Patent Law
Jennings Strouss' patent attorneys represent clients, ranging from start-up and emerging companies to large research entities and multi-national corporations. We assist these clients with the acquisition, protection and licensing of their valuable technology. Our experience covers a full range of patent and related matters, including: strategic patent counseling and portfolio development, patent preparation and prosecution before the U.S. Patent Office for U.S. and foreign companies, patent filing and prosecution in foreign countries, licensing and standards, and U.S. and worldwide enforcement.
Strategic Patent Counseling and Portfolio Development
We can assist in the protection of a client’s technology, in all areas of patent practice and in particular in the acquisition of patents and the enforcement of patent rights.
Licensing and Standards
Our patent attorneys also represent companies in intellectual property licensing and technology transfer arrangements, including international and multi-national licensing arrangements involving an array of technologies, including those in the biotechnology, software and other technology industries. In particular, our experience includes preparing, negotiating and counseling on license agreements related to life sciences inventions, other patent-protected inventions, software, other copyright-protected works, trademarks, databases and other proprietary know how. We also create reusable templates for clients involved in complex licensing programs involving a large number of licensees.
We represent universities/research institutes as they enter into and negotiate sponsored research
agreements, strategic research alliances, other collaboration arrangements and license agreements with
private sector companies and with other universities and research institutes. We also counsel private
industry clients, in various industry sectors, as they enter into and negotiate collaborative agreements
and license agreements with academia.
We also have experience representing companies and other entities in their participation in technology
consortia, standards-setting organizations, and similar multi-party development initiatives that develop
technology guidelines, databases, protocols, standards, and similar collaborative works. We have
experience with these technology consortia in many industry sectors, including the software, hardware,
semiconductor, internet, telecommunications, medical device and life science industries. We counsel both domestic and foreign clients regarding the legal issues that arise during the various stages of
involvement with these technology standards entities, including the formulation of the Intellectual
Property Rights/Patent Licensing Policy, evaluating business and legal ramifications associated with
participating in these entities; and creating internal best practices governing that client’s participation in
these entities.
Patent Litigation
We help clients avoid problems or respond to challenges asserted against them, especially with regard to alleged patent infringement. In particular, we provide validity and non-infringement evaluations, formal opinions, and pre-litigation analysis of claims to help clients determine the strength of their position. Our litigation lawyers enforce, pursue and defend patent infringement actions.