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Our team of intellectual property lawyers leverages its technical and industry knowledge to file, prepare, prosecute and enforce patents and protect the core interests of our U.S. and international clients’ businesses. Our established practitioners navigate the United States Patent and Trademark Office (USPTO) process as advocates and regularly collaborate with intellectual property and general practice firms across the world for managing and enforcing our clients’ intellectual assets abroad. Our team includes numerous former USPTO examiners, who bring a detailed understanding of the prosecution process and its challenges. We have experience with all post-issuance proceedings: inter partes review, post-grant review, and covered business methods We also handle appeals before the Patent Trial and Appeal Board (PTAB). 

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Recent Notable Matters

International electronics company — more than 600 patent prosecution matters related to micro-electronics hardware and software-related business methods

International energy company — more than 2,000 patent prosecution matters related to upstream and downstream oil technologies

International oil & gas company — filing inter parte review (IPR) petitions with the USPTO, challenging the validity of numerous claims in competitor’s patents and successfully obtaining institution of all asserted claims in the IPR petitions by the USPTO

Oilfield services company — preparing and prosecuting patent applications as well as preparing opinions on patent infringement, freedom to operate, patentability, and patent validity

Texas Biomedical Research Institute — intellectual property and technology matters, specifically in the preparation and prosecution of patent applications related to research

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Privileged Communications in Patent Law

This presentation discusses attorney-client privilege for patent documents, global attorney client privilege issues, and the privilege from the “common-interest” doctrine. Most companies have a global portfolio of intellectual property in the form of patents, copyrights, and trademarks that are secured and maintained in different jurisdictions. In-house counsel face special challenges in managing the attorney-client privilege for these matters, especially during global disputes and investigations. Another challenge for controlling privilege arises in the context of mergers and acquisitions and these issues have to be addressed before and after the deal closes. Different jurisdictions differ in their approach, and corporate counsel should be aware of how privilege can be managed or transferred.

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