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Patent Portfolio Development and Counseling

We have done extensive patent counseling for clients ranging from large corporations and major research universities to middle market and emerging growth technology companies, as well as entrepreneurs and inventors. Many of our clients have told us that the work Nutter does for them is among the best they have ever seen, and that they send their most complex work to our firm because they are so confident we will get it right. In fact, one of those clients has made it a practice not to release a product until Nutter has opined on the clearance issues.

Nutter has the requisite bandwidth to file a large number of patent applications each year while maintaining a high quality. We have the expertise to create and manage large, complex patent portfolios, which can include hundreds of patents. We have invested in a dedicated docketing and foreign filing staff, as well as specialized paralegals assigned to patent prosecution tasks.

Nutter patent prosecution clients regularly acknowledge our group’s expertise and the high caliber of our legal knowledge, skill, and work product. We understand the needs and challenges associated with high‐volume patent work and strive to anticipate and address these challenges through consistent responsiveness and work quality. Clients also like our proactive approach to prosecution – we interview examiners on almost every application, resulting in compact and efficient prosecution that both saves money and improves results. Above and beyond this, our consistent responsiveness and follow‐through are mentioned as important attributes that set us apart from other firms.

The expertise we provide to enforce and protect our clients’ patent rights includes:

  • Developing strategies to identify, establish, protect, preserve, and enforce those patent rights;
  • Preparing and prosecuting U.S. and foreign patent applications;
  • Issuing freedom to operate opinions pertinent to specific products, devices or inventions;
  • Exploiting patents through licensing, cooperative research and development, or other arrangements;
  • Enforcing patents against infringers and defending against assertions of infringement;
  • Identifying and managing the tax consequences of patent activities; and
  • Advising and representing clients regarding infringement actions and other forms of litigation before federal courts and administrative agencies, including the U.S. International Trade Commission and the PTO.
    • The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors. We regularly advise and counsel clients regarding both domestic and international intellectual property issues that are critical to their businesses. Our attorneys are particularly active in advising clients with respect to strategies for protecting and exploiting intellectual property rights. This may involve helping clients devise and execute strategies for developing and protecting intellectual property portfolios (including patents, trademarks, copyrights and trade secrets), licensing intellectual properties, and partnering with third parties.
    • At times, our assistance takes the form of evaluating third-party patents and counseling clients prior to developing and launching new products. During the critical period of development, and before product launch, it is important that clients are aware of competitors’ patents and that they obtain sophisticated legal advice about how to mitigate the risk of future patent infringement.