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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, bio-chemistry 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 Band 2 Ranking in Intellectual Property (Ohio)

For well over a decade, our Intellectual Property group has been ranked and recognized by Chambers USA. has been recognized by Chambers USA. In 2020, Chambers USA researchers noted that the team 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."

One client is noted as saying, "The firm offers excellent value for its services. The team is dedicated and provides sophisticated IP legal services at an attractive cost." A market commentator noted, "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," stated another client.

Chambers USA has also reported that their researchers 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."

Practice Chair, John S. Cipolla, was ranked in Chambers USA 2020 in Band 1 for Intellectual Property in Ohio. "John receives notable acclaim for his broad contentious and noncontentious practice, while being particularly 'well respected for his work in patent litigation.' Clients hold him in high regard, stating 'Our interaction with him has been amazing, and his overall performance is very good.'"

Raymond Rundelli, Partner, was ranked in Band 4 for Intellectual Property in Chambers USA 2020. Chambers reports, "Raymond Rundelli comes recommended as an 'excellent trademark attorney' who assists clients in an array of complex litigation and portfolio management work. His practice also extends to patent-related matters."

Calfee Partner Todd Tucker was ranked in Chambers USA 2020 in Band 4 for Intellectual Property. "Todd Tucker takes on a range of domestic and cross-border IP disputes, including patent litigation. His experience includes matters concerning the protection of assets in China, and he regularly advises Chinese entities on U.S.-based IP portfolios."

Professionals

Professionals

Brad  Liu
Associate; Associate Director, International Business – China
Mark W. McDougall
Vice Chair, Intellectual Property

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.

News & Events

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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. It's an excellent firm; they're strategic and bring a lot of value to the table."

Chambers USA 2020

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