Patent Prosecution & Portfolio Counseling

Inventors, entrepreneurs and innovators turn to Perkins Coie's patent practice for advice on how to protect their inventions and ideas.

Overview

Inventors, entrepreneurs and innovators turn to Perkins Coie's patent practice for advice on how to protect their inventions and ideas.

Our patent attorneys are particularly skilled in successfully preparing and prosecuting patent applications in anticipation of licensing opportunities and potential litigation. We manage patent portfolios in a range of industries, including computer science, electronics, semiconductors, telecommunications, life sciences and biotechnology, medical devices, aerospace, and consumer products. Our patent group has filed over 8,800 new patent applications in the past two years on behalf of our clients. The services we provide include:

Counseling relating to IP portfolio development and management;
Diligence on mergers, acquisitions and securities offerings;
Domestic and international patent preparation and prosecution before the U.S. Patent and Trademark Office;
Performing right-to-use analysis and counseling relating to design-arounds;
Preparing legal opinions concerning patent invalidity and noninfringement;
Academic technology transfer, specifically working with technology transfer offices in assessing patentability, preparing and prosecuting patent applications and supervising foreign prosecution.

We have more than 100 lawyers and agents in the national patent practice who are registered to practice before the U.S. Patent and Trademark Office. Many of our practitioners have significant industry experience as practicing engineers or scientists, or hold advanced degrees in their technical fields. Several of our attorneys are former patent examiners at the U.S. Patent & Trademark Office or worked as in-house patent counsel at Fortune 500 corporations before entering private practice.

Counseling relating to IP portfolio development and management;
Diligence on mergers, acquisitions and securities offerings;
Domestic and international patent preparation and prosecution before the U.S. Patent and Trademark Office;
Performing right-to-use analysis and counseling relating to design-arounds;
Preparing legal opinions concerning patent invalidity and noninfringement;
Academic technology transfer, specifically working with technology transfer offices in assessing patentability, preparing and prosecuting patent applications and supervising foreign prosecution.

Le[a]dBetter Imagine

Perkins Coie’s Le[a]dBetter Imagine honors women inventors and their critical contributions to advancing innovation. The program aims to help close the gender gap in patenting and help make gender equality in technology leadership a reality.

Find out more.

Commitment to Innovation

In our ongoing commitment to serve as strategic advisors to clients, Perkins Coie has designed intellectual property portfolio management tools that put more power into the hands of our clients. Our priority is to help clients more easily manage the portfolio that they have partnered with us to develop. We work alongside our clients to give them a strategic business advantage by simplifying and providing access to data. Whether tracking progress in building an IP fence around strategic technology, benchmarking against competitor efforts or responding to due diligence requests for financing or divestitures, clients find that having access to timely and accurate data is increasingly important in today’s business environment. Our dedication to innovation earned us a finalist spot for Best Use of Technology in the 2019 American Lawyer Industry Awards.

Our award-winning tools, which provide clients greater visibility into their patent portfolios and our legal work, include the following.

Portfolio Dashboard, powered by Perkins Coie, satisfies a common need of clients by providing real-time patent portfolio information, positioning decision-makers to quickly check portfolio size, scope and status. Designed to put more power into the hands of our clients, the dashboard pulls and presents data in a variety of simple-to-use graphs and reports to drive coverage, licensing and other important business discussions. The Financial Times recognized Perkins Coie as the leader in its “Innovation in Business of Law: Technology” category for Portfolio Dashboard in 2018.

Perkins Coie Patent Prosecution Platform (P4), our custom workload management system, focuses on managing large-scale patent prosecution portfolios effectively and efficiently. The streamlined, web-based tool aggregates and displays data from our docketing, time entry and billing systems in real time. The P4 interface focuses lawyers’ attention on two critical areas of client service—upcoming deadline priorities and budget variances at the activity level. The Financial Times recognized Perkins Coie as the leader in its “Innovation in Business of Law: Technology” category for P4 in 2017.

Our custom Patent Analysis & Review Tool (PART) captures data and legal analysis about each patent in a client’s portfolio to facilitate portfolio management and identification of monetization opportunities. PART is highly customizable and can quickly export data about any patent or portfolio project on demand. Because our patent review and analysis are captured within the database, work is never lost and a new reviewing attorney does not need to start from scratch if a patent has been previously reviewed by Perkins Coie. Acting as a centralized database, PART enables Perkins Coie to easily provide in-depth reports and analytics assessing a client’s portfolio in aggregate. Our attorneys can quickly provide decision-level statistics regarding the breadth, strength and competitive impact of each asset and the overall portfolio. By allowing attorneys to efficiently work in parallel, the tool speeds project completion.

Inter Partes Review: How The IPR Process Works

To help explain the complexities of the United States Patent & Trademark Office’s new inter partes review (IPR) process, Perkins Coie has developed a short animated video that walks viewers step-by-step through the entire process.

Accolades


	•	Ranked for intellectual property law by Chambers USA, Chambers China, and Chambers Global
	•	Named an “Inclusion Champion” in the Diversity Lab’s 2021 Blueprint Survey for our IP practice and firm leadership’s diversity and inclusion efforts
	•	Named to the 2021 Chips Honor Roll for our IP practice and firm leadership’s diversity and inclusion initiatives by ChIPs and Diversity Lab
	•	Named by Law360 as an Intellectual Property Practice Group of the Year in 2019
	•	Ranked one of the eight most-hired firms for post-grant proceedings since the PTAB’s inception in Lex Machina’s 2020 Patent Litigation Report

	•	Ranked nationally for intellectual property law in the United States and in China; 29 attorneys named IP stars by Managing IP
	•	Ranked nationally and regionally for patent litigation and prosecution in the United States and China; 46 attorneys named leaders, including eight global leaders, in the IAM Patent 1000 rankings
	•	Recognized as a leader in technology and innovation for our patent portfolio tools P4 and Portfolio Dashboard by The American Lawyer and The Financial Times
	•	Named the U.S. News - Best Lawyers® “Law Firm of the Year” in Patent Law four times; 61 IP attorneys recognized in The Best Lawyers in America in 2022
	•	Ranked Tier 1 for patent and trademark law in China by Asian Legal Business
	•	Awarded the USPTO’s 2020 Patent Pro Bono Achievement Certificate for assisting financially under-resourced inventors and small businesses seeking patents