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Patent Prosecution & Portfolio Counseling

Inventors, entrepreneurs, and investors know the importance of securing their inventions and ideas. Doing so requires legal acumen and technical savvy.

From Fortune 500 companies to venture startups, our clients rely on us to help them develop, protect, and monetize their intellectual property (IP). We invest in a deep understanding of our clients’ goals to create exceptionally strong patent portfolios that protect every aspect of their innovation.

Our team offers a sophisticated, niche patent practice in a Big Law setting, emphasizing technical strengths, legal excellence, and innovation. We take an analytical approach to patent prosecution, partnering with companies at every stage of growth to develop and protect your IP and build value within your patent portfolio. We are also highly experienced in IP diligence and patent portfolio transactions, facilitating patent and portfolio purchases and sales totaling hundreds of millions of dollars, venture funding totaling billions of dollars, and acquisitions and initial public offerings totaling in the tens of billions of dollars.

More than half of our 110 patent attorneys and agents hold advanced science degrees and many of our practitioners have significant industry experience as practicing engineers, scientists, patent examiners at the U.S. Patent and Trademark Office, or as in-house patent counsel at Fortune 500 corporations.

We collaborate with our clients on complex technical matters to identify patentable subject matter and to establish protection strategies aligned with their business objectives. Our team leverages our knowledge of constantly changing case law and industry trends to draft quality patents and develop portfolios that can withstand future litigation challenges and attract potential buyers and licensees. With more than 110,000 applications filed globally over the past decade and more than 42,000 patent applications currently being prosecuted, we have a proven track record.

Working closely with our patent litigators, we have been at the forefront of post-grant proceedings. Our team has represented clients in more than 800 inter partes review and other trial proceedings since the Patent Appeal and Trial Board (PTAB)’s inception.

Our investment in clients has allowed us to become authorities on cutting-edge technologies.

5G and wireless
Aerospace
Artificial intelligence/machine learning
Autonomous vehicles
Big data
Cleantech
Cloud services
Consumer products and hardware
Digital health
E-commerce
Edtech
Electronics
Fintech
Gaming
Internet of Things
LEDs
Mechanical arts
Medical devices
Med tech
Pharmaceutical drugs and biologics
Security
Semiconductors
Social media
Software
Telecommunications

How we help clients

IP portfolio development and management
Domestic and international patent preparation and prosecution
Patent portfolio transactions
Diligence on mergers, acquisitions, and securities offerings
Right-to-use analysis and counseling relating to design-arounds
Legal opinions concerning patent invalidity and noninfringement
Post-grant proceedings, including inter partes review
Strategic licensing campaigns
Assisting academic and corporate technology transfer offices to assess patentability, prepare and prosecute patent applications, and supervise foreign prosecution

Perkins Coie protects clients’ intellectual property with analytical and business-driven solutions.

Patent Analysis, Strategy & Solutions

A leader in patent-based transactions, we offer a dedicated in-house patent analysis team that employs advanced software to deliver outstanding portfolio analysis results. We skillfully assist companies in monetizing their intellectual property portfolios. Our IP team combines technical, legal, business, and valuation experience with data analytics to maximize the value of your patent portfolios and further your most important business strategies.

Our services include:

Mergers and acquisitions (M&A) due diligence: We regularly conduct due diligence investigations to assist with M&A transactions, including investment rounds and acquisitions. We work with clients in all technology areas to help them understand the value and risks associated with the transfer of IP assets.
Competitor and industry landscape analysis: We assess industry and competitor portfolios to help clients better evaluate competitive risks and develop effective defensive and offensive strategies. We also help clients identify unprotected technologies in the marketplace and strategies for acquiring those technologies to spur and protect innovation.
Value creation and monetization models: Working closely with clients, we design sophisticated licensing programs to reach a wide variety of goals from enhancing campaign financial returns to fostering strategic business relationships.
Patent acquisitions and sales: Whether a company is looking to acquire patents to protect against litigation, to fill a portfolio gap, or to gain an offensive advantage, our team helps to identify and analyze assets of interest, ensure antitrust compliance, and close the deal.
Valuation services: We provide knowledgeable economic valuation of clients’ intellectual property, ensuring that all business, legal, and technical issues are considered when ascertaining a proper valuation.

Innovative Patent Resources & Programs

Perkins Coie has created exclusive patent portfolio management tools and other innovative resources to give clients a strategic business advantage by simplifying and providing access to data. We are also dedicated to creating a more inclusive IP environment through our various patent programs.

Patent Analysis Team (PAT): Our in-house team uses multiple sophisticated tools, including proprietary in-house software, to provide our clients with the data and insights needed to make important decisions affecting the cost and coverage of their patent portfolios as well as enforcement and licensing opportunities.

Proprietary patent tools: Our tools include Portfolio Dashboard, which provides real-time access to patent portfolio data and easier report generation, and our Patent Analysis and Review Tool, which captures data and legal analysis about patents to facilitate portfolio management and identify monetization opportunities.

Our Team

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Nicole S. Dunham

Partner

NDunham@perkinscoie.com

Notice

Before proceeding, please note: If you are not a current client of Perkins Coie, please do not include any information in this e-mail that you or someone else considers to be of a confidential or secret nature. Perkins Coie has no duty to keep confidential any of the information you provide. Neither the transmission nor receipt of your information is considered a request for legal advice, securing or retaining a lawyer. An attorney-client relationship with Perkins Coie or any lawyer at Perkins Coie is not established until and unless Perkins Coie agrees to such a relationship as memorialized in a separate writing.

206.359.3042

Podcast

Perpetual Motion® Podcast

Patent attorneys at Perkins Coie LLP have a passion for talking tech. In this series, they take off their attorney hats to interview inventors and technology pioneers on exciting innovations and inventorship-related topics.

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Patent Agent Training Program

We have built one of the leading intellectual property practices in the country.

Our patent agents and our patent agent training program are critical to providing exceptional client service to our IP clients.

Learn more

Awards and Recognition

Ranked among the leading firms globally, nationally, and regionally for Intellectual Property by Chambers USA, Chambers China, and Chambers Global
Named an “Inclusion Champion” in the Diversity Lab’s 2021 and 2022 Blueprint Surveys for our firm leadership’s diversity and inclusion efforts
Named to the 2021 and 2022 ChIPs Honor Roll for our IP practice and firm leadership’s diversity and inclusion initiatives by ChIPs and Diversity Lab
Ranked among the top 10 Most Active law firms for post-grant proceedings in the 2022 Lex Machina Patent Litigation Report

Ranked nationally for patent law in the United States and in China by Managing IP
Ranked globally, nationally, and regionally in IP: Patent in the United States and China, along with 50+ attorneys named IP leaders in the IAM Patent 1000 rankings
Recognized as a leader in technology and innovation for our patent portfolio tools 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