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Covington prosecutes patent applications worldwide across a broad range of industries and technologies. Many of our patent lawyers have advanced technical degrees or have previously held positions as engineers or scientists. Our backgrounds facilitate communication with inventors and an appreciation and understanding of technology.
Patent applications are handled in a proactive, cost-effective manner that recognizes the significance of the technology at the research and development stage and that is consistent with client business objectives such as protecting existing and planned future products, securing markets and operations, and generating new sources of revenue.
Because Covington’s patent attorneys also have experience in patent litigation and Patent Office Trials, we craft patent applications that look beyond patentability toward meaningful enforceability when tested in litigation or in other contexts. Located near the headquarters of 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 the post-issuance context, our expertise encompasses advising clients on activities such as ex parte reexamination, patent reissue, and patent term restoration. Following the America Invents Act, ex parte reexaminations remain a cost-effective tool to challenge U.S. patents. Patent reissue proceedings also remain available to correct and, in certain circumstances, broaden previously issued claims. Our patent lawyers work closely with clients with an aim to obtain reissued claims that are more resilient to challenge and that provide better protection of commercial products. As for seeking patent term restoration, we are well-versed in the interplay between the U.S. patent and regulatory systems that underlies the term restoration process.
Managing worldwide patent portfolio of Alkermes plc relating to sustained-release pharmaceutical formulations in products such as VIVITROL®, RISPERDAL® CONSTA®, and BYDUREON®. We obtained pivotal patents in Canada, Europe, Japan, and the United States covering the BYDUREON product, a sustained-release formulation indicated for the treatment of Type 2 diabetes.
Represented Thomson Reuters in the prosecution of patent applications directed to digital image processing and various financial software technologies.
Represented Osmose in several inter partes reexamination proceedings, including the defense of Osmose patents drawn to methods of preserving wood using particulate copper and methods for directly producing copper carbonate.
Representation of multiple requesters in inter partes reexamination of seven patents in the Helferich Patent Licensing (HPL) portfolio. All challenged claims in all patents stand rejected, with six of the seven patents on appeal to the Patent Trial and Appeal Board. Given the success of the reexamination and Inter Partes Review proceedings handled by Covington, the last remaining requesters reached favorable settlements with HPL.
Representation of Alkermes, Inc., the top patent owner of Orange Book listed patents in reexamination, in ex parte reexamination proceedings and worldwide opposition proceedings initiated by competitors. Six of the seven patents successfully emerged from reexamination and remain listable for the VIVITROL® and RISPERDAL® CONSTA® products.
Representation of Trend Micro Incorporated as patent owner before the U.S. Patent and Trademark Office in ex parte reexamination proceedings relating to two patents directed to anti-virus technology. Reexamination Certificates for both patents were issued, and Trend Micro and the third-party requester settled the state court litigation in which the validity of the patents was at issue.
Representation of Electronic Arts in an assessment of its freedom to operate for a new product in light of third party patents.
Managing a large worldwide portfolio of patents and patent applications relating to wood preservation technology, as well as advising on post-grant opposition proceedings in Europe and New Zealand.
March 14, 2016, Covington Advisory
December 31, 2015, Law.com
Andrea Reister is quoted in a Law.com article discussing the “patent pendulum” and how it is expected to swing in 2016. According to Reister, postgrant review has had so few takers because of the uncertainty surrounding estoppel. “The estoppel basically applies to everything,” she says. “Your potential estoppel is pretty big when you get to the district court.”
Fall 2015, Corporate Counsel
Peter Chen and Scott Kamholz were featured in Corporate Counsel’s Intellectual Property supplement highlighting judges on the Patent Trial and Appeal Board who are “shaking up patent law.”
July 7, 2015, Covington Alert
October 16, 2014, Law360
Sturgis Sobin, Alexander Chinoy, Brian Bieluch, Jeffrey Lerner, David Garr, Jay Alexander and Robert Haslam are mentioned in this article regarding their representation of Knowles Corporation in their patent infringement victory before the U.S. International Trade Commission.
August 21, 2014, Women's Wear Daily
Covington's Shara Aranoff is quoted in this article regarding the U.S. International Trade Commission patent infringement case aimed at 17 American and European brands and retailers, the largest ever against apparel retailers and brands:
Shara L. Aranoff, a former ITC chair who is an international trade attorney at Covington & Burling LLP, said there have been ...
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