Patent Prosecution
We have extensive experience in all areas of patent prosecution, handling not only patentability assessments, inventorship determinations, application preparation, and worldwide filing and initial prosecution strategy development, but also appeals, reexaminations, reissues, and interferences. We also work with and direct our foreign associates in local prosecution, oppositions, appeals, and cancellation proceedings in order to maintain a coherent and consistent strategy throughout the world. Our comprehensive experience in the law of intellectual property, in concert with our superior knowledge of technical subject matter, enables our attorneys to develop prosecution strategies as unique as the invention itself. Our ability to maximize the return on client investment results from formidable legal skill and experience; thorough preparation; precise accuracy and an uncommon level of imagination, working in complete harmony with the creative thinking of our clients.
Marshall, Gerstein & Borun has been ranked 41st among 352 law firms as a “Top Patent Firm” by Intellectual Property Today (March 2008). Firms are ranked according to the number of utility patents issued in 2007 where the firm is listed as the legal representative on the face of the patent. In 2007, MGB issued 560 US patents, making it one of the top 50 patent practices in the US. According to the survey, MGB ranked 17th in the number of design patents filed with 76 and 41st in the number of utility patents filed with 484.
Marshall, Gerstein & Borun was ranked 41st among 352 law firms as a “Top Patent Firm” by Intellectual Property Today (March 2008). Firms are ranked according to the number of utility patents issued in 2007 where the firm is listed as the legal representative on the face of the patent. In 2007, MGB issued 560 US patents, making it one of the top 50 patent practices in the US. According to the survey, MGB ranked 17th in the number of design patents filed with 76 and 41st in the number of utility patents filed with 484.
Marshall, Gerstein & Borun couples strengths in all areas relating to intellectual property law, with depth of experience in the entire range of technical subject matter, to provide clients with opinions and counseling of the highest caliber. Due to our reputation as an authority on intellectual property issues, we routinely provide independent legal opinions relating to the validity, infringement or non-infringement of the intellectual property of both clients and non-clients. The depth and breadth of the technology backgrounds of our attorneys ensures that we will be able to quickly grasp the legal impact of complex technological issues without unduly burdening our clients with time in getting us up to speed. Our timely and competent counseling helps clients to maximize the value of their intellectual property assets.
Our Patent Prosecution Services Include:
- Performing patentability, validity and non-infringement searches of prior art
- Preparing patentability opinions
- Preparing utility and design patent applications for filing in the U.S. and abroad
- Prosecuting pending patent applications
- Preparing and evaluating patent licensing agreements and technology transfer agreements
- Assisting with design-around efforts
- Preparing confidentiality agreements
- Analyzing inventorship issues
- Preparing and prosecuting reissue applications and re-examinations
