Patent Prosecution

A solid, comprehensive patent portfolio is vital for companies to protect their intellectual property (IP) assets when doing business in the United States. However, patent prosecution in the U.S.–the process of obtaining a patent from the United States Patent and Trademark Office (USPTO)–can be a lengthy, complex and costly process, without any guarantees of success. It is imperative to work with legal specialists who have in-depth knowledge of the U.S. patent system, effective communication skills, and superior technical and scientific expertise. Only then can companies be assured that their innovations will receive maximum patent protection.

Representing a broad range of international and domestic clients on global protection and enforcement strategies, we serve our clients' needs throughout Europe, Asia and the United States.  Regardless of country of origin, we guide all of our clients through the complexities of the U.S. legal system, helping them to develop a strong IP position in the U.S. that demands respect in business negotiations and, when necessary, in court.

The World Leader in U.S. Patent Prosecution

Oblon Spivak is the world’s leading U.S. patent prosecution firm.  For 22 consecutive years, we have obtained more U.S. utility patents than any other firm in the world. In 2010, we were the first firm to obtain more than 5,000 U.S. patents in one year, twice as many patents as our closest competitors. Additionally, we have been recognized by leading publications and organizations worldwide for our first-class work and outstanding record of success, including Chambers and Partners USA, The National Law Journal, Managing Intellectual Property, IP Today, IP Law & Business (now Corporate Counsel's IP Insider), the Legal 500, and others.

Our Services

Our patent prosecution services include:

  • Drafting and prosecuting the full range of chemical, mechanical and electrical design and utility patent applications
  • Offering guidance and advice on complex procedural and legal issues
  • Handling expedited and accelerated patent prosecution
  • Conducting patentability studies
  • Obtaining patents that read on industry standards
  • Enforcing patents
  • Applying strategic prosecution in support of litigation
  • Developing strategies to maximize the value of a client's patent portfolio
  • Assisting clients in identifying and prioritizing patentable inventions
  • Establishing procedures to protect IP capital

In-Depth Knowledge of the U.S. Patent System

With a large number of former USPTO staff members, we intimately understand the innermost workings and policies of that office and can navigate the system in the most effective manner possible. We have carefully selected our team to include a former USPTO commissioner–who actively participated in the establishment of patent policy–as well as former Patent Judges and many former Patent Examiners.

Effective Communication Skills

We believe strongly in the importance of personal, face-to-face meetings with Patent Examiners. USPTO Director David Kappos has expressed support for this principle, stating in late 2009 that "when people talk to one another and listen to one another they can quickly understand points of agreement as well as differences, and resolve those differences in real time," adding that "interviews present a clear path to resolve issues and move prosecution forward quickly."

With an office located directly adjacent to the USPTO’s campus in Alexandria, Virginia, our attorneys meet directly with Patent Examiners on a daily basis rather than relying on other forms of communication. This face-to-face interaction has long been a critical component of our unparalleled record of success. Especially in cutting-edge and fast-changing areas of technology, meeting in person with Examiners ensures that they clearly understand and appreciate the invention and allows us to respond to any concerns in real time.

Superior Technical and Scientific Expertise

Oblon Spivak’s patent prosecution professionals possess technical and legal skills of the highest caliber. Our patent team is rich with attorneys holding doctorates or other advanced degrees in virtually every imaginable technical field, including all engineering disciplines, biotechnology, software, chemistry, and an array of other important technologies. Most of these attorneys also worked professionally in these fields before earning their law degrees. Our depth of education, technical expertise and legal experience enable us to expertly analyze technical and legal issues and present the most persuasive case on behalf of our clients. Several members of our team speak multiple languages, including French, German and Japanese, facilitating effective communication with our clients around the globe.

Cost-Effective Representation

Our in-depth knowledge of technologies, extensive patent experience, and strategic location near the USPTO enhance our ability to provide cost-effective service. Additionally, we manage our client costs throughout the process through efficient staffing, a streamlined filing process, and an electronic filing system that improves efficiency and provides our clients with up-to-date information through our secure extranet site.

Friday, February 01, 2013

Third party submissions in the past have not been frequently used in the U.S. or elsewhere.  In Europe, reports are that less than 1% of applications have had observations filed.  Despite the low use, reports from Europe do indicate that over 50% of examiners made use of the observations in prosecution, with over 14% finding that the...