Covington’s patent lawyers provide comprehensive advice over the full range of patent issues that include formulating strategies for the effective procurement and enforcement of patent rights, developing and managing patent portfolios, licensing and exploiting patent rights, and asserting and defending against patent challenges. Our patent attorneys are experienced in a wide range of technologies and industries, including biomedical, biotechnology, chemical, computer, electrical, human and animal health, mechanical and electro-mechanical, pharmaceuticals, telecommunications, and a host of related disciplines, providing patent advice fully sensitive and responsive to particular business and regulatory contexts. Many of the firm's patent attorneys have advanced technical degrees or have previously held positions as engineers or scientists–backgrounds that facilitate appreciation and understanding of technology and communication with inventors.
Patent Prosecution The firm prosecutes patent applications worldwide, in a broad range of industries and technologies. Applications are handled in a proactive manner that recognizes the significance of the technology at research and product development stages and that is consistent with client business objectives that may range from protecting existing and planned future products, markets and operations to generating new sources of revenue.
We craft patent applications that look beyond patentability, with an eye toward meaningful enforceability when tested in litigation or in other contexts. Headquartered near the U.S. Patent and Trademark Office, we are able to work closely with patent examiners to help guide patent applications through the prosecution process. In addition to obtaining patents, our expertise encompasses advising clients on post-issuance activities, such as patent reissue and reexamination proceedings, and applications for patent term restoration. Our patent lawyers also have experience in patent litigation matters and transactional work, and our patent prosecution work takes into consideration the reality of how patents operate and may be tested in the real world.
Advisory/Opinion/Due Diligence We apply our technical and industry expertise and our knowledge of patent law to provide infringement, validity, and freedom-to-operate opinions. This advice is provided in a variety of contexts, including anticipated patent litigation, or licensing of intellectual property. We regularly provide patent analysis as part of IP due diligence to assess the patent assets and liabilities of target companies in connection with an acquisition or merger. The breadth of the firm's corporate securities practice, and the teaming of intellectual property and corporate lawyers on such matters, helps to ensure that we provide comprehensive due diligence to clients.
Representative Matters
- For Alkermes, Inc., reexamination proceedings for patents covering RISPERDAL®CONSTA®, the first injectable, long-acting atypical antipsychotic indicated for the treatment of schizophrenia.
- Patent due diligence on behalf of Procter & Gamble in a transaction with Inverness Medical Innovations to form the joint venture company, SPD Swiss Precision Diagnostics GmbH, a leading provider of home diagnostic and monitoring products.
- For Schering-Plough, patent prosecution relating to a new generation of the drug CLARINEX®.
- On behalf of a large pharmaceutical company, prosecution of a portfolio of applications directed to an anti-HIV drug.
- For Thomson Reuters, prosecution of patent applications directed to digital image processing and various financial software technologies.
Accolades
- The Best Lawyers in America - Three attorneys recognized for Intellectual Property Law (2007).
- Chambers USA's - America's Leading Business Lawyers - One attorney recognized for Intellectual Property (2006-2007).
- International Who's Who of Business Lawyers - One attorney recognized for Patent (2005-2007).
- PLC - Life Sciences, Which Lawyer? - One attorney recognized for Intellectual Property (2005-2008).
- European Legal 500, Intellectual Property (Belgium) - “…Covington & Burling has a successful IP regulatory practice, the firm also undertakes high-end litigation in the Belgian courts” (2005).
- European Legal Experts - One attorney recognized in for Intellectual Property (Brussels) (2006).
- PLC Global Counsel 2006 - Global Counsel Magazine for “The Life Sciences Industry Super League”- ranked number one in the world, 23 Covington lawyers were recommended as leaders in their fields, including seven lawyers in Europe.
- One of our Covington partners is an Elected a Fellow and Vice Chair of the Complex Litigation Committee of the American College of Trial Lawyers.
- Another partner served as a United States District Court Judge for the District of Delaware for ten years presiding over 100 trials.
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