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. An effective and productive patent strategy is critical for protecting and exploiting one's valuable intellectual property, especially as patent laws evolve and as market conditions change. Developing an integrated global patent strategy to protect key innovations is vital and requires significant international patent experience, knowledge and critical tactical and strategic analyses and actions. Our Patent Law Group delivers results that are cost-effective and commercially significant allowing our clients to increase revenue, improve market position and enhance shareholder value, while retaining and growing their core assets.

Our group includes seasoned patent attorneys, the majority of whom bring to bear practical industry experience coupled with advanced degrees in engineering and science. This unique combination allows our attorneys to understand our clients' business considerations and goals, and provide practical business advice that is tailored to each client's specific needs, opportunities and challenges.

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

  • Life Sciences
  • Technology, Media and Telecommunications
  • Advanced Materials and Manufacturing
  • Clean Tech
  • Financial Services

The scope of our portfolio development work is global.  Outside the US, we work with a network of experienced patent lawyers around the world to implement the patent strategies that we devise with our clients.

Since the patent application and renewal process can be complex, we provide regular one-on-one training with clients with respect to invention, innovation, disclosure and protection. We often sit on our clients’ patent review boards to assist them in the evaluation process, and we have developed a user-friendly set of materials designed to act as a road map for our clients’ strategic initiatives.

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, 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, Post-Grant Review and Covered Business Method Post-Grant Review are fast, adversarial, and subject to statutory bars.  We also have substantial experience with traditional 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)