Patent

Integrating Patent Strategy with Business Goals

In many industries, patents are the foundation upon which successful organizations are built. However, there are significant obstacles to the development and protection of valuable patent assets, and difficulties in navigating the minefield of other parties’ patents. We are adept at helping clients overcome these obstacles to obtain and leverage patent rights and to avoid patent infringement problems.

Patent Portfolio Development & Management

Morse patent professionals are experienced in all aspects of the development and management of patent portfolios in the U.S. and abroad, including:

  • Working with scientists and management to create procedures for identification, documentation, and assessment of new ideas;
  • Conducting prior art searches and providing patentability advice to aid in developing patent filing strategies;
  • Drafting patent applications which extract maximum value from core inventions;
  • Prosecuting patent applications before the U.S. Patent Office using efficient and creative strategies to obtain claims which support our clients’ business objectives;
  • Collaborating with local counsel in countries worldwide to obtain patent protection in foreign jurisdictions;
  • Counseling clients and affiliated personnel with regard to patent best practices and evolving law; and
  • Reviewing activities and products of others to identify infringement of client rights.

Assessment of Patent Rights of Others

Clients are often faced with the question of what impact the patent rights of others may have on the client’s own activities or the activities of potential partners. We help clients answer these questions by:

  • Conducting freedom-to-operate searches to identify third party patents and patent applications of relevance in the U.S. and abroad;
  • Analyzing patent claims to determine their proper scope as an aid to design-around efforts;
  • Reviewing proposed activities in view of third party patents to minimize risk of infringement, particularly during product development stage;
  • Assessing identified patents for validity and enforceability; and
  • Collaborating with local counsel in foreign countries to oppose key competitor patents.

Patent Opinions

Clients often need to obtain formal or informal opinions on issues of patentability, non-infringement, validity, and/or enforceability. We work with our clients to determine the type and formality of opinion appropriate for the circumstances, and we provide well-supported documents on which our clients can confidently rely in business transactions and contested proceedings.

Patent Due Diligence

A determination of the strength and value of patent assets is a frequent and important aspect of business transactions. We assist our clients in evaluating patent issues in connection with potential venture capital and private equity financings, public offerings, mergers & acquisitions, licensing transactions, and potential litigation.

Helpful Links

uspto.gov
wipo.org
patents.google.com
epo.org
autm.net
massbio.org

News & Insights

Holiday-Inspired Inventing Patents and Pumpkins: Hidden Soft Spots Can Ruin Them Both Morse Expands Patent Practice; Welcomes Martin Zhang, Jeannie Wu, Russell Widom Client Alert: USPTO Spoofed Calls Scam Lisa Warren Named Go To Patent and Trademark Lawyer by MA Lawyers Weekly Intellectual Property Basics: ICYMI Webinar Recap Patent Attorney Daniel Branson Joins Morse Morse Announces 2022 Attorney Elevations Alice – Dumber Than A Doorstop COVID-19 Alert: Accelerated Trademark Examination COVID-19 Alert: Prioritized Examination Pilot Program USPTO Extends Some Patent and Trademark Deadlines Inventor Rights Act Proposes to Grant Certain Rights to “Inventor-Owned” Patents How to Prepare for Counterfeiters, Whether You Sell on Amazon.com or Not Attorneys Elevated to Member and Senior Attorney Improved Forecast for IP Harvest 2017 Intellectual Property Year in Review A Happy Patent Holiday Finding Safe Harbor Celebrating Innovation and Evolution: Meet the Patent Team! Life Technologies Corp. v. Promega Corp. Freedom to Operate Ownership of Arising Inventions in Joint Development Agreements The Patent Process: A Tangled Web of Post-Patent Expiry Royalty Obligations IP Due Diligence: Patentability vs. Patent Infringement Star Wars And Technology: May The Patent Office Be With You… U.S. Introduction to the Hague System Robotics: Musings of a Patent Attorney Ten Crucial Questions to Answer Before Contacting a Patent Attorney Lisa Warren Named New Managing Partner Duck Dynasty or Patent Dynasty? Do You Deserve Better from Your Patent Attorney? The True Scope of a “Make-Use-Sell” License CAFC Split on Product-by-Process Claims Finally Resolved IP News IP News Biotech Patent Licensing: