Covington & Burling LLP operates as a limited liability partnership worldwide, with the practice in England and Wales conducted by an affiliated
limited liability multinational partnership, Covington & Burling LLP, which is formed under the laws of the State of Delaware in the United States
and authorized and regulated by the Solicitors Regulation Authority with registration number 77071..
Covington manages and advises on patent estates across a broad range of industries and technologies. We focus on the care of our clients’ most highly valued intellectual property, and we are skilled in obtaining patents that cover commercial products, are valuable for licensing, and are positioned well for enforcement.
In addition to our patent prosecution efforts in the first instance, we are often asked to troubleshoot patents and patent applications originally handled by others, and which are expected to be challenged in court or in oppositions and other post-grant proceedings around the world.
Our core services include:
drafting and prosecuting patent applications;
managing worldwide patent portfolio strategy;
advising on patent vs. trade secret protection;
resolving disputes arising under joint research agreements;
correction of patent issues before and after grant;
due diligence and agreement drafting support for a range of transactions;
full-scale analysis of validity and freedom to operate;
term restoration proceedings; and
developing company IP policies and best practices.
Our patent attorneys are registered to practice before the U.S. Patent and Trademark Office. The practice group includes former patent examiners, attorneys with advanced technical degrees, and attorneys who have previously held positions as scientists or engineers. Our backgrounds facilitate collaborative discussions with inventors and allow us to assist clients with IP capture during the research and development process.
We have experience working with clients in many industries, including aerospace, consumer brands, digital health, energy, financial services, gaming, life sciences, mining and metals, and telecommunications. We understand where IP fits relative to business objectives, including protecting current and planned products, securing markets and operations, and generating new sources of revenue.
We also have experience in patent litigation, inter partes review and other proceedings before the U.S. Patent Trial and Appeal Board, and pre-grant and post-grant oppositions in jurisdictions outside the United States. With this experience as well as our technical and industry experience, we help clients plan for meaningful exclusivity and patent enforceability.
In the post-issuance context, we advise clients on activities such as ex parte reexamination, patent reissue, and patent term restoration. Following passage of the America Invents Act, ex parte reexaminations remain a cost-effective tool to challenge U.S. patents. Patent reissue proceedings also remain available and can be used to provide better protection of commercial products or to make claims more resilient to challenge. As for term restoration, we are well-versed in the interplay between the U.S. patent and regulatory systems that underlies this process.
An extensive component of our work is IP due diligence, in contexts such as mergers and acquisitions, investment of venture capital, securities transactions, licensing and joint research agreements, and ongoing research, development, and product marketing. We advise clients as well as our corporate, regulatory, and other colleagues on matters of patent and trade secret law and on issues including IP ownership, exclusivity, enforceability, and freedom to operate. We also draft and negotiate agreements pertaining to the creation, assignment, and use of technology.
In the policy space, our work includes advice and advocacy in the Bayh-Dole, Hatch-Waxman, and follow-on biologics areas. We advise as well on Orange Book listings and on regulatory issues that impact pharmaceutical inventions.
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