Kutak Rock’s patent attorneys have extensive experience advising clients in all aspects of patent law, including patentability searches and opinions, right to use opinions, non-infringement and invalidity opinions, patent prosecution and maintenance. With our practical advice, clients develop cost-effective and comprehensive strategies for obtaining protection of and properly enforcing patent rights throughout the world. We have secured patent rights for clients in all countries of commercial significance and for a variety of clients’ inventions including pharmaceutical, medical, mechanical, software, electrical, and business methods.

Patent Procurement and Protection

A patent is the right to exclude others from making, using, selling, offering for sale, importing or exporting an invention within a given jurisdiction. The patent process can take several years from first conception to the issuance of a patent. With our practical advice, our clients develop cost-effective and comprehensive strategies for obtaining protection of and properly enforcing patent rights throughout the world. We have secured patent rights for clients in all countries of commercial significance and for a variety of inventions, including pharmaceutical, medical, biotech, chemical, mechanical, software, electrical, business methods and many others. Kutak Rock attorneys can:

• Visit with developers and engineers to help identify the potential of new inventions, in person, on-site or via telephone calls and emails
• Encourage early and frequent disclosure of innovations and improvements so that the path to a patent being granted can begin as soon as possible to prevent intervening competitor developments
• Review and analyze the patent landscape within key areas of strategic importance to identify competitor activity and any windows of opportunity for strategic offensive and/or defensive filings
• Evaluate new invention disclosures for patentability
• Prosecute foreign and domestic patent applications in any field of technology.

One of our attorneys is a former USPTO patent examiner, and we always advocate on your behalf for the broadest possible scope of protection

Patent Portfolio Management

A comprehensive portfolio management strategy addresses a variety of concerns that can affect each client. Every innovation can have a lifespan that exceeds two decades from conception to final expiration. The prosecution process can take five years or more and involves numerous deadlines. Diligent monitoring is required to avoid additional government fees for extensions of time or possibly compromising patent rights irreversibly. A thorough management strategy includes electronic and human safeguards to ensure all deadlines are met, which in turn saves our clients time and money. Our attorneys, support staff and docketing system can manage every aspect of your patent port-folio including:

• Initial review of invention disclosures
• Drafting and filing patent applications in the U.S. and internationally
• Tracking prosecution deadlines
• Paying maintenance fees and annuities
• Tracking licensing agreements and incoming and outgoing royalty payments and recording proper ownership and security interests
• Assist in invention disclosure intake and/or development of disclosure intake procedures and/or patent procurement and enforcement strategies
• Review development, vendor, supply and other agreements in which ownership of intellectual property rights may be addressed to ensure patent ownership rights are appropriately addressed