Practice/Industry Group Overview
Duane Morris is recognized as one of the United States' most-active law firms in terms of patent filing and protection. National publications U.S. News and World Report, Intellectual Property Today and IP Law360 have all ranked Duane Morris among the leading law firms handling intellectual property, patents and patent-related issues.
Our lawyers represent clients in patent disputes involving a wide variety of complex technologies, including biotechnology processes and products, pharmaceuticals, medical devices, business systems and methods, computer systems and software, consumer products, chemical processes and products, electronic instruments, manufacturing processes and equipment, medical devices, pharmaceuticals, security and monitoring equipment, telecommunications equipment, and water treatment and purification systems, to name a few.
Clients rely on the specific knowledge of Duane Morris' registered patent attorneys and agents to obtain patentability opinions, prepare and file U.S. patent applications in all subject matters and disciplines, and render validity and infringement opinions. We also coordinate with our international networks of law firms to secure and maintain patent protection throughout the world. Our Intellectual Property attorneys thoroughly grasp the science and technology behind each client's ideas. All of the firm's patent lawyers and agents have science or engineering backgrounds and most have real world experience in their respective disciplines, including:
- Advanced materials
- Abbreviated New Drug Application (ANDA)
- Small molecule chemistry
- Combinatorial chemistry
- Organic chemistry/synthetic pathways
- Medical and mechanical devices
- Building materials
- Computer software and hardware
- Nuclear engineering
When our IP attorneys enter a courtroom, they are adept at explaining complex technical issues in a straightforward manner and presenting our client's story to the judge and jurors in the most compelling way possible. We handle patent litigation for large and small corporations as well as individual inventors and start-up enterprises. We also are experienced in conducting interference proceedings before the U.S. Patent and Trademark Office (USPTO).
Duane Morris attorneys' combination of extensive trial experience as lead counsel in litigation before state and federal courts, as well as unique trial experience within the U.S. Patent and Trademark Office, can help clients take advantage of, and respond to, inter partes review (IPR). Introduced by the America Invents Act (AIA) in 2012, IPR allows a petitioner to challenge the propriety of a patent claim after it has been granted by the US Patent & Trademark Office (USPTO). This increasingly popular strategy—a majority of filings at the USPTO are currently in parallel litigation—has been tapped as a less costly and more expeditious method than filing a litigation proceeding in federal district court. Filing for IPR may also provide leverage in settlement negotiations.
Duane Morris attorneys advise clients on the merits and desirability of instituting parallel proceedings before the USPTO as well as with regard to defending their patents during these proceedings. Duane Morris has represented clients in a wide range of technology and life sciences areas, including Hatch Waxman matters, as IPR remains a viable option for generic drug companies to challenge asserted patent claims.
Among the industries in which Duane Morris has significant experience, a number of lawyers focus their practices on the complexities involved in bringing pharmaceuticals to market, handling regulatory issues with the Food and Drug Administration and abbreviated new drug applications (ANDAs) for clients based in the U.S. and around the world.
Another area in which Duane Morris lawyers have unique capabilities is government contracting issues and federal IP requirements. The firm's lawyers counsel defense contractors, software and high-tech companies and others regarding government contract issues and procurement claims. Duane Morris partners include former U.S. military officers who maintain top secret security clearances that enable them to advise clients with issues related to classified technologies.
We help our clients in multiple industries understand how to maximize the value of patents and we appreciate the importance of carefully managing and implementing patent portfolios for the benefit of their businesses. We offer our clients technology solutions for real-time patent docket management through the Duane Morris IP Portal, giving clients anytime/anywhere access to information on their IP holdings, including status updates on filings and alerts to upcoming deadlines. Also, our IP Practice Group has substantial experience in the domestic and international licensing and transfer of all forms of intellectual property, including patents, trademarks, copyrights and trade secrets.
Articles Authored by Lawyers at this office:
California Federal Court Dismisses Trade Secret and Other Tort Claims
Karineh Khachatourian,Daniel T. McCloskey, April 28, 2015
On April 13, 2015, the Northern District of California rejected claims in a complaint by online real estate community and web application company plaintiff Top Agent Network, Inc. (TAN) that alleged online real estate marketplace, Zillow, Inc., improperly used and disclosed information about TAN's...
War Memorial Sculptor Wins Appeal in Copyright Litigation with Government
Arvind Jairam, March 19, 2015
An appellate court has affirmed a royalty award to a famous sculptor based on the U.S. government’s unauthorized use of his copyrighted work in a postage stamp. The decision by the Court of Appeals for the Federal Circuit in Gaylord v. United States comes after lengthy litigation that has...
More about the Monkey and the Selfie
Mark A. Fischer, February 17, 2015
The New Media Entertainment blog of August 18, 2014 http://blogs.duanemorris.com/newmedialaw/2014/08/18/are-copyrighted-works-only-by-and-for-humans-the-copyright-planet-of-the-apes-and-robots/ attracted a new blog reader, David Slater. He’s the photographer who had contested...
New Jersey Bankruptcy Court Upholds Trademark Licensees' Rights to Use Trademark Despite Licensor's Bankruptcy
Walter J. Greenhalgh,Steven T. Knipfelberg,Paul D. Moore, January 19, 2015
In In re Crumbs Bake Shop, Inc., No. 14-24287 (Bankr. D.N.J., Oct. 31, 2014), Judge Michael B. Kaplan of the U.S. Bankruptcy Court for the District of New Jersey held that trademark licenses may be entitled, under a bankruptcy court's equitable powers, to the protections of Section 365(n) of the...
Federal Circuit Finds Computer Bingo Patents Invalid as Abstract Ideas
, August 29, 2014
On August 26, 2014, the Federal Circuit ruled that patent claims regarding computer-aided management of bingo games are invalid because they are directed to a patent-ineligible abstract idea. The ruling in Planet Bingo, LLC v. VKGS LLC is notable because it is one of the first Federal Circuit...
U.S. Supreme Court Rules on Patent-Eligible Subject Matter
, July 09, 2014
On June 19, 2014, the U.S. Supreme Court issued a ruling in a prominent patent case regarding subject matter that is not eligible for patent protection. In Alice Corp. Pty. Ltd. v. CLS Bank International, Justice Thomas delivered the opinion for a unanimous Court that affirmed the Federal Circuit...