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United States > Intellectual property > Patent prosecution: utility and design patents

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  1. Patent prosecution: utility and design patents
  2. Leading lawyers

Leading lawyers

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. remains a leader across all forms of intellectual property, and within patent prosecution continues to act for an impressive client base which has a number of marquee Fortune 500 companies. The practice serves a wide range of industry sectors, and is particularly strong in telecommunications, software and biotechnology. Around 28 partners form the bulk of the practice, which is jointly headed by Erika Harmon Arner in Reston and Mark Sweet from the Washington DC office. Other standout practitioners include senior counsel Charles Van Horn who specializes in chemistry and biotechnology, and Bryan Diner, former managing partner of the Brussels office with an active litigation practice. Recent mandates include assisting Research in Motion in prosecution matters and representing the company in re-examination proceedings. The group was also the first to file a petition for post-grant review of a business method patent under the American Invents Act on behalf of SAP AG. Other clients include AOL, Caterpillar, Abbott Laboratories and AstraZeneca.

IP boutique Fish & Richardson P.C. continues to have a solid reputation in patent prosecution, based on both for its strong Fortune 500-centric client base and capable, large team. Clients are spread across a variety of industries such as information technology, life sciences, pharmaceuticals and financial services, and include Allergen, Google and Target. Day to day transactions include portfolio management, opinions and strategic counseling, and the practice also includes a busy re-examination team. Within the group, Jeffrey Barclay, who focuses on electric engineering, is recommended along with the hugely experienced Charles Hieken, both of whom are based in Boston. Richard Anderson in Minneapolis and Spencer Patterson in Dallas are also recommended. Other key clients of the group include Adobe, Google, Boston Scientific, Smith & Nephew, and Bank of America.

Baker Botts L.L.P. is ‘one of the best firms for patent prosecution’. The ‘quick, efficient’ team provides ‘excellent value for money’ to Fortune 500 companies and some of the largest patent owners in the US, alongside a number of overseas clients. Sectors covered include social media, software and cloud computing. Bart Showalter continues to head the IP group, of which 36 lawyers focus on prosecution. The practice has a number of standout attorneys, including Paul Ragusa and Lisa Kole in New York who are key contacts for Columbia University, and Dallas-based Luke Pedersen who is relationship partner to CA Technologies. Samir Bhavsar ‘knows his patent prosecution, licensing, and litigation - this many skills in one person is rare’. In Palo Alto, Travis Thomas is noted for his work with Facebook. Other clients include Halliburton, Cisco Systems and Dell.

Connecticut-based IP boutique Cantor Colburn LLP has a solid reputation in the market - it provides ‘excellent level of service, and is excellent value for money’. Led by well-respected duo Michael Cantor and Philmore Colburn, the firm has 34 partners spread across five offices. The firm’s ‘responsive and knowledgeable’ patent prosecution practice is praised for its technical depth and its ‘top-notch work’. Key partners include David Fox, Keith Murphy, David Arnold, all of whom are based in Hartford, and Daniel Drexler in Washington DC. The group’s impressive client base spans the US, Europe, Japan and Korea and includes Fortune 100 companies and some of the largest corporations in the world. Among the list are General Electric, Samsung, General Motors, IBM, Research in Motion and Raytheon.

Fitzpatrick, Cella, Harper & Scinto is an IP firm with a great reputation for all things patent. Clients range from start-ups to Fortune 100, and the group’s sector strengths include electronic, chemical, biotechnology and mechanical. Alongside prosecution, it undertakes interferences, appeals and re-examinations. Recent mandates for the practice include successfully representing Amgen and IBM in patent interferences, and advising Mars on the rejection of a patent relating to the method of making an energy bar. Many of the team’s clients are longstanding ones, including Bristol-Myers Squibb, GlaxoSmithKline, Canon and Michelin. The practice is predominantly based in New York and headed by the experienced Anthony Zupcic. Standout practice members include Michael Sandonato, who chairs the electronics and computers team, and biotechnology chair Raymond Mandra. Frank DeLucia has a solid reputation for re-examination matters and Robert Fischer, chair of the licensing team, is recommended.

Foley & Lardner LLP provides ‘exceptional’ service to a number of the world’s leading companies. The 15-partner team is housed across five offices, with Washington DC and Boston housing the main bulk of the group. The practice’s clients straddle a number of sectors, such as consumer electronics, biotechnology and greentech, including Kraft Foods, Sony, Citrix System and United Therapeutics. Work highlights included assisting Engeneic Molecular Delivery on securing patent protection for critical technology in the US, Europe and China. The firm also advised Chinese IT company Nationz Technologies on the development of global patent portfolio. The IP group is led by Pavan Agarwal and features a number of key personalities - Stephen Maebius, Steve Bent, Christopher McKenna, and Gerald Swiss are all recommended. John Lanza has ‘superb client relationship skills and gets the job done well’.

McDermott Will & Emery LLP’s ‘extremely valuable, responsive and extremely knowledgeable’ eight-partner team is led by Mark Itri from Orange County. Itri has an enviable client following which includes Google and Lockheed Martin. The wider group is spread across Washington DC, Orange County, Houston and Boston, and represents clients in a wide range of sectors such as electronics, automotive and medical devices. Key partners within the team include Carey Jordan in Houston and Toby Kusmer in Boston. Stephen Becker has ‘excellent patent prosecution knowledge and client service qualities’, and Robert Underwood is ‘highly cognizant of the needs of his client’. The practice provides advice on procurement, enforcement and strategic matters to cloud computing leader Dell Wyse, Broadcom, Covidien and Panasonic.

Morrison & Foerster LLP’s patent prosecution team is ‘responsive, incredibly knowledgeable’ and has a ‘deep, talented bench’. The team of 18 dedicated partners is led by Michael Ward from San Francisco, who is ‘super knowledgeable and has an excellent business sense’. The team operates from five offices, with the bulk located in Palo Alto and San Francisco. The group has an enviable client base spanning a variety of technologies, and includes Genentech, Novartis, Gilead Sciences and Dreamworks. Ward and his team were also recently retained by Heinz to advise on its plant IP strategy. Within the team Catherine Polizzi and Mika Myer in Palo Alto are recommended, and chair of the electronics, software, and telecommunications patent group Peter Yim is ‘deeply knowledgeable, smart, humble, and a wicked sense of humor’.

While Oblon, Spivak, McClelland, Maier & Neustadt is known in principle for its large filing numbers and strong overseas client base, in recent years the group has garnered an impressive number of large domestic clients, such as Oracle, Cisco and Lockheed Martin. In terms of its international client base, Japanese clients Toshiba, Sony and Ricoh continue to play a part, alongside European leading companies such as Airbus and L’Oréal. The practice is also noted for its strong post-grant procedure team, acting for clients SAP, Google and Research in Motion. Managing partner Brad Lytle is recommended, and within the team other prominent partners include Stephen Baxter, Stephen Kunin, James Kulbaski and Scott McKeown.

Birch, Stewart, Kolasch & Birch, LLP is continually ranked as one of the top filers of both utility and design patents and acts for a number of leading companies in various disciplines, from healthcare and life sciences to electronics and mechanical engineering. The group has a strong client base formed of a mix of domestic and overseas clients, such as Google, Mitsubishi Tanabe Pharma, LG and Honda. The 27-partner team is predominantly based in Falls Church, Virginia with support from San Diego. Michael Mutter is recommended for his electrical expertise and Gerald Murphy for his life sciences specialty. Other recommended attorneys include MaryAnne Armstrong and Charles Gorenstein.

IP boutique Blakely, Sokoloff, Taylor & Zafman has a good reputation in a number of sectors, most notably the medical, computer software, electrical and mechanical industries. The IP team is 37-partners strong, who are located across six offices including Los Angeles, Denver and Seattle. Clients range from start-ups to Fortune 500 companies and include Network Appliance, Openware Systems, Apple and Intel. Among the team, Denver-based mechanics expert Gordon Lindeen is recommended for his in-house experience and European knowledge, as is Eric King in Orange County, whose experience includes electronics, IT hardware and software. Judith Szepesi in Silicon Valley is relationship partner to VeriSign and DigitalPersona.

Well-established IP boutique Kenyon & Kenyon LLP is an impressive name in the market, with a client base formed of leaders within life sciences, chemicals and electronics. The group is mainly based out of the New York office, with partners also active in Washington DC and Silicon Valley. The group is praised for its deep technical expertise and its active practice in terms of patent filing numbers. It is also recommended for its skills within re-examinations. The group is co-chaired from the New York office by experienced duo Patrick Birde and Gerard Messina. Birde has a broad range of experience, particularly within chemical and medical device matters, and Messina is recommended for his expertise within the electrical, mechanical and computer technologies. The group routinely acts for clients such as Akzo Nobel, Analog Devices Inc, Boston Scientific and SAP.

Knobbe Martens Olson & Bear LLP is a well-respected IP boutique with a fantastic reputation for patent work. The 126-partner group is focused on disciplines such as medical devices, internet and biotech. Recent mandates for the group include successfully prosecuting a patent related to the treatment of sweat gland disorders on behalf of client Ulthera, and portfolio management work for Nimbus Concepts. The experienced Steven Nataupsky leads the practice from Irvine and prominent names within the group include Salima Merani in Orange County, who predominantly acts for medical device, drug and biotech clients, and Michael Fuller whose expertise lie in biotechnology, computer and internet matters.

Merchant & Gould PC is an intellectual property firm with a rich 100-year history. The group is predominantly based in Minneapolis and has a strong client base which includes Microsoft, Toro and Lush Handmade Cosmetics. Support is provided through seven other US offices, and the IP group is broken down into a number of specialized, industry-focused teams such as nanotechnology, chemical engineering and mechanical. Denver office managing partner and chair of the electrical and software group Timothy Scull is highly recommended, as are technology transactions practice group head Gregory Leibold, also in Denver, and Minneapolis-based Gregory Sebald, who chairs the mechanical group. The Denver office was enhanced recently with the arrival of Paul Prendergast and Cara Crowley-Weber from Colorado firm Swanson & Bratschun LLC.

Pillsbury Winthrop Shaw Pittman LLP is a well-reputed general practice firm with a full service IP practice which fields over 100 attorneys. The team has a strong client base and expertise in a number of sectors such as chemicals, pharmaceuticals, biotech and mechanical. The group is led by Jack Barufka from the McLean office who is relationship partner to a number of marquee clients such as Chevron. Key team members include the leader of both the virtual worlds and video games team and social media, entertainment and technology team James Gatto, who has over 25 years experience. In Washington DC Raj Davé is also recommended. Key clients of the team include Walt Disney, AOL, Chevron and Intel.

Sughrue Mion has a strong reputation for catering to overseas clients and high patent filing numbers. The IP boutique is routinely ranked as the second most active patent prosecution practice by number of filings. The group is led from Washington DC - located a stone’s throw from the USPTO - and is split into industry focus groups such as chemical and nanotechnology. The firm also has offices in San Diego and Silicon Valley, and in Tokyo, which is helpful for catering to its large Asia Pacific client base, which includes Fujifilm and NEC. Key team members within the practice include experienced trio Brett Sylvester, Brian Hannon and John Bird. Other clients among the group’s impressive overseas-centric client base include IBM, Wockhardt, Alcatel and Zeiss.

Banner & Witcoff, Ltd. is a Chicago-based IP boutique with a fantastic reputation for design patents. The firm is known for representing global leaders in innovation and design, and in 2012 it obtained more US design patents than any other firm for the 10th successive year. The well-respected Robert Katz is the lynchpin of the practice - the former USPTO examiner is renowned for his expertise in industrial design, particularly mechanical and electromechanical devices. Other prominent members of the group include Washington DC-based Gary Fedorochko and Charles Miller in Chicago. The firm’s repertoire includes assisting with the protection of award-winning designs such as Nike’s Nike+ FuelBand and Nokia’s Lumia 800 smartphone. Among the group’s marquee clients are Microsoft, Toshiba, PepsiCo and Electrolux.

Bracewell & Giuliani LLP is a general practice firm with an active patent prosecution team which ‘consistently performs at a very high professional level’. The group, which is mainly led from Houston, has a fantastic reputation within the oil and gas industry, and acts for a number of leaders in the field such as Baker Hughes, The Weir Group, Shell and GE Oil & Gas. Other marquee clients include Lockheed Martin, Hewlett-Packcard and Tesco Corporation. The group is smaller than some, comprising 23 lawyers of whom six are partners, and is led by the extremely experienced Jeffrey Whittle and within the team Jim Bradley, Albert Kimball and senior counsel Keith Derrington. Constance Gall Rhebergen is ‘very attentive and able to work to address clients’ unique needs’.

Chicago-based IP boutique Brinks Hofer Gilson & Lione is noted for its expertise in a wide range of disciplines such as semiconductors, medical devices, telecoms and pharmaceuticals. The IP group’s US patent head is Andrew Stover and international patent head is Michael Milz, and within the practice are a number of teams arranged by industries such as biotech green tech and mechanical. The group has a number of notable practitioners including Peter Nichols, Kent Genin, Bashir Ali and chair of the nanotechnology practice group Lawrence Almeda. The team routinely undertakes patent portfolio management work for Alticor, the Cook Group, Broadcom, Levin Brothers Paper and CME Group. The group recently opened an office in Detroit in close proximity to the USPTO.

Buchanan Ingersoll & Rooney is an ‘extremely responsive and excellent’ general practice firm with a strong IP group, which acts for a gamut of well-known domestic and international clients. The IP group is broken down into a number of disciplines such as biotechnology, chemical and electrical, with the well-reputed Patrick Keane at the helm. Clients include Tetra Pak, Mastercard, Oticon and Haier. The group, described as ‘absolutely top drawer’, was also recently retained by Apple for patent prosecution work. Within the practice, which is mainly based in Alexandria, standout lawyers include Michael Dever in Pittsburgh and James LaBarre, whose expertise lies in computer technologies. Carla Vrsansky and associate Ralph Fischer, both in Alexandria are ‘exceptionally responsive’, and Erin Dunston is highly recommended.

Kilpatrick Townsend & Stockton’s IP group is led by John Pratt from the Alexandria office and is impressive in size, fielding another 17 partners from this location, 11 in San Francisco, 11 in Silicon Valley and another 16 partners spread across a further six offices. Recent matters for the team include advising Visa on prosecution and clearance matters, and assisting Oracle with preparation, prosecution and counseling on a variety of product areas such as database middleware and application servers. Other clients include First Data and Cochlear Limited. Key counsel include San Francisco-based Paul Haughey and Patrick Jewik, and managing partner of the Silicon Valley office William Shaffer. Also from the Silicon Valley office is Mark Barrish who is recommended, as is James Ewing in Atlanta.

Leydig, Voit & Mayer Ltd. is a Chicago-based IP boutique with particular sector strengths in chemical, biotech, mechanical and electrical/software. Its client base includes Caterpillar, Huwaei, BP and the National Institutes of Health. Google also recently retained the practice as prosecution counsel. Recent transactions include advising USG on the prosecution of both foreign and domestic patents, and assisting BP Amoco on the prosecution of patents related to plastic recycling. Standout members of the team include the very experienced Charles Mottier, whose focus is on mechanical engineering and fluid dynamics, and John Kilyk who expertise lie in biotechnology, chemistry, and pharmaceuticals. Salim Hasan and Gerald Gray are also recommended.

IP boutique Nixon & Vanderhye PC has a solid reputation in the market - both for representing Fortune 100 companies and for its active prosecution team, which regularly files high numbers of original and foreign originating patents. The group of 48 partners has a wealth of experience, and is led by name partner Larry Nixon, who has 40 years in the field and is focused on higher level technical issues. Within the practice standout attorneys include Leonidas Boutsikaris, Michael Keenan, B J Sadoff and Mary Wilson. Bryan Davidson is particularly recommended for his re-examination expertise, as is Alan Kagen, who is active within the mechanical and electronics space. The team was recently selected as a go-to counsel for prosecution matters by General Electric.

Covington & Burling LLP’s patent advisory, re-examination, and prosecution practice is formed of 30 attorneys and represents a selection of leading companies on re-examination and portfolio matters. The group recently successfully represented Fujitsu, Trend Micro and The New York Times Company in inter partes re-examination proceedings, and also represented clients such as Alkermes and Osmose on strategic patent portfolio matters such as the granting of pivotal patents. Washington DC-based Andrea Reister is the lynchpin of the 14-lawyer patent prosecution practice and leads on the majority of matters. She is ably supported by head of the IP group Paul Berman and Kurt Calia, who is based in California.

General practice firm Crowell & Moring LLP has a longstanding reputation for patent prosecution matters, both foreign and domestic, and has a client base which includes a number of Fortune 100 companies. The team is predominantly based in Washington DC with a number of the team also housed in New York and San Francisco. The practice is led by IP chair and litigator Mark Supko, whose expertise lies in computer, electrical and mechanical arts, and includes Stephen Palan, who is expert in wireless and data networking technologies. Litigator and patent prosecutor Jeffrey Sanok is recommended for his electrical engineering expertise. The team has a strong client base, which includes Daimler, Funai Electric, BMW and Sprint.

Dickstein Shapiro has a strong client base which comprises leading domestic and international companies. Robert Dickerson in Los Angeles and Jeffrey Sherwood in Washington DC head the IP group as a whole, and for patent prosecution matters Stephen Soffen is the key attorney. Soffen is also based in Washington DC and his expertise lies in hi-tech electronic, semiconductor, and medical device patent matters. The practice has significant strengths in a variety of technologies including electronic, chemical, mechanical and software and has additional strength in that ten members of the group have worked at the USPTO. Work highlights for the group in 2012 included advising Wolfson Microelectronics on prosecution matters, and assisting Arthrex to appeal the rejection of two patents.

Harness, Dickey and Pierce is a boutique firm with a solid client base within patent prosecution which includes a number of Fortune 500 companies. The group is active in a variety of technical disciplines and is noted for its high volume of patent filings - both original drafted and foreign originating, for clients such as Boeing, Biomet and Omron Healthcare. The 100-attorney patent practice is divided into industry groups such as life sciences, business and information, and material and chemical. Among the team are notable practitioners George Moustakas in Detroit, and former Chrysler electrical engineer Richard Warner. John Castellano in Washington DC is recommended for work with semiconductors, telecoms, consumer electronics and medical imaging.

Oliff & Berridge, PLC is a well-respected IP boutique with a rich history. The practice is led from Alexandria with additional offices in Charlotte and St Louis and is known for its strong presence in sectors such as semiconductors, electronics, and IT hardware and software. The team has a number of experienced partners, with founding members James Oliff and William Berridge leading the pack - both are hugely experienced, with 40 and 30 years in service respectively. Mechanical engineering expert Edward Walker is also recommended. The group’s client base has a strong focus on Asia Pacific, with key companies including Brother Kogyo, Kabushi Kaisha, Denso, Brother Industries and Seiko Epson.

Ropes & Gray LLP’s prosecution group sits within a 52-partner IP group which is noted for both its transactional and litigation skills. Key partners within the prosecution team include IP rights management practice co-heads Anita Varma in Boston and Joseph Guiliano in New York. Boston-based Edward Kelly is also recommended. The team complements the strong licensing group, and mandates undertaken include strategic prosecution, global management of portfolios and corporate support work. Among the patent prosecution group’s strong client base are Genzyme, Rovi and Bayer Healthcare. It also represents a global leader with biopharmaceuticals and multinational internet-related service provider.

Shook, Hardy & Bacon LLP is noted for its strong prosecution and litigation IP practice. The team provides prosecution services such as portfolio management and filings to a raft of large patent owners in the US, such as Sprint Nextel and Cerner Corporation. Mike Gross is experienced at advising clients on portfolio analysis, licensing and infringements, and is key counsel to marquee clients Nike, Microsoft and Stanley Blacker & Decker. He leads a team which includes key individuals Dan Devers and John Gibson. Newly promoted partner John Golian is also recommended.

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