Practices - Intellectual Property

Patent Counseling & Opinions

As intellectual property becomes more crucial to innovative businesses, companies and educational institutions are taking a critical look at their IP portfolios.

DRM attorneys can help such clients understand their portfolio strengths, weaknesses, identify opportunities for additional revenue, and develop an appropriate portfolio strategy.

When it comes to patent opinions, clients turn to DRM for help in either defending against patent assertions from third parties, or pursuing patent assertions against third parties. DRM’s IP attorneys are particularly proficient at helping clients develop non-infringement and invalidity theories, including design-arounds. Typically, if appropriate to our clients’ business objectives, we strive to avoid costly and distracting patent litigation. It is typically beneficial to develop such theories, and take certain steps, as soon as a company becomes aware of a patent that they might infringe. Informal or formal written opinions provided by DRM regarding an asserted patent may substantially reduce potential damage exposure.

For more information, please contact Morgan Heller, Thomas Kohler or Kevin McGrath.

DRM’s patent attorneys get the job done and help clients achieve their business objectives.

At DRM, we are flexible in terms of the form and format of patent opinion work and the delivery of other patent counseling services, which allows us to tailor solutions to fit your business needs and budget. As with all our intellectual property services, we don’t just deliver excellent legal work, we also focus on collaboration and communication that enables our clients to clearly understand the business/legal tradeoffs of the various solutions we can pursue, all in an attempt to eliminate potential surprises.

What to expect when you engage DRM for patent counseling & opinions.

Many of the lawyers in DRM’s intellectual property group cut their teeth on patent work at big city-firms or companies. As a result, our IP attorneys practice in much the same way they do at those big firms, relative to approach, depth of experience and knowledge of current developments in the law. Because of our culture, organizational structure, and our smaller-city locations, we provide services you find at big-city firms, but typically at fees that substantially more affordable. DRM can be a valuable asset when you find yourself in need of patent counseling or patent opinions. Our specific services include:

Product Clearance: We regularly conduct “freedom-to-operate” searches to uncover third party patents having claims of potential relevance to current products or those under ongoing development. We engage clients to explore non-infringement theories, non-infringing design-arounds, and validity, and create written opinions memorializing such conclusions, as applicable.

Responses to Allegations of Patent Infringement: We conduct infringement and validity reviews of patents asserted by third parties, including, as available, initiating Post-Grant Proceedings/AIA trials. As with product clearance, we engage clients to explore non-infringement theories, non-infringing design-arounds and validity, and create written opinions memorializing such conclusions, as applicable.

Support of Patent Licensing, Patent Assignment, and other Patent Monetization Programs: We work with patent owners’ technical personnel to assess the relevance of patents to the product/service offerings of third parties, including development of infringement theories and responses to likely rebuttals/challenges. Where appropriate, we compose notice letters to potential third party infringers, and conduct meetings with potential infringers to explain infringement theories and respond to rebuttals/challenges. DRM’s attorneys also develop responses to cross-assertions by such third party infringers, including defending Post-Grant Proceedings / AIA trials. If negotiations fail, and when it is in a client’s best interest, we initiate and support patent litigation. In the case of patent assignments, we conduct diligence to determine assignability, and draft appropriate intellectual property transaction agreements.

Recent Accomplishments

  • Because of the value our cost structure represents, we were engaged by a Fortune 500 company to support its ongoing patent licensing program. To help protect their program, we developed invalidity positions for four patents asserted against it by a prospective patent licensee.
  • DRM was engaged to conduct freedom-to-operate reviews for several small software companies. Because of other workload pressures, the client’s development personnel were unable to participate in the early stages of patent reviews. To keep the process moving, DRM attorneys carried out first and second level patent screening analyses, allowing the client’s personnel to focus on only those patents that had the greatest possibility of being relevant to products under review.
  • Several small companies in the food preparation industry sought DRM’s advice and counsel to license several of their patents as part of a license of enabling technology to a third party.

Morgan S. Heller II

Director

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Thomas D. Kohler

Director

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Kevin C. McGrath

Director

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Patent Counseling & Opinions

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