Patent Strategy

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For due diligence, patent opinion work, litigation and trial support, and related patent office trials and appeals, Ropes & Gray provides leading pharmaceutical, technology, telecommunications and medical device companies, as well as investors in these companies, with a wide range of patent counseling services.

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Overview

Our patent practice has patent professionals on three continents, including several that are qualified in more than one jurisdiction, making us uniquely positioned to help clients develop clear, actionable patent strategies across a broad range of technologies and regions.  Our attorneys and technical advisors have excellent technical backgrounds, with many holding advanced degrees in organic chemistry, cell biology, genetics, electrical engineering and computer science, neuroscience, and materials science.  We work closely with our clients to understand their technology and business, as well as the relevant third-party patent landscape.  Our strategic patent counseling is informed by the decades of experience our attorneys and technical advisors have in preparing and prosecuting patent applications, diligencing patent portfolios and designing remediation and risk mitigation strategies, and assessing risks associated with third-party patent portfolios.

Due Diligence

Our IP due diligence practice draws on our experience handling a wide range of patent and transactional matters for our clients, and includes:

  • Performing due diligence evaluations of patent portfolios and related IP assets in the context of collaborations, licensing agreements, financings and mergers & acquisitions.
  • Advising some of the largest pharmaceutical and medical device companies in the world on freedom-to-operate issues and strategic patent portfolio development for their commercial products, in the United States, Europe and Asia.
  • Handling due diligence for many transactions on both the investor and target sides, including pre-IPO investments by venture capital groups, underwritten offerings of securities, pre-acquisition strategic investments by operating medical device companies and pharma-biotech collaborations.

Our diverse experience in patent and transactional matters uniquely positions us to assess strengths and weaknesses of target company’s IP positions, and translate those analyses into risk management strategies that benefit our clients' business interests. It also allows us to know which IP issues really matter in a deal, helping us to better focus client resources and energies.

Our patent attorneys also team with our FDA regulatory attorneys to advise on patent life cycle management, orange book listing and delisting matters , and issues relating to the follow-on biologics legislation.

Opinions

We consider the full range of our IP clients’ needs and regularly provide opinions on matters, including:

  • Analysis of patentability
  • Freedom-to-operate studies, and non-infringement and validity opinions
  • Pre-litigation assessments
  • Orange book listing and delisting assessments  
  • Structuring business and tax aspects of transactions to maximize savings

Litigation support 

Our attorneys are skilled at communicating complex ideas to judges, juries and government agencies. Our sophisticated team of patent attorneys works closely with our trial attorneys to develop litigation strategies by:

  • Assessing infringement or noninfringement positions
  • Assessing validity and enforceability positions
  • Reviewing complex file histories and lab notebooks
  • Assessing issues such as conception and inventorship
  • Developing effective cross-border litigation strategy

Contested Proceedings

When disputes arise, Ropes & Gray attorneys seek to resolve issues efficiently and economically. If litigation becomes necessary, we tap our experience in all aspects of patent office trial proceedings, and work with our clients to devise the best overall strategy. Our attorneys handle a variety of contested proceedings, including:

  • Inter partes and ex parte re-examination proceedings
  • European oppositions,evocation proceedings
  • Reissue applications, including broadening reissues
  • Third party observations and comments on pending patent applications of competitors

Europe

In today’s globally competitive world, companies need to protect their ideas and innovations internationally. Over the last few years, Europe has grown in importance for granting and adjudicating patent rights. Our European Patent team coordinates protection and enforcement strategies in the U.S. and Europe. To this end, they conduct freedom to operate and patent clearance studies for both the U.S. and European markets. Ropes & Gray has a team of dual-qualified U.S. lawyers and U.K. solicitors with a deep knowledge of U.S. and European patent law. Our attorneys help clients coordinate IP strategies in the United States and Europe, and coordinate cross-border patent disputes. Our team includes British solicitors with extensive experience handling highly contested EPO oppositions.

Our services include EPO oppositions; planning for the proposed Unified Patent Court and the proposed Unitary Patent; portfolio reviews; training for in-house counsel and management on the UPC; conducting European FTO assessments; licensing and drafting considerations; offensive strategies, such as choosing a forum for maximum global impact and launching effective pre-emptive strikes; and assistance with European filing strategy.