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Patents

Overview

At Nutter we understand the needs and challenges associated with high‐volume patent work. We’ve 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. We anticipate and address the challenges our clients face through consistent responsiveness, a personalized approach, and a high caliber of work. What’s more, our proactive approach to prosecution interviews examiners on almost every application, resulting in compact and efficient prosecution that both saves money and improves results. 

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Our Practice

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.

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Representative Matters

Representative Matters

  • Obtained Summary Judgment of Invalidity for Life Science Company Accused of Patent Infringement

    Our client, a life sciences company, was accused by a competitor of patent infringement relating to an insertion method for a medical device. After briefing and a hearing, the Court disposed of the case on summary judgment, finding the patent-in-suit obvious as a matter of law.

  • Negotiation of early settlement of patent infringement suit

    Negotiation of an early settlement of a patent infringement suit whereby client agreed to re-design its product. Case was dismissed with no payment of damages.

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