Patents are critical and material assets for companies and institutions of all types and stages of growth, making domestic and international patent protection a fundamental component of an effective business strategy.

In today’s knowledge-based economy, a company’s patent portfolio is often the most valuable line item on its balance sheet. Patents can play many important roles. Core-technology patents can create a significant barrier to entry for competitors, giving a company the space it needs to build valuable market share and brand recognition for its products or services. Improvement patents can allow a company to put its competitors at a significant disadvantage by preventing them from offering commercially important product features or stopping them from using cost-saving manufacturing techniques.

A patent can be of limited value, however, if it is not carefully drafted and thoughtfully prosecuted. The inclusion of even a single unnecessary word in a patent claim, or the making of even a single careless comment on the record during prosecution of a patent can eviscerate its market value. Our seasoned, technically-trained attorneys understand these pitfalls and know how to avoid them.

Our careful, and yet cost effective, approach to patent procurement has earned us the trust of some of the most innovative and forward-thinking companies and research institutions in the world. Included amongst the entities we’re proud to call our clients are renowned technological leaders, top-tier universities, early- and mid-stage technology-focused companies, as well as a handful of individual inventors seeking to protect and monetize their inventions.

Our lawyers assist clients in a broad range of industry sectors in connection with the development/enforcement of patent rights, including:

  • Advanced Materials & Manufacturing
  • Clean Tech
  • Communications & Networking
  • Electrical & Mechanical Engineering
  • Fintech
  • Life Sciences
  • Medical Devices
  • Motors & Generators
  • Robotics
  • Software & Computer Technologies

The scope of our portfolio development work is global. Outside the U.S., we work with a worldwide network of experienced patent lawyers to implement the patent strategies we devise with our clients.

As a multiservice law firm, we offer clients additional value that many boutique firms cannot provide. Attorneys at Pierce Atwood are skilled in a broad range of practices, which means we can address a wide range of our clients’ legal needs.

Areas of Expertise

Pierce Atwood’s registered patent practitioners devise and implement patent prosecution strategies, both in the U.S. and working with agents in foreign jurisdictions. We prepare and prosecute patent applications directed toward inventions in a broad range of technical fields. Our attorneys have guided the development of valuable patent portfolios for academic institutions as well as corporate clients ranging from startups to large multinationals. Devising and implementing a long term patent strategy is an important consideration in portfolio development and our attorneys have assisted in the development of patent strategies and portfolios that have yielded substantial licensing revenue for our clients.

Opinion work is an important service that we also provide for our clients. Whether it is patentability, infringement, validity, enforcement, inventorship, freedom to operate, or a related topic, our attorneys have the expertise and experience necessary to develop commercially meaningful and defensible positions.

Whether partnering with an emerging business with a million-dollar idea, a company developing innovative, disruptive technology, or a Fortune 500 organization looking to enhance its market share by growing its existing technology, Pierce Atwood offers clients a savvy, experienced, and creative team of IP transactional attorneys with deep understanding of patents, technology and their importance in business transactions.

Clients also benefit from having a firm with a range of practices, and attorney teams that can assist them with a broad spectrum of transactions involving intellectual property assets and commercialization and procurement of technologies and services. Our expertise includes:

  • Patent, trademark and copyright licenses

  • Software licenses

  • Joint development agreements

  • Sponsored research agreements

  • Research collaboration and material transfer agreements

  • Online marketing and distribution agreements

  • IT and business process outsourcing agreements

  • Due diligence

  • Strategic alliances and joint ventures

Most importantly, whether conducting IP due diligence or negotiating a license, we help clients get deals done.

The America Invents Act (AIA) significantly expanded the options available for challenging issued patents. The AIA created new administrative procedures at the U.S. Patent & Trademark Office, and replaced the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board (PTAB). The new procedures, including Inter Partes Review and Post-Grant Review, are fast, adversarial, and subject to statutory bars.  We also have substantial experience with traditional post-grant proceedings, including Interference and Ex Parte Reexamination. Pierce Atwood combines technical expertise and litigation acumen to represent its clients before PTAB with a singular focus — achieving our clients’ business goals.

A company’s intellectual property is often its most valuable asset, and clients benefit from knowing that their attorney team, which includes Pierce Atwood’s nationally-recognized litigators and patent experts, will vigorously defend their patents before the United States Patent & Trademark Office, state and federal courts at the trial and appellate levels, and before foreign tribunals. Whether our client is an emerging business or a Fortune 500 company with a vast patent portfolio, Pierce Atwood provides expert and cost-effective representation.

Click here to explore our experience in a range of IP litigation matters.

Representative Experience

Pierce Atwood trial attorney and patent lawyer Bob Stier successfully defended a group of 108 banks and credit unions against claims that the ATMs they were using were infringing on patents held by an organization calling itself Automated Transactions LLC (ATL). In the end, after the defendants persuaded the court to conduct an early claim construction to establish the narrow scope of ATL’s patent claims, plaintiff gave up, dismissed its trial counsel, dismissed its claims against all the defendants, and gave covenants not to sue to all the members of the joint defense group.

More
Defending Against ATM Patent Threats

We successfully resolved patent litigation involving Swedish biotech company Gyros AB and an American competitor after obtaining a favorable claim construction ruling from a federal judge in Boston.

Swedish Biotech Company in Patent Litigation
Emerging Companies & Venture Capital

Entrepreneurs turn to our Catalyst Program to get an idea off the ground, access funding sources, address basic legal requirements for running a business, and more. We welcome clients with creative ideas and disruptive new technologies. We tailor our legal services and advice according to your particular vision and near term objectives. Our Catalyst team members are experienced business advisers who know the challenges and triumphs that lie ahead of you, and how to prepare for them.

Jon Gelchinsky and Matt Stein discuss the importance of having trademark paperwork in order, because undoing the damage of not doing so can be costly.

Andrea Suter and Matt Stein share a cautionary tale of a company receiving less value in its acquisition due to unclear IP agreements.

Click here to learn more about how our Catalyst program can help your start-up or emerging business.

Representative Experience

Pierce Atwood trial attorney and patent lawyer Bob Stier successfully defended a group of 108 banks and credit unions against claims that the ATMs they were using were infringing on patents held by an organization calling itself Automated Transactions LLC (ATL). In the end, after the defendants persuaded the court to conduct an early claim construction to establish the narrow scope of ATL’s patent claims, plaintiff gave up, dismissed its trial counsel, dismissed its claims against all the defendants, and gave covenants not to sue to all the members of the joint defense group.

More
Defending Against ATM Patent Threats

We successfully resolved patent litigation involving Swedish biotech company Gyros AB and an American competitor after obtaining a favorable claim construction ruling from a federal judge in Boston.

Swedish Biotech Company in Patent Litigation

Pierce Atwood is U.S. intellectual property counsel to Electronic Recyclers International, Inc. (ERI), the largest recycler of electronic waste in North America. Headquartered in Fresno, California, ERI services every zip code in the United States with innovative and market leading e-waste solutions.  Pierce Atwood advises ERI in connection with patent and trademark strategies and IP portfolio management.

U.S. IP Counsel to Electronic Recyclers International, Inc. (ERI)