Patent Advisory

Intellectual Property    Patent Advisory
 

Intellectual Property

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Covington’s patent attorneys advise companies on a full range of patent portfolio management and transactional due diligence issues.  Our clients include major electronics, telecommunications, software, biotechnology, pharmaceutical, and chemical companies.  We regularly provide strategic patent advice at research and product development stages, as well as for marketed products.
   
  • We advise clients on a wide range of patent issues, including:
  • Developing and managing worldwide patent portfolios;
  • Strategic procurement and enforcement of patent rights, including litigation-focused prosecution;
  • Post-issuance proceedings, such as inter partes review, reexamination, and opposition;
  • Patent term restoration applications;
  • Infringement, validity, and freedom-to-operate opinions;
  • Assessing patent assets and liabilities of target companies in connection with acquisitions and mergers; and
  • Licensing and exploiting patent rights.

Our patent attorneys are uniquely qualified to provide advice as they also have deep experience in patent litigation matters and transactional work.  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.  Many of the firm’s patent attorneys have advanced technical degrees or have previously held positions as engineers or scientists.

Representative Matters

  • For Alkermes, continued management of the worldwide patent portfolio relating to sustained-release pharmaceutical formulations covering such products as RISPERDAL®, CONSTA®, and BYDUREON™.  We obtained pivotal patents in Canada, Japan, and the United States covering the BYDUREON product, a sustained-release formulation indicated for the treatment of Type 2 diabetes.  Covington also represents and advises Alkermes on post-issuance proceedings in the United States and throughout the world.
  • For Osmose, Inc., management of a large portfolio of patents and patent applications relating to wood preservation technology as well as advising on strategies for procuring patents in the United States and throughout the world.  Covington also represents and advises Osmose in inter partes reexamination in the United States, and post-grant opposition proceedings involving its patents and applications in Europe, Australia and New Zealand, including the defense of Osmose patents drawn to methods of preserving wood using particulate copper and methods for directly producing copper carbonate.
  • Patent due diligence of behalf of Procter & Gamble in the $3.1B sale of the global pharmaceuticals business to Warner Chilcott.
  • Representation of King Pharmaceuticals in its $3.6 billion agreement to be acquired by Pfizer.  We advised King on the transaction including King’s critically important patent and IP assets.
  • Representation of bidder in aborted divestiture of animal biologics and pharmaceutical products from Merial and Intervet Schering-Plough in the proposed but recently abandoned sale arising out of the Merck-Schering Plough merger and Merck’s proposed joint venture with Sanofi. Covington conducted the patent and intellectual property licensing due diligence.
  • For Schering-Plough, patent prosecution relating to a new generation of the drug CLARINEX®. 
  • For Thomson Reuters, prosecution of patent applications directed to digital image processing and various financial software technologies.
  • 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.

Accolades

  • The National Law Journal - Recognized on the Intellectual Property Hot List (2012)
  • The Best Lawyers in America - Six attorneys recognized for Intellectual Property Law (2007-2013).
  • Chambers USA's - America's Leading Business Lawyers - Recognized for its Intellectual Property practice nationwide, as well as in California and Washington, DC; Five attorneys recognized for Intellectual Property (2009-2013).
  • Chambers Europe - Recognized as a leader in the category: Belgium, Intellectual Property and one attorney recognized for Intellectual Property (2012).
  • Intellectual Asset Management (IAM) Magazine - Recognized in the “IAM Patent 1000 - The World’s Leading Patent Practitioners” for its DC Metro Area prosecution practice; one attorney recognized in the area of prosecution (2013).
  • Legal 500 US - Patent Prosecution: Utility and Design Patents, Patent Licensing and Transactional (2011-2013)
  • Legal 500 UK - IP (2011-2012)
  • U.S. News Media Group and Best Lawyers, Patent Law: National and Washington, DC first tier ranking (2013)
  • The Practical Law Company (PLC) - Which Law Firm?, Intellectual Property, Commercial Intellectual Property (2009)
  • PLC - Life Sciences, Which Lawyer? - One attorney recognized for Intellectual Property (2005-2009).
  • International Who's Who of Business Lawyers - Two attorneys recognized for Patent (2008).
  • 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.
  • European Legal Experts - One attorney recognized in for Intellectual Property (Brussels) (2006).

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areister@cov.com
202.662.5141