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Patents | Scully Scott Murphy & Presser PC

In America, we can thank the nation’s founders for recognizing inventions are property that deserve protection under the U.S. Constitution. Today, however, the America Invents Act (AIA) has dramatically altered the patent landscape in a number of ways. Basically, the law aligned the US system with other international rules by making the inventor first to file eligible for a patent. Previously, the first to invent was the only inventor eligible for protection. These and other changes present inventors, entrepreneurs and businesses with significant challenges that require the strategic advice and guidance of an experienced patent attorney.

Patent Attorneys Serving Clients Throughout New York

SSMP is a premier intellectual property law firm serving clients throughout Long Island, New York, Connecticut and throughout the nation. Our legal team advises clients on both applications with the U.S. Patent and Trademark Office (USPTO) and registering international patents under Patent Cooperation Treaty (PCT). We are highly experienced in all phases of prosecution — prior art and clearance searches, drafting applications, and preparing amendments and responses to Office Actions. SSMP has a well-earned reputation for fostering ingenuity and always putting the best interests of our clients first.

Product Clearance

Before pursuing a patent, it is often crucial to conduct a thorough analysis of existing patents and products. Our attorneys conduct product clearance searches of relevant claims to avoid the risk of infringement. When a more extensive analysis is required, we also conduct freedom to operate (FTO) searches to evaluate in-force patents, expired patents and other relevant information in the public domain. An FTO can provide safe harbor for a product in the US and also ascertain whether it is protected in other jurisdictions throughout the world. Finally, we conduct due diligence, validity and infringement analysis in order to prepare patent opinions.

Preparation and Prosecution

Our patent prosecution professionals hail from a wide range of technological fields, including mechanical, electrical, computer hardware and software, chemical, biotechnological, food chemistry, and design. We bring to bear significant legal knowledge and technical proficiency to help our clients protect their innovations. We are keenly aware that the way in which claims are structured is crucial for the approval of an application.

SSMP advises clients throughout the preparation process and works diligently to identify the inventive concept. We model patents for each technological advance and draft applications with the broadest possible claims. Because our attorneys have industry, science and research backgrounds, we are able to build relationships with our clients throughout the application process. We also work closely with examiners at the USPTO to expedite prosecution.

Post-Grant Proceedings

Currently, patents can be challenged through a variety of post-grant examination proceedings before the Patent Trial and Appeal Board (PTAB). A Post Grant Review (PGR), for example, is designed to evaluate the patentability of one or more claims. Moreover, a new proceeding that is commonly pursued in lieu of litigation is the Inter Partes Review (IPR) — designed to invalidate a patent based on its obviousness or lack of novelty. We are highly experienced in these post-grant proceedings as well as covered business method review (CBM).

At SSMP, we also anticipate the potential challenges during the drafting and prosecution phases to minimize the risk of a post-grant challenge. Our thorough understanding of these proceedings can either be used as a defense strategy or as a means of challenging a competitor’s claims. We leverage our decades of litigation experience to help clients navigate the complexities of post-grant challenges.

International Patents

As markets in the U.S. become more integrated with the global economy, it is crucial for businesses to procure international protection of their products. At SSMP, we are well acquainted with the latest developments in intellectual property and technology throughout the world. Our patent attorneys file and prosecute international applications in jurisdictions that are under the Patent Cooperation Treaty (PCT) as well as in the European Patent Office. We also advise clients on other international concerns such as technology transfers, licensing arrangements, trade secrets, unfair competition, and inter partes matters.

Patent Licensing

A patent license can provide owners with a means for monetizing their inventions as well as for resolving a dispute. Similarly, those accused of patent infringement may be able to mitigate the potential of a costly litigation by entering into a licensing agreement. At SSMP, we advise clients on patent licenses, patent assignments, cross-licenses, as well as patent portfolio sales and acquisitions.

New York Patent Attorneys

For over 45 years, SSMP has been dedicated to protecting the patent rights of inventors, entrepreneurs, startups, businesses and universities. We provide clients with strategic advice to help them navigate the contemporary patent landscape. Our objective is to help them maximize the value of their assets.

We have a proven track record of successfully shepherding patent applications through the USPTO. Our legal team team represents clients before the PTAB and when necessary, pursues and defends patent infringement lawsuits in federal court. By understanding our clients’ innovations, businesses and unique needs, we design strategies to help them achieve their goals. Call our office today or complete the contact form on our website to set up a no-cost consultation.

Scully Scott Murphy & Presser PC proudly serves all areas of New York and Long Island, including Nassau County and Suffolk County.

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