The Legal 500

Firms ranked in this section have been selected according to the volume of work they handled during 2008 and the final quarter of 2007, but most importantly according to the breath and complexity above the volume of work.

Broadly speaking, firms handle a lot of matters for US-based clients, since filing patents for foreign-based clients often means less interaction, given that patents have usually already been written in their home countries.

Changes to information disclosure statement rules brought by the USPTO increased the burden on the applicant to disclose the relevancy of art cited, in that prior art of other background information may be submitted on paper using an USPTO-issued form, or electronically using the USPTO’s electronic filing system.

This chapter lists the best US practices for non-contentious patent applications. This section starts with the prosecution of utility and design patents. The term ‘design’ relates to the invention of an item, whereas ‘utility’ means a method for using an item.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

PRACTICE: Boasting ‘outstanding expertise in patent law’ and holding more than 90 PhDs, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.’s attorneys are ‘the best in the field, and show a strong capability to meet the clients’ needs at reasonable rates’, comment clients.

The practice recently formed a new working group to address the growing demand for advice in the alternative energy sector.

Among recent patent prosecution matters, the intellectual property group concluded a due diligence investigation for a European company on a type of technology it was looking to acquire.

In the pharmaceutical field, the practice has prosecuted over 2,000 US patent applications for long-term client Sanofi-Aventis. In addition, the firm has represented the company in numerous interferences, due diligence investigations and reissued applications. Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. has recently been involved in comprehensive patent transactions and strategic counseling for an international leading company in the mining and distribution of industrial minerals. The practice has evaluated developing technology for patentability, drafted and prosecuted patent applications in the USPTO and abroad, and analyzed patent enforcement opportunities.

The IP group is also expanding its work in the medical device field, counseling clients such as Abbott Laboratories, Boston Scientific and ExploraMed on prosecution, due diligence and licensing matters.

CLIENTS: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.’s long-standing clients include Caterpillar and Toshiba. In addition, patent prosecution work is also being carried out for AstraZeneca, Boston Scientific, SinterFire, Celera, Kinetic Concepts, Philips and Wyeth.

INDIVIDUALS: Leslie Bookoff in Washington DC advises start-ups and larger companies on all aspects of patent-related work with a focus on the medical field. Clients say that ‘he has the rare combination of well-honed legal acumen and experience-driven business-savvy that make him a go-to guy for intellectual property matters’. Anthony Gutowski in Reston, Virginia has vast expertise in complex USPTO proceedings as well as in enforcing patent protection outside the US. Gutowski represents companies of all sizes in the medical devices and electronics industries and is seen by clients as an ‘excellent manager of patent portfolio’.

Washington DC-based Roland McAndrews is experienced in the fields of medical devices, sporting goods and vehicle engine systems. Clients say he is ‘very customer-oriented and manages the work well’.

Fish & Richardson P.C.

PRACTICE: Fish & Richardson P.C. has represented great innovators and entrepreneurs, including pioneering inventors such as Alexander Graham Bell, Thomas Edison and the Wright Brothers. These days, Fish & Richardson P.C.’s patent prosecution practice is one of the busiest in the country, with about 4,600 patent applications filed in 2008, and ‘results match the levels of the attorneys’ excellent responsiveness’, say clients.

The practice has about 200 patent prosecution lawyers, working in eight national offices. Many of them have special competencies in life sciences, nanotechnology, computer science and electrical engineering. In the pharmaceutical and medical device fields, the practice specializes in preparing and prosecuting domestic and international patent applications, as well as non-infringement and invalidity opinions.

Clients praise the practice by saying that it is ‘sensitive to all of the concerns of outside counsel, particularly budgeting and costs’.

One of the few highlights that can be discussed from 2008 relates to a large patent portfolio for a multinational food and agricultural company involving a novel and natural, high-intensity sweetener.

CLIENTS: The practice attracts large companies like Bose, 3M Innovative Properties, Boston Scientific, Adobe Systems, Novartis, Intel, Osram, AstraZeneca, Mayo Clinic and Target.

INDIVIDUALS: Charles Hieken in Boston prosecutes patent applications in fields such as computers, navigation and control technologies, and is praised by clients for being ‘responsive and for achieving consistent results’.

Jeffrey Barclay, also in Boston, is a patent prosecutor with particular expertise in electrical engineering. Richard Anderson in Minneapolis chairs the firm’s patent group.

Oblon, Spivak, McClelland, Maier & Neustadt

PRACTICE: Benefiting from the proximity of the firm’s office to the USPTO in Alexandria, Virginia, the intellectual property attorneys at Oblon, Spivak, McClelland, Maier & Neustadt work closely with the patent examiners and, in 2008, prosecuted over 3,500 patents.

Clients are ‘impressed with the firm’s organized teamwork and quick responses’. Among long-standing work conducted in the prosecution field, the practice has obtained certified patents aimed at increasing international recognition of client Mitsubishi Electronic. The practice has also been successful in prosecuting patents relating to 3G mobile handsets.

Another prominent client is Sony, with which the practice has established an increasingly strong relationship over the past five years or so. The group currently handles the largest percentage of Sony’s US work originating in Japan as well as being the exclusive provider of US patent prosecution services for Sony Europe and Sony China. In addition to patent prosecution matters, Oblon, Spivak, McClelland, Maier & Neustadt advises Sony in third-party matters, unfair trade and numerous intellectual property strategy issues.

International construction materials-company Saint-Gobain is another client, for which the intellectual property group has been managing all its patent prosecution, opinion and counseling work for over 25 years.

CLIENTS: The firm acts for Valeo, the fourth largest patent filer in France, and other clients including BASF, Toshiba, Convolve, Tandberg USA, Visto, Solvay, Kao and Kuhn North America.

INDIVIDUALS: All of the recommended individuals are based in Alexandria, Virginia. With a PhD in organic chemistry, Stephen Baxter is experienced in all phases of patent prosecution, including the preparation of patent applications, client counseling and due diligence, with a particular focus on pharmaceutical patents.

Clients recommend ‘efficient’ Richard Kelly for his vast courtroom experience, in addition to patent counseling expertise on infringement matters. Of counsel Teddy Gron and senior technical advisor Yorikatsu Hohokabe provides fine technical support to the practice’s lead partners.

Sughrue Mion

PRACTICE: Described as ‘very well-known within the field’, the patent prosecutors at Sughrue Mion ‘do quality in a timely manner and provide not only an answer, but also a total solution to the request’, comment clients.

Headquartered in Washington DC, with offices in California and Tokyo, this intellectual property boutique counts over 100 attorneys working in patent litigation and prosecution, who obtained nearly 3,000 US patents for their clients in the 12 months through August 2008.

The firm stands out in terms of technical competence, fielding attorneys with advanced degrees in chemical and electrical engineering, computer science and biotechnology. Many of them have previous experience as examiners in the USPTO. Large international companies ‘trust the firm’s capability in handling prosecution and opinion cases’ in relation to the development, exploitation and establishment of their technologies. In particular, Sughrue Mion has a strong presence in countries such as Japan, and Korea, handling matters such as patent infringement, validity opinion, counseling and licensing for Mitsubishi, Toshiba, Samsung and Fujifilm.

CLIENTS: In addition to names mentioned above, the practice’s client roster includes Alcatel, Hitachi, NEC, IBM, Toyota and Zeiss.

INDIVIDUALS: William Mandir prosecutes patents in the electrical, software and mechanical fields. Peers praise John Rabena for his work in patent licensing negotiations, infringement and validity opinion. Brian Hannon is experienced in patent-related matters involving communications and mechanical technology. Susan Pan ‘provides good quality work and quick response to a general request other than a particular prosecution or opinion case’, say clients. Pan practices in both patent litigation and prosecution in fields such as computers, voice-processing algorithms and numerical machine controllers. All the lawyers are based in Washington DC.

Birch, Stewart, Kolasch & Birch, LLP

PRACTICE: Birch, Stewart, Kolasch & Birch, LLP has offices in Falls Church and San Diego and provides assistance on intellectual property prosecution matters for a variety of clients, particularly computer hardware and software producers and also chemical companies.

The intellectual property group includes attorneys, patent agents and technical advisors as well as former patent examiners, giving it a range of experts who can advise clients through the patenting process.

Among recent highlights, the practice patented a personal navigation device, which includes a global positioning system (GPS) module for generating various sets of co-ordinate values, on behalf of an Asian inventor.

One of the firm’s most notable clients is LG Electronics, for which the practice wrote a patent for an indoor unit for a multifunctional air conditioner. In addition, the intellectual property group handles high volumes of work for other Asian electronics companies, such as Fujifilm and Sharp.

CLIENTS: Chemical sector clients include the Japanese Sumitomo Chemical, Asahi Kasei Kabushiki Kaisha and Daicel Chemical Industries. In the electronics field, the practice is involved in patent prosecution matters for Delta Electronics, Mitsubishi, Hitachi and Lockheed Martin.

INDIVIDUALS: John Bailey in Falls Church, Virginia, has a background in chemistry and biotechnology. He also worked a year in Japan, where he counseled and trained Japanese clients in these fields.

Mark Nuell in San Diego has vast experience in the preparation and prosecution of patent applications in the biotechnology, pharmaceutical and chemical fields.

Michael Cammarata in Falls Church has over 20 years’ experience in patent prosecution and litigation, and formerly worked for six years as patent examiner at the USPTO.

Blakely, Sokoloff, Taylor & Zafman

PRACTICE: ‘One of the pioneering patent law firms in Silicon Valley’, according to clients, Blakely, Sokoloff, Taylor & Zafman is an ‘excellent firm’ with extensive legal and technical expertise in the field of patent prosecution. The practice prepares and prosecutes applications in the US and internationally, particularly for clients in the computing industry.

Since its foundation in 1975, the firm has grown from four original partners to over 80 attorneys practicing in six locations on the East and West Coast. The intellectual property group has developed a strong reputation in the hi-tech sector, helping to secure protection of IP capital for technology giants such as Intel and Apple, while providing legal counsel from emerging companies.

On behalf of Claris, the practice patented a computer system providing a method for generating and manipulating graphic objects on a computer display screen.

CLIENTS: The firm advises numerous California-based clients such as Intel, Network Appliance, Openware Systems, Good Technology, and Redback Networks. The practice also counts the following Asian companies in its client roster: Ricoh, NTT, DoCoMo and South Korea’s Electronics and Telecommunications Research Institute.

INDIVIDUALS: Gordon Lindeen in Denver is experienced in patent counseling, prosecuting and in handling international portfolio management services. Before joining the firm, he worked in Munich, Germany, where he prosecuted patents before the European Patent Office.

Eric King in Orange County prosecutes US and foreign patent applications, mainly in the electronics, computing and software industries.

Judith Szepesi in Sunnyvale focuses on patent prosecution and licensing for electrical and computer clients.

Foley & Lardner LLP

PRACTICE: Foley & Lardner LLP’s attorneys have ‘great expertise in intellectual property-related work, in addition to understanding clients, as well as counterparts’ businesses and having the creativeness in coming up with new ideas for the discussion and settlement’, comment clients.

Headquartered in Milwaukee, the firm counts 180 patent prosecution attorneys working for mature manufacturing companies, in sectors such as automobile, household appliances, new technology, financial services and video-compression.

Clients praise the attorneys’ ‘great attention to detail, going about and beyond critical thinking’, and their ‘compassion and commitment, showing how much they care about their clients’. In addition, Foley & Lardner LLP’s lawyers are appreciated for ‘understanding technologies, giving appropriate and professional advice, for their negotiation skills and their creative ideas’.

During 2008, the intellectual property group filed a high volume of patents in the biotechnology and pharmaceutical areas, for companies such as Ireland-based Elan Pharmaceuticals.

CLIENTS: Clients include Behr, Cummins Engines, Incyte, Johnson Controls, Wyeth and Hewlett-Packard. In addition, the practice advises NEC LCD Technologies and Nissan Motor.

INDIVIDUALS: Leon Radomsky in Washington DC chairs the firm’s nanotechnology industry team and focuses on client counseling, intellectual property due diligence and agreements.

Antoinette Konski in Silicon Valley works with life science and technology clients in preparing and optimizing their patent portfolios.

Harold Wegner splits time between Washington DC and Tokyo, and is experienced in patent enforcement and management for multinational, particularly Chinese and Japanese, companies.

McDermott Will & Emery LLP

PRACTICE: McDermott Will & Emery LLP’s clients ‘receive excellent service, always on time and at a fair price’. Its 100 registered patent lawyers and agents represent about 1,500 active clients, including large companies in sectors such as electrical engineering, telecommunications, computer hardware and software, and pharmaceuticals.

The practice is successful at ‘protecting intellectual property rights and in knowing how to avoid litigation’, say clients, ‘blending a business-oriented approach with the client’s cost sensitivity’. The patent prosecution practice works hand in hand with the patent litigation group under the umbrella of the intellectual property media & technology group, ‘excelling in procurement and licensing matters’, comment clients.

In the pharmaceutical field, McDermott Will & Emery LLP counts Isis Pharmaceuticals and Novartis among its clients, for which the firm handles patent application matters and license agreements.

CLIENTS: The practice represents Panasonic, Honeywell, Dell, Samsung Corning and Linear Technology.

INDIVIDUALS: Stephen Becker in Washington DC has an academic background in technical engineering, and is experienced in patent matters involving semiconductor electronics, telecommunications and computer-related inventions. Toby Kusmer in Boston is ‘highly experienced and motivated’, according to clients. Astrid Spain in San Diego focuses her practice on patent counseling, prosecution and litigation in the life sciences and pharmaceutical industries.

Baker Botts, L.L.P.

PRACTICE: Seen as ‘one of the top firms in the US with broad practice areas plus a deep pool of patents’, Baker Botts, L.L.P. impresses clients with ‘its responsiveness, quality service and willingness to listen to clients’ directives’.

In their praise about the firm, clients comment that the ‘the practice is always careful about budgeting concerns’.

The practice is spread across four offices in Texas plus one in Washington DC and in New York. It has been involved in numerous patent prosecution matters in the computing and electronics fields.

Among recent highlights, the practice rep-resented Dell in connection with the preparation and prosecution of patent applications in the US and abroad in relation to the design, development and manufacturing of various computer systems. In addition, Baker Botts, L.L.P. serves as outside counsel to the same client on patent assertion and licensing disputes.

CLIENTS: In addition to Dell, the practice also acts for AT&T, American Calcar, MasterCard, Halliburton Energy and Cisco Technology.

INDIVIDUALS: Barton Showalter in Dallas chairs the IP group, and advises clients in fields such as computer software, semiconductor devices, optical systems and medical devices.

Roger Fulghum in Houston impresses clients with ‘his responsiveness to requests’. Fulghum prosecutes patent applications before the USPTO on matters involving computer systems, telecommunications, semiconductors and e-business software, and acts on behalf of clients on numerous contentious matters in district and federal courts.

Kevin Meek in Dallas has extensive patent litigation and prosecution experience in a broad spectrum of technologies and has an undergraduate degree in electrical engineering.

Brinks Hofer Gilson & Lione

PRACTICE: The intellectual property group at Brinks Hofer Gilson & Lione is ‘experienced in the patent prosecution field’, say clients. The practice offers advice in multiple areas, such as biotechnology, pharmaceutical, computer technology and nanotechnology, for an international client-base. About a quarter of the workload is conducted for clients based outside the US, particularly Germany, Japan and Korea.

The practice recruited four patent attorneys from Pfizer, who joined the Ann Arbor office, Michigan.

The client roster includes Fortune 500 companies, such as Deere & Company, AT&T and Accenture. For Accenture, the practice patented an automatic test generation for a reference testing (SMART). This system allows organizations to identify and resolve software bugs, ensuring higher quality software and development productivity.

CLIENTS: Clients include the Chicago Mercantile Exchange, the Chicago Board Options Exchange, Alps Electric, NTT DoComo, LG Philips, Infineon Technologies and Kimberly-Clark.

INDIVIDUALS: Kent Genin in Chicago has a background in electrical engineering. He counsels clients on patentability, validity and infringement in industries such as software, medical devices, telecommunications and manufacturing equipment.

Chicago-based Peter Nichols is experienced in preparing and prosecuting US utility and design applications, and patent applications in such fields as cosmetics, cleaners, detergents, nanotechnology and food technology.

Knobbe Martens Olson & Bear LLP

PRACTICE: Clients praise the ‘firm’s attorneys for their understanding of key legal analysis and technical details’. Primarily located in California, Knobbe Martens Olson & Bear LLP has expanded its national coverage, with the addition of offices in Washington DC and, more recently, in Seattle. The practice fields nearly 250 lawyers specializing in intellectual property, and represents a range of companies, from start-ups to Fortune 500 listees, on licensing, preparation and procurement of patents. The international IP group provides advice and counseling for foreign clients, such as Samsung and Yamaha.

Highlights for the practice include serving as outside counsel for the National Institute of Health, providing patent-related services such as patent searches, prosecution and licensing on matters relating to vaccines, therapeutics and diagnostics.

CLIENTS: The firm has a wide range of clients in the computer hardware and software industry, including Masimo Corporation. In the pharmaceutical field, clients include Genentech and Acadia Pharmaceuticals.

INDIVIDUALS: Combining his academic background in biology and his professional expertise in computing, Michael Fuller in San Diego and San Francisco practices in the field of bioinformatics. He is described as a ‘natural leader, who can grab people’s attention within seconds’.

Jerry Hefner in San Diego advises clients on the preparation and prosecution of patent applications, intellectual property portfolio management and patent infringement matters in the biotechnology, chemicals and pharmaceuticals fields. ‘He is an up-and-coming leader of the firm, who has the capability to shine’.

Merchant & Gould PC

PRACTICE: Minneapolis-based Merchant & Gould PC is an IP boutique staffed by 100 attorneys working on prosecution matters. In 2008, the firm expanded its Denver office with the addition of four attorneys and a patent agent from Greenberg Traurig LLP.

The firm represents a broad spectrum of clients, with particular strengths the practice’s electronics, chemicals and biotechnology. Among the practice’s clients is Microsoft, for which it has managed numerous patent portfolios, in addition to counseling and patent cross-licensing.

The ‘thriving’ mechanical practice group offers assistance in intellectual property strategies, patentability, preparation of opinions and prosecution of utility and design patents. The group includes numerous former engineers, who specialize in the automobile, sports, medical devices and power tools industries.

CLIENTS: Among the practice’s clients are Seagate, Sun Microsystems, Chevron Phillipps Chemical, Donaldson, American Express, Genentech and ADC Telecommunications.

INDIVIDUALS: Christopher Leonard in Knoxville, Tennessee counsels clients on patent prosecution, licensing and infringement matters relating to software and traditional electrical and mechanical technologies.

Gregory Sebald in Minneapolis focuses on client counseling on issues relating to patent prosecution in mechanical and electro-mechanical areas, as well as chairing the copyright and entertainment law committee.

Nixon & Vanderhye PC

PRACTICE: Located in Arlington, Virginia, Nixon & Vanderhye PC has a ‘robust’ patent prosecution practice, for national and international clients. The intellectual property group prepares, files and licenses a high number of patents, particularly on technology.

The firm counts about 35 attorneys, of whom half handle patent prosecution matters, and has a portfolio of 2,000 active clients. Many of the practice’s lawyers have served as patent examiners and/or members of the Board of Patent Appeals and Interferences at the USPTO, and they are often called in by larger general-practice firms to work on complex patent prosecution issues.

The IP group operates on a model of a small number of experienced attorneys with proven track records serving clients in a variety of industries.

CLIENTS: Most of the work conducted by the practice is for international clients, with Asian clients including Toshiba, Sharp and Nintendo.

INDIVIDUALS: With an academic background in mechanical engineering, Alan Kagen prosecutes numerous patent applications relating to mechanical and electrical technologies, as well as preparing opinions on patent validity and infringement. He is praised for being ‘as talented a patent attorney as we have dealt with over the past 25 years’, says a client.

Bryan Davidson, a former process control and instrumentation engineer, is also recommended.

Fitzpatrick, Cella, Harper & Scinto

PRACTICE: New York-based Fitzpatrick, Cella, Harper & Scinto is an ‘excellent firm with a good reputation’, say clients. It has additional offices in Washington DC and Costa Mesa, California, and is staffed by more than 50 patent prosecution attorneys. The prosecution practice continues to ‘remain strong’, having prosecuted over 20,000 patents over the course of the past ten years. The intellectual property practice specializes in interference procedures, reissue applications and re-examination of issued US patents, but also provides more general service relating to patent applications and patent portfolio development.

Its international clientele ranges from Fortune 500 companies to start-ups, in industries such as the life sciences and electronics. The practice is doing more work for existing clients such as Bristol-Myers Squibb.

In the medical devices arena, the intellectual property group has counseled clients such as Medtronics on interferences.

CLIENTS: Fitzpatrick, Cella, Harper & Scinto acts on behalf of IBM, Canon, Kodak Polychrome Graphics, Loctite, INA-Schaeffler KG, Warner-Lambert and United Technologies.

INDIVIDUALS: Antony Zupcic chairs the patent prosecution practice and has vast experience in all areas of intellectual property law, with a particular focus on interferences, patent prosecution and client counseling. Robert Fischer is the chairman of the licensing and transactions practice group, and is praised by peers for his expertise in licensing, opinion work, counseling and patent protection in the software and electronic fields. Frank DeLucia prosecutes patents and works on re-examinations and reissue proceedings in the electrical and software arena. Former electronic systems engineer Douglas Sharrott is ‘an expert’ in prosecuting and litigating patents in the electrical and mechanical fields. All the lawyers are based in New York.

Kenyon & Kenyon

PRACTICE: Kenyon & Kenyon intellectual property practice ‘offers good practical advice with a common, pragmatic approach to issues’, say clients. Headquartered in New York, and with offices in Washington DC and Silicon Valley, the firm counts about 60 patent prosecutors who impress clients with ‘their availability, their co-operation and for not leaving any questions unanswered’. Many of the attorneys hold PhDs in various subject areas, providing expertise in electrical engineering, physics and mathematics, and ensuring that the patent prosecution group is diverse and broad. The group represents clients from the automobile, telecommunication and electronics industries.

The ‘professional’ practice handles matters involving patent re-examination, counseling and interferences, and is praised for ‘looking for business-oriented solutions’ and ‘understanding clients’ needs and situations’. This ‘well-established’ intellectual property group has a substantial body of work in writing patents for Deutsche Telekom, and for handling large volumes of prosecution work for other large international clients in the software arena.

CLIENTS: Clients include Boston Scientific, Teva Pharmaceuticals, Intel, Daimler, Toyota and Nippon Steel and SAP. It also represents several universities, such as Columbia, Cornell and Princeton.

INDIVIDUALS: Deborah Somerville focuses her practice IP matters for clients in the pharmaceutical, biotech, chemical and medical device arena.

Clients praise Patrick Birde for ‘his professionalism and for accommodating their needs’, whereas Gerard Messina is admired for ‘his knowledge, expertise and thorough preparation’. All three lawyers are based in New York.

Morrison & Foerster

PRACTICE: Headquartered in San Francisco and with a total of ten national offices, full-service firm Morrison & Foerster counts about 350 ‘very professional’ intellectual property attorneys, including 71 patent prosecutors, plus a number of patent agents.

The practice handles numerous patent portfolios and provides counseling on licensing matters and patent clearance to universities and pharmaceutical companies, such as Novartis and La Jolla.

The intellectual property department is divided into life science and information technology practice groups, and is expanding its presence in the field of nanotechnology. In this arena, the practice recently helped to develop worldwide strategies for Abraxis BioScience’s breast cancer therapy product, Abraxane. The practice is drafting and prosecuting patent applications for several pipeline drugs that are either currently in clinical trials or in pre-clinical development.

Among highlights in the biotechnology arena, the practice is developing an overall patent strategy and patent application strategy on behalf of Genentech relating to therapeutic biologics, such as antibodies, drug targets, production and formulations.

CLIENTS: The practice attracts clients such as DreamWorks Animation, SKG, Guided Delivery Systems, Yahoo!, the University of California and Stanford University.

INDIVIDUALS: Catherine Polizzi in Palo Alto is the co-chair of the firmwide intellectual property group. With a PhD in molecular biology and biochemistry, Polizzi advises life sciences companies on patent prosecution and procurement matters as well as providing portfolio strategic counseling.

Peng Chen in San Diego is experienced in the fields of biotechnology and pharmaceutical industries, and counsels clients on patent portfolios and prosecution matters.

Oliff & Berridge, PLC

PRACTICE: Having recently celebrated its 25th anniversary, the firm numbers 50 attorneys and operates out of Alexandria, Virginia, and St Louis, Missouri. The practice files a high number of patent applications, particularly in the chemical, electrical and mechanical sectors.

The practice boasts a ‘strong’ patent prosecution practice, spanning across a whole range of legal services, such as counseling, opinions, licensing as well as litigation and dispute resolution.

One of Oliff & Berridge, PLC’s most prominent client is Fuji Xerox, for which the practice prosecuted patents relating to an image-processing cartridge.

CLIENTS: Clients include Seiko Epson, Brother Kogyo, Kabushi Kaisha, Brother Industries and Denso.

INDIVIDUALS: Edward Walker is a former examiner at the USPTO and has a background in mechanical engineering. Founding partner James Oliff has over 40 years’ experience in patent law and a degree in aeronautical engineering. Both attorneys are based in Alexandria.

Pillsbury Winthrop Shaw Pittman LLP

PRACTICE: Full-service law firm Pillsbury Winthrop Shaw Pittman LLP boasts ‘personable and very experienced attorneys’, comment clients.

The intellectual property group has an international clientele, with a focus on the Japanese market, where a large volume of prosecution work originates. It brings to bear resources in 11 US offices and internationally in London, Shanghai and Tokyo. This ‘responsive’ practice attracts praise from clients, who range from large organizations to individual inventors.

Despite not filing as many patent applications as some other firms, Pillsbury Winthrop Shaw Pittman LLP occupies a stable position in the patent market, offering a full range of prosecution services, as well as portfolio management, licensing agreements, counseling and patent infringement.

CLIENTS: Notable clients include Toshiba, Nokia, Yamaha, Stanley Toolworks, iMotions and ASML.

INDIVIDUALS: Clients regard practice leader James Gatto in McLean, Virginia, as ‘having tremendous amount of experience in the patent prosecution field’. Gatto is ‘a pleasure to work with’, comment clients.

Mark Danielson in Silicon Valley combines his legal experience with his advanced technical degrees, offering advice across a broad range of industries.

Clients praise San Diego-based John Wetherell ‘for giving them confidence through his sensible advice’.

Banner & Witcoff, Ltd.

PRACTICE: Patent prosecution is the bread-and-butter work for Banner & Witcoff, Ltd., procuring nearly 1,000 design patents in 2008 through its 80 attorneys in Chicago, Washington DC, Boston and Portland. Its range of work takes in the automobile, lasers, consumer electronics and medical device industries. The firm provides ‘provides very good customer service in the patent arena’, say clients. Clients say, ‘the practice’s rates are very impressive when compared to the market, especially when considering the quality of attorneys and services received’.

CLIENTS: The practice attracts clients such as Electrolux, NIKE, Microsoft, Nokia, Toshiba, PepsiCo, Libman and Newell.

INDIVIDUALS: ‘Competent’ Robert Katz in Washington DC drafts and prosecutes patents relating to mechanical, electro-mechanical, software and computer-related devices or services.

Rebecca Rokos in Chicago focuses on patent portfolio management and counseling in the food and beverage industries, among others.

Buchanan Ingersoll & Rooney

PRACTICE: Following the acquisition of Burns Doane Swecker & Mathis and Klett Rooney Lieber & Schorling in 2005 and 2006, respectively, Buchanan Ingersoll & Rooney became what is today the largest state-government lobbying practice in Pennsylvania.

About a quarter of the firm’s 60 IP lawyers worked as former examiners at the USPTO and many have technical backgrounds in various technical and mechanical fields.

The practice has undertaken an extensive patent portfolio review and patent application process for Profectus Biosciences.

CLIENTS: Notable names include Lockheed Martin, Samsung, L’Oreal, ABB and Konica Minolta, MedQuist and Chevron.

INDIVIDUALS: Charles Wieland in Alexandria, Virginia, is experienced in preparing and prosecuting utility and design patent applications in the electrical and radiant energy industries. Peter Skiff, in the same office, prosecutes patent applications nationally and internationally, and has been involved in the re-examination, reissuing and interference proceedings before the USPTO.

Cantor Colburn LLP

PRACTICE: Intellectual property boutique Cantor Colburn LLP manages patent portfolios in a variety of sectors, such as hi-tech industries, education, and is perceived by clients as being ‘reputable and providing exemplary service’.

Based in Hartford, Connecticut and with offices in Atlanta, Detroit and Washington DC, the 90-attorney IP practice advises clients including start-ups, universities and corporations. The practice recently expanded its Detroit office, with the addition of prosecutors Edmund Anderson and Karl Barr and a patent litigator, Scott McBain.

The intellectual property group conducts due diligence work and has recently added Mattel, MySpace.com, Georgia Pacific and Service Master to its client list.

CLIENTS: Significant work has been conducted for IBM, BIC, SABIC Innovative Plastics, Samsung, General Electric and Korea LG.

INDIVIDUALS: Keith Murphy advises clients on intellectually property issues in the mechanical engineering and optics fields. Co-managing partner Philmore Colburn has a degree in electrical engineering and practices intellectual property law in the computing, e-business, and electronics areas. Clients describe him as ‘astute, with ears to the ground and hands-on experience’.

David Arnold is a former engineer who works on utility and design patent applications and prosecution. All the attorneys are based in Hartford, Connecticut.

Crowell & Moring LLP

PRACTICE: Headquartered in Washington DC and with offices in California, New York, London and Brussels, the full-service firm Crowell & Moring LLP offers a range of services in patent prosecution and procurement. The practice works closely with other groups within the firm, and issued a high volume of patents during 2008.

In 2008, the intellectual property group grew in size with the addition of seven patent prosecutors and litigators from Buchanan Ingersoll & Rooney, bolstering its numbers to more than 55 attorneys. The practice represents clients within the pharmaceutical, chemical and biotechnology industries, among others.

CLIENTS: Daimler, Funai Electric, Sprint and BMW frequently turn to Crowell & Moring LLP for patent prosecution assistance.

INDIVIDUALS: ‘Responsive’ Jeffrey Sanok has a degree in electrical engineering and specializes in patent acquisition and counseling. Clients praise him for his ‘deep technical skills’.

Michael Jacobs focuses his practice on intellectual property litigation, portfolio management, patent prosecution and licensing.

Harness, Dickey and Pierce

PRACTICE: Harness, Dickey and Pierce has over 100 patent attorneys who are ‘experienced in various technologies’, and files an average of 2,500 patent applications per year for a broad foreign client base.

Among the clients is Boeing, which instructed the intellectual property group to file a number of patents, including a recent one for an aircraft fuselage.

CLIENTS: Black & Decker, Omron Healthcare and Biomet are clients of the practice.

INDIVIDUALS: Richard Wagner in Detroit is a former electrical engineer who concentrates his practice on IP rights relating to the electrical, mechanical and biomedical fields. John Castellano in Reston, Virginia, has a degree in chemical engineering, and advises clients on patent application preparation and prosecution.

Antonelli, Terry, Stout & Kraus, LLP

PRACTICE: Despite numbering only eight partners and two associates, intellectual property boutique Antonelli, Terry, Stout & Kraus, LLP prosecutes a large number of patents, particularly in the engineering and electronics fields. The firm is based in Arlington, Virginia, and has an established network with international clients, such as Hitachi and Nokia.

CLIENTS: The practice attracts a number of European clients including Institut Français du Petrole, an oil and research group, and Alstrom, the French power generation and rail transport system.

INDIVIDUALS: Melvin Kraus brings to the firm over 40 years’ experience in patent prosecution and litigation. Paul Skwierawski focuses his practice on patent application drafting and prosecution in the electrical, electronic and computer fields.

Bacon & Thomas, PLLC

PRACTICE: Alexandria-based Bacon & Thomas, PLLC’s 13 attorneys do a fair amount of work in the patent prosecution field. The practice is known particularly for handling matters in the technology and life science areas for foreign clients. Notable clients include Taiwan’s Wintek, for which the intellectual property group wrote a patent for a micro-reflective liquid crystal display device with color filter substrate.

CLIENTS: Sunplus Technology, Mobiletron Electronics and Bristol-Myers Squibb are also clients.

INDIVIDUALS: George Loud has over 35 years’ experience in preparing and prosecuting US and foreign patent applications, as well as in counseling and litigation.

Clients benefit from Eric Spector’s vast expertise in intellectual property prosecution in the chemical, biotechnical and mechanical sectors.

Dickstein Shapiro

PRACTICE: Washington DC-based Dickstein Shapiro has about 60 patent prosecutors and a robust domestic clientele, particularly in the electrical field, such as Micron Technology and Infineon Technologies.

Hitachi and IBM are among clients who have trusted the practice to file a large number of patents and manage their portfolios.

CLIENTS: Clients include Asian clients such as Ricoh, Omron, NEC and Yamaha.

INDIVIDUALS: Jeremy Cubert in Washington DC specializes in patent prosecution, licensing and technology transfer. DeAnna Allen, also in Washington DC, has broad expertise in patent and trademark litigation and prosecution as well as computer technology.

Staas & Halsey LLP

PRACTICE: All of Washington DC-based Staas & Halsey LLP’s 28 attorneys have an engineering or technical degree, together with work experience in various technical areas. Therefore, the practice is ‘very well qualified’ to assist clients in technology-related matters.

Notable clients include Fujitsu, for which the intellectual property group recently patented a device for cutting a laminate of a semiconductor substrate and a glass substrate.

CLIENTS: In addition to Fujitsu, electronics specialist Samsung is listed among the firm’s clients.

INDIVIDUALS: Founding member HJ Staas has over 40 years of experience in the field of patent litigation and prosecution. Clients also recommend William Herbert.

Townsend and Townsend and Crew

PRACTICE: Specializing in antitrust and intellectual property matters, Townsend and Townsend and Crew is well known for its patent prosecution work. The 230-attorney practice, half of whom are patent prosecutors, located in seven US offices plus one in Tokyo, the practice prosecutes a high volume of patents, mostly for US clients with a focus on the electronics, software and other hi-tech industries.

One notable long-term client is Altera, a world leader in system-on-a-programmable-chip (SOPC) solutions, which sought Townsend and Townsend and Crew to build its patent portfolio.

CLIENTS: In addition to Altera, the practice represents Hitachi, Nvidia, Hynix Semiconductor, Cierra, Xtent, Applied Materials and Soaria.

INDIVIDUALS: John McGroarty in Washington DC advises clients regarding the development of portfolios in the chemical, pharmaceutical and electronic technology sectors. Robert Colwell in Palo Alto counsels clients in Silicon Valley and abroad on patent portfolio management in the electronics, telecommunications and software.

Patrick Jewik in San Francisco is a former patent examiner at the USPTO and advises clients in the fields of medical devices, bioinformatics and nanotechnology.

Wenderoth, Lind & Ponack, LLP

PRACTICE: Located in Washington DC, Wenderoth, Lind & Ponack, LLP has 85 years of history in prosecuting patents and other intellectual property rights, and it continues to advise clients, particularly in the technology field.

The intellectual property group numbers seven partners and 12 associates who provide services such as opinion, interference and search work, mostly for foreign clients. Among these is Panasonic, for which the practice recently obtained a patent for an optical disc.

CLIENTS: Clients include NTN, Speedel Pharmaceutical and Kyorin Pharmaceutical.

INDIVIDUALS: Jeffrey Filipek is experienced in patent prosecution relating to the electronic, software, optical and communication systems fields.

Young & Thompson

PRACTICE: Intellectual property boutique Young & Thompson is located in Alexandria, Virginia, and, despite its small size, files over 1,700 new utility patents per year in the electrical, chemical, mechanical and biotech fields. The practice includes 18 patent and trademark attorneys, who mostly handle matters for foreign clients, many from Asian countries.

CLIENTS: The practice represents Fuji Photo, Siemens Automobile, Pioneer and Earth Decision Sciences.

INDIVIDUALS: Thomas Perkins has vast expertise preparing and prosecuting patents in the electronics, electrical and mechanical fields. Benoît Castel worked for 18 years as a patent examiner at the USPTO and has a degree in chemical engineering.