent track record in this and many other types of litigation.

Other Intellectual Property Matters
Our attorneys serve as strategic counselors to a wide array of business and organizations on all facets of intellectual property law. Preti Flaherty has an extensive trademark and copyright practice and assists clients with the full range of portfolio management, portfolio development, prosecution and licensing of these assets. Our team has extensive experience in helping clients protect a and develop the value of a broad range of IP assets.