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Overview

Calfee's preparation and prosecution practice, among one of the largest and strongest in the Midwest, provides valuable assistance to businesses in many different industries with respect to the development and administration of patent portfolios in the U.S. and worldwide. 

We handle preparation and prosecution matters for a variety of industries covering all disciplines. Most of the lawyers in our practice have undergraduate and/or graduate degrees in mechanical, aerospace, electrical, computer, biomedical, or chemical engineering; or in chemistry, biochemistry, or the biological sciences. We can form teams that cover industries where cross-disciplines are needed to fully protect a product portfolio.

Our patent preparation and prosecution attorneys are well-rounded patent practitioners that often work in conjunction with our patent litigators to shape and inform our overall approach to patent law. 

While most of our preparation and prosecution attorneys themselves have experience in patent enforcement, collaboration with our IP Litigation attorneys is invaluable in a client counseling role and for developing strong patent portfolios. It allows us to anticipate potential portfolio development and management problems that other preparation and prosecution lawyers might not foresee, and it allows us to help our clients avoid disputes and optimize their position when litigation becomes necessary or unavoidable. 

Our ability to collaborate with our IP litigators also enables us, when preparing and prosecuting patent applications, to obtain broad protection and to ensure the validity and enforceability of patent claims through critical insights on claim construction and drafting in the patent preparation and prosecution process

If you are interested in learning more about our patent prosecution practice and would like to talk with one of our attorneys, please contact:

Noteworthy

Chambers USA Leading Law Firm Rankings

Since 2004, Calfee has been recognized as a Leading Law Firm for Intellectual Property by Chambers USA, most recently in Band 1 in Ohio (2023).

Clients provided feedback to Chambers USA researchers, "Calfee is esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio and the Midwest and across the USA. The IP team is highly experienced in the engineering, chemical, and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients. The team is responsive, practical, and extremely knowledgeable."

Clients interviewed by Chambers USA said, "The firm offers excellent value for its services. The team is dedicated and provides sophisticated IP legal services at an attractive cost. Calfee's IP attorneys are highly regarded; they are true experts, and they do excellent work for their clients. This is a power bench; the team works well together and supports each other well. Each individual is responsive and knowledgeable in their expertise and experience. This is definitely one of my favorite firms to work with."

Chambers USA researchers also found Calfee's IP team to be held in "very high regard by fellow practitioners who note Calfee's extensive experience representing clients in wider patent and trademark matters, IP litigation matters, appellate work, and advising companies on managing IP assets in China."

Best Lawyers® “Best Law Firms” Rankings

Calfee was selected for inclusion in the 2024 "Best Law Firms" rankings in the following areas:

  • Litigation – Intellectual Property (National Tier 3, Regional Tier 1 Cleveland)
  • Patent Law (Regional Tier 1 Cleveland)

Professionals

Professionals

Brad  Liu
Partner; Associate Director, International Business – Asia
Kimberly A. Pinter
Vice Chair, Intellectual Property

Experience

Experience

  • Representing a subsidiary of a publicly traded, Fortune 50 company since 2018, helping to develop the client’s domestic and foreign patent portfolio. We handle the preparation and prosecution of hundreds of the client’s domestic and foreign patent assets covering complex and fast-changing technologies. We have been entrusted to provide patent portfolio development, strategy, and management services for the client as they continue to build their portfolio in a new technology space.
  • Working directly with the General Counsel of a subsidiary of a publicly traded, Fortune 100 manufacturer to provide counsel on critical IP-related issues and strategic advice on how to protect and leverage these rights to maximize their value and competitive advantage. Specifically, Calfee counsels the client on issues pertaining to global freedom-to-practice concerns, licensing negotiations, and strategic business arrangements.
  • Managing the entire patent portfolio directed to radiation oncology therapeutics and analytics technology for a publicly traded, multinational company headquartered on the West Coast. The portfolio encompasses dozens of seminal patents, particularly in the areas of combining imaging and therapeutic techniques in one integrated device. Calfee takes an active role in securing intellectual property rights on new and developing technologies emerging from the client's vigorous research group, including drafting and prosecuting its domestic and international patent applications. Calfee works with the company’s scientists and engineers as well as notable university researchers with whom the company collaborates. Calfee also manages the company’s numerous international applications.
  • Handling IP matters for a publicly traded, Fortune 1000, global manufacturer, including drafting and prosecuting dozens of patent applications directed to technology of strategic importance to the client. Calfee routinely manages and assists with matters related to patent prosecution and IP strategy, management and strategy of patent and trademark portfolios, and advice on IP strategy and litigation. Calfee currently is handling three patent reissue matters that are key to the client's protection of critically important technology. Calfee also is handling "take-down" disputes related to infringers of the client's patents on the Amazon.com website.
  • Handling all aspects of three major IP projects for an American multinational medical devices and healthcare company, including (1) a current and emerging competitor monitoring project, which involves counseling the client regarding the activity of numerous competitors and potential competitors in the medical device space; (2) a competitor leverage project involving assisting the client with significant projects related to the assessment of key competitors, including analyzing key competitor products, identifying potentially relevant patents/patent families, evaluating potential infringement, and counseling the client regarding IP issues; and (3) a competitor IP analysis/monitoring project, which includes conducting monthly analyses of patent portfolios of several key competitors.
  • Serving as primary IP counsel for a publicly traded, Fortune 500 global manufacturing client and its operating companies with responsibility for the client's worldwide IP portfolio, including 1,000+ patent matters and 2,000+ trademark matters. With regard to clearance, Calfee provides right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. We also prepare, file, and prosecute patent and trademark applications.
  • Serving as primary IP counsel for a publicly traded manufacturer and its operating companies with responsibility for more than 125 active patent and trademark matters for this client. With regard to clearance, we provide right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. Calfee also prepares, files, and prosecutes patent and trademark applications, and we represent the company in IP-related disputes.
  • Assisting in intellectual property development and serving as a surrogate to in-house IP counsel for this client, which engineers semiconductor materials and device technologies. Calfee’s IP attorneys use their in-depth backgrounds in materials science techniques to help the client develop next-generation semiconductor device technologies from the crystal growth state and beyond. In particular, Calfee’s attorneys have helped develop several ideas in semiconductor devices and preparation through early disclosure to patent application preparation.
  • Providing patent infringement and non-infringement opinions and counseling to a publicly traded, American multinational manufacturing corporation with regard to patent-related matters, including potential patent infringement and invalidity as well as patent portfolio management.
  • Representing a publicly traded, Fortune Global 500 company on certain sensitive and highly confidential IP and litigation matters important to the client’s business. Calfee also counsels the client on software and IT-related agreements.
  • Counseling a publicly traded, European manufacturing company on various sensitive and highly confidential IP and litigation matters. These matters relate to IP strategy and enforcement, patent portfolio management, IP-related agreements, licensing, government contracts, and freedom-to-operate analyses.
  • Managing a publicly traded, Fortune 1000 multinational manufacturer's global trademark portfolio, including filing and prosecution, portfolio management, enforcement, and disputes. Calfee advises the client in patent preparation and prosecution matters, including strategy and filings. Calfee advises on patent enforcement matters, which are currently in pre-litigation investigation, including developing infringement analysis to stop infringement in markets with high-revenue product lines. Calfee also assists the client with a variety of other intellectual property counseling matters, including patent opinions, IP-related terms in agreements, cross-border enforcement, IP licensing, IP acquisition (particularly in Ch
  • Drafted and filed several patent applications for prosecution over the past year for an R&D laboratory of a governmental entity and a wholly owned subsidiary of a multi-billion-dollar, multinational manufacturing corporation. These applications relate to detection and defense technologies.
  • Representing a publicly traded, Fortune 50 American multinational technology company for nearly 20 years, we have prepared and prosecuted several hundred patent applications, primarily for its Research division. Several applications prepared or prosecuted by Calfee’s team have been asserted in courts across the world and/or been subject to licensing agreements.
  • Drafting and prosecuting the client’s patent applications and assisting in patent portfolio development and research collaborations with academia for a multi-billion-dollar, international manufacturer. Calfee handles domestic and foreign patent litigation, patent prosecution, and IP strategy for the client, and we also provide management and strategy services for its patent and trademark portfolios and advise on IP strategy.
  • Representing a public, Fortune 1000 company and global manufacturer in its U.S. patent prosecution and global IP strategy, working with its in-house IP counsel. Calfee oversees the drafting of patent applications directed to highly complex systems and counsels the client on critical IP-related issues such as freedom-to-practice, trade secret strategies, and innovation harvesting.
  • Serving a multi-billion-dollar, multinational, publicly traded, Fortune 500 manufacturer for more than a decade, working with a team of in-house patent/IP counsel to handle the implementation of the client’s global IP protection objectives for all company divisions, including interfacing with Research & Development and business leaders concentrated in the United States and Europe. Specifically, Calfee oversees the drafting and prosecution of hundreds of patent applications throughout the world on behalf of the client and counsels the client on critical IP-related issues such as freedom-to-practice, trade secret strategies, and innovation harvesting.
  • Serving as chief outside IP counsel for a multi-billion dollar, publicly traded, Fortune 1000, multinational holding company with multiple operating companies based in the U.S. and abroad. Calfee is responsible for patent annuity payments on all patent matters and assists many of the operating companies with the prosecution of patent applications, both in the U.S. and internationally. Calfee manages the U.S. trademark and patent work directly and supervises a network of foreign associates when action is required in foreign jurisdictions. Calfee also offers primary counsel on the impact of corporate reorganization efforts on the ownership and management of the IP of the operating companies. Calfee IP lawyers supervise most of the intellectual property due diligence related to the mergers and acquisition activity of the client. Calfee represents the company in several trade secret matters.
  • Managing the patent portfolio encompassing dozens of granted patents and pending applications, including jointly developed technology, for a global innovator and manufacturer of temperature sensors, controls, and measurement instrumentation and transport systems. Specifically, Calfee drafts and prosecutes the company’s patent applications. Calfee assisted the client in filing several patent applications for its new commercial system in the U.S. and Asia. Calfee regularly meets with the client to discuss patent and trade secret strategy with respect to innovations across the company’s earth-based and space-based applications.
  • Serving as the preferred IP counsel for non-catalyst innovations, including implementing protection strategies encompassing patent filings throughout the world and providing general IP-related counseling for a global leader in petrochemical and related technologies worldwide. Specifically, Calfee’s IP team provides patent preparation and prosecution, global portfolio maintenance, and IP counseling. Calfee was asked to handle a large technology portfolio that the client recently acquired.
  • Drafting patent applications for a world-renowned health system with more than 2,000 issued patents and generating multi-billions of dollars in revenue. The client's patents involve new and emerging technologies, which include new virus detection platforms and novel stent technologies.
  • Managing the entire IP portfolio for a natural resources company with facilities across North America, including their patent and trademark portfolios. This includes preparing and prosecuting patent and trademark applications both in the U.S. and internationally, counseling and advising on patent and trademark strategy, including patent and trademark clearance analyses, patentability, agreements, and licensing, as well as competitor portfolio analysis. In 2023, Calfee handled domestic and international patent portfolios in 11 countries, the PCT, and the Madrid Protocol.
  • Representing one of the largest industry associations in the U.S., facilitating data-sharing and drafting data-sharing agreements. We assist in licensing its software and databases, including its provision of forms and software assisting the completion of those forms. Calfee helped the client value the web-based services and information it provides and obtain more favorable terms for licensing.
  • Managing the patent portfolio, including drafting and prosecuting patent applications, for a start-up technology company based in California. The patent portfolio includes many seminal patents in the areas of graphene synthesis and application. We work closely with the client’s Chief Executive Officer and Chief Technology Officer to develop a strategic intellectual property plan. This includes leveraging their existing intellectual property, including several ongoing licensing ventures with companies in California and Asia.
  • Representing a privately held start-up company founded by medical doctors and researchers at top universities on the East Coast, our work includes licensing its data and software both domestically and abroad. Calfee has helped devise the company’s data-sharing strategies and data-sharing agreements, agreements which are often cross-border in nature and relate to both the sharing of the company’s data with other entities as well as other entities providing data to them. Calfee is essentially the client’s legal counsel on all IP matters, much of which involves the development of cutting-edge artificial intelligence-based solutions at the intersection of technology, data, and medical diagnostics and treatments.
  • Drafted and filed several patent applications over the past year for an independent agency of the U.S. federal government. Most applications are related to satellite communications technology, which is presumed to be one of the most lucrative and licensable branches of the agency’s portfolio. The patents include satellite communications hardware, software, and new materials developed to increase antenna function. In addition, Calfee has drafted and filed applications for the client relating to its power and signal regulation technology in highly compromised environments.
  • Assisting an Asian manufacturing company with its U.S. patent and trademark filings while overseeing its entire global patent and trademark portfolios. Relatedly, Calfee represented the client in two separate International Trade Commission (ITC) investigations. At stake was whether the ITC would block the importation of several of the company’s products. Calfee obtained successful results for the client in both matters. Calfee also successfully defended the company on patent infringement allegations.
  • Serving as global Intellectual Property Lead Counsel for an Asia-based manufacturer, representing the client in district court litigation matters and prosecuting patent applications. The patent work for this client includes patent infringement matters filed in district courts in two states and the Federal Circuit as well as in six inter partes reviews before the Patent Trial and Appeal Board. Additionally, Calfee is the Lead Settlement Counsel for a global series of patent, trade secret, and antitrust cases against the client’s main competitor, and the Calfee team works closely with the client’s overseas counsel. These actions are being heard in a variety of forums in four countries.

Services

Services

Procuring Patents

Our attorneys work closely with the inventors to ensure that there is understanding and agreement concerning the invention and the approach to patent protection, including determining the need or desire for patentability searching, practical advice relating to pursuing patent versus trade secret protection, as well as drafting, filing, and prosecuting the patent applications both in the United States and internationally.

Counseling

Our counseling services include all of the traditional patent portfolio management services:

  • Patent searches
  • Development of opinions and/or “design around” strategies
  • Design and implementation of maintenance and enforcement programs
  • Protection of issued patents, including representation in various U.S. and international post-grant, opposition, or reexamination proceedings
  • Portfolio review and audits

Docketing

Calfee represents clients with a wide range of portfolio sizes including sole inventors/proprietors to Fortune 50 multinational corporations. Our patent practice includes a sophisticated team of full-time docket professionals who continually interface with a commercial IP docket/management system. Our docketing team also has experience with large transfers of entire patent portfolios.

IP Portfolio Management and Communications via Customized Extranet

Through Calfee’s customized extranet solutions, our attorneys and Knowledge Management Team provide clients with timely and secure access to the most relevant information, such as docket status, custom reports, due dates, and electronic document file system.

CLE and Educational Seminars

Calfee’s Intellectual Property group has long provided various types of educational sessions, including CLE seminars, to clients at no charge. Such sessions have included presentations with question and answer sessions intended to educate clients about:

  • The basic principles of one or more areas of U.S. intellectual property law
  • The methods by which intellectual property rights can be obtained and protected in the United States and around the world
  • Internal mechanisms that can be implemented to help ensure that the client’s intellectual property rights are properly maintained or that the rights of others are not infringed by the client
  • Recent legal developments that impact the client or its intellectual property rights

Legal Alerts

Calfee’s Intellectual Property Group develops legal alerts and other publications on timely topics to ensure that our clients stay apprised of recent changes in the law and other legal issues that may impact their business.

Please complete our subscription form, selecting the topic "Intellectual Property / Information Technology," to receive upcoming legal alerts and invitations to CLE seminars.

Patent Litigation

Patent Litigation

  • "Calfee's IP team is responsive, practical, and extremely knowledgeable."– Client quote, Chambers USA 2023
  • "The team handles very complex patent work for us and has proven to be very professional and knowledgeable." – Client quote, Chambers USA 2022
  • "They manage situations so they can be handled cost-effectively, they're great at communicating and make strong, practical recommendations, rather than just legal assessments." – Client quote, Chambers USA 2022
  • "Calfee does phenomenal work and has become our go-to firm for IP services." – Client quote, Chambers USA 2022
  • "They have a really good spectrum of talent across sectors and expertise, particularly in the technology space." – Client quote, Chambers USA 2022

News & Events

News

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"Calfee's IP group is esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio, the Midwest, and across the USA. They are highly experienced in the engineering, chemical, and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

Researcher comments, Chambers USA

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