There are now a wide variety of Post Grant Procedures available at the U.S. Patent Office, including ex parte reexamination, derivation proceedings, supplemental examination, inter partes review and post grant review. Each of these vehicles provides opportunities and challenges for patent owners and patent challengers alike, and each requires a unique set of skills to navigate successfully. Whether correcting a patent before trial, removing possible inequitable conduct defenses, establishing prior inventorship or as an alternative or adjunct to district court litigation, Lerner David has the tools and experience to guide you through these proceedings.
Our patent procurement philosophy is based not simply on obtaining a patent. Rather, utilizing our keen understanding and extensive experience in technology, patent office proceedings and litigation, we craft a patent strategy for our clients to build patent portfolios that have real world business value.
"When we need someone to really dig in and fight a good fight, we typically turn to Lerner David." This comment by the in‑house counsel for a Fortune 100 company reflects our firm's aim to achieve the business goals which gave rise to litigation in as efficient a manner as possible. We do not believe in fighting litigation battles merely because the battles can be won. Rather, our goal is to achieve victory on the business issue that gave rise to the litigation by pursuing the facts and the l
Our firm provides valuable due diligence and negotiation services in connection with the acquisition of companies, products and technology. Our objective is to not only advise our clients on the strengths of the relevant intellectual property and risks with acquired products, but to also provide advice on how the due‑diligence process may be used to obtain concessions and plan for effective post-closing integration.
Our firm is well experienced in drafting all manner of intellectual-property agreements including, by way of example only, license agreements, consulting agreements, confidentiality agreements, stock and asset purchase agreements and employee intellectual-property assignments. In all aspects, we craft our agreements to effect real-world commercial impact.
Obtaining appropriate protection for intellectual property assets is only the first step to maximizing the value of an intellectual property portfolio. We also help our clients manage their portfolio adroitly so that the assets meaningfully enhance the business of our clients.
IP roadblocks can undermine the development or acquisition of a product. Our clearance studies provide an understanding of the IP landscape and how to navigate a potential IP minefield. This work may include the preparation of written opinions and development of potential “design arounds,” which best position our clients to move forward with a given product or acquisition.
Our firm commands a wide breadth of experience representing both plaintiffs and defendants in copyright litigation and procurement. We advise clients on the critical relationship of copyrights to other types of intellectual property; develop strategies to maximize the revenue potential of copyrights; and protect clients' rights in court. We have particular expertise in obtaining copyright registrations for clients on computer software works, and are especially adroit at protecting packaging and other
Our firm has a wealth of experience in assisting clients with the selection, searching, and registration of trademarks around the world. We understand that trademark selection and searching must be integrated synergistically with marketing and the real-life needs of our clients, especially in the areas of advertising, package design, and trade dress.
Lerner David has expanded its footprint in the realm of alternative dispute resolution (ADR). Drawing upon decades of experience litigating (and settling) patent, trademark and trade secret cases on behalf of both plaintiffs and defendants, Lerner David partners have stepped up to serve as arbitrators and mediators in IP cases.