Patent Prosecution
Kenyon’s patent prosecution practice helps clients protect innovation and gain a competitive edge in the market. As a leader in the industry, we have helped our clients obtain tens of thousands of United States and foreign patents. Our distinctive client-focused approach to patent law has enabled us to establish a loyal client base that includes a number of the world’s largest patent portfolio owners, and has earned us a position as one of the most highly regarded patent firms in the world. We have been praised by several major legal referral guides, such as Managing Intellectual Property, The Legal 500 US, Chambers USA and Chambers Global, which quotes our clients as indicating that Kenyon’s patent practice “delivers work of the highest quality.” In 2011, we were named the “Patents Law Firm of the Year,” by Lawyers World. Additionally, year after year, we are named as a leading patent firm by Intellectual Property Today based upon the volume of utility patents that we have issued to our clients each year.
We are committed to maintaining a high standard of client service throughout the patenting process. Our patent prosecution attorneys, many of whom are also experienced patent litigators, advise clients on how issues such as written description, enablement, claim construction, obviousness, and estoppel are litigated in court. Coupled with the size of our practice group, these qualities give us the depth necessary to handle even the largest, most complex patent applications and portfolios in a cost effective manner. They also afford clients who use our services the security of knowing that the patents we prepare, prosecute and obtain on their behalf are built to withstand invalidity challenges.
Our ability to deliver high quality service in a cost effective manner is enhanced by our team of trained patent paralegals and our extensive network of foreign patent counsel. Responsible for handling non-substantive patent prosecution tasks under the supervision of our attorneys, our paralegal team includes a number of patent agents. We have trained the team in-house, equipping them with particular sophistication in dealing with patents that support core technologies and emerging areas of innovation. Since a large percentage of the patent applications that we prepare for filing in the United States are also filed as international and foreign applications, we have built a worldwide network of trusted patent counsel who are also available to assist us and our clients. Our network helps us tailor our procedures and client advice according to developments taking place in foreign patent offices.
Creating durable patents is only part of the process for Kenyon’s attorneys. We work with clients to implement policies and procedures that also protect their product plans and business goals. At the concept development stage, we help clients ensure that their creative efforts, innovations, and patents align with those plans and goals. We evaluate patents and prior art to provide thorough patent opinions concerning the patentability of our clients' inventions. Through in-depth investigations and detailed search reports, we provide clearance opinions on whether an innovation can go to market, and validity opinions on the strength of existing patents. When problematic third-party patents are encountered, we help clients redirect their innovation efforts so as to design around those patents. This minimizes the likelihood of significant investment losses and infringement challenges that could give rise to costly lawsuits. For broader international searching and investigation, we rely on our network of foreign associates. This protects our clients’ bottom lines and keeps their innovation processes focused in the direction that their companies intend to grow.
Our emphasis on helping clients obtain the broadest, most appropriate patent coverage in the most efficient manner possible also drives our practice of guiding clients through the process of implementing invention disclosure policies. Such policies provide guidelines for client inventors concerning the scope of information, materials, descriptions and drawings that should be included in an invention disclosure report. They also establish guidelines for referencing prior art, distinguishing the invention from the prior art, and describing the critical parts and features that make up the invention. The resulting invention disclosure reports, combined with situation specific advice that we provide to clients regarding the potential scope of patent protection, enable us to prosecute our clients’ patents with fewer than average Office Actions.
When Office Actions are issued, our clients benefit from our United States Patent and Trademark Office insider’s perspective. With a number of former patent examiners in our practice, we are equipped with a sophisticated understanding of the Patent Office’s inner workings. In addition, our Washington, DC-based attorneys advance the patenting process for our clients as needed by conducting in-person interviews with patent examiners.
Legal and industry developments play an equally significant role in the patent strategy process. We keep abreast of these developments and continually adapt and refine our practice skills to stay ahead of the curve. When such developments may present opportunities for our clients to launch new products and/or expand into untapped markets or geographic regions, we advise them accordingly. We are also prolific authors and speakers who operate as thought leaders on patent practice and developments for clients and peers alike.
We also stay abreast of our clients’ business goals, adapting our strategy recommendations to help our clients accomplish their objectives. This facilitates our ability to counsel clients on key business decisions, such as deciding whether to abandon or license surplus patents, accept or reject portfolio investment proposals and renegotiate licenses. It also prepares us to advise clients on decisions regarding whether and to what extent patent reexamination, reissue and interference proceedings are necessary or advisable. For example, we adapt our recommendations about such proceedings depending upon whether our clients are seeking to maximize the value of their patents or maintain a purely defensive posture. When inter partes or ex parte patent reexamination proceedings or reissue proceedings take place, we counsel our clients accordingly, bringing to bear litigation experience that has made us particularly adept at handling such proceedings.