Practice Areas & Industries: Sutherland Asbill & Brennan LLP


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Practice/Industry Group Overview

Sutherland’s patent lawyers possess strong scientific and technical backgrounds, enabling us to provide exceptional strategic IP counsel.

Companies invest tremendous resources into developing inventions and innovations, yet losing control of intellectual property can be frighteningly easy. Patents allow companies to protect their valuable intellectual property, and many clients rely on Sutherland to leverage and safeguard their portfolios. Our attorneys bring a unique combination of technical knowledge and legal acumen to our patent practice, providing prosecution, counseling and opinion advice that allows clients to develop global strategies and programs. We help clients protect their proprietary technologies. We focus on practical and business aspects geared to our clients’ commercial objectives, so they can maximize protection, build assets, protect markets and develop revenue streams for patentees, their investors, licensees and business partners.

Patent law requires extensive and detailed knowledge of the underlying scientific disciplines that form the base for new inventions and innovations. The broad scientific and technical backgrounds of our patent lawyers enable us to advise clients on a wide range of technologies. Our patent lawyers prepare and prosecute patent applications in many different areas.

Our attorneys protect the IP of many prominent global entities, including some of the world’s largest life sciences research institutions, chemical companies, financial transaction providers and energy production companies. However, our practice is not limited to counseling Fortune 100 companies. Our client roster extends to entrepreneurs and start-ups, and we provide IP counseling on products and processes from inception to marketing. Our group works closely with Sutherland’s other practice areas to develop and execute strategies for clients seeking to enforce their rights or who are accused of violating the rights of others.

Why Sutherland
Technical knowledge.
Many of our professionals have prior experience as scientists and engineers, such as our chemical prosecution team that includes three Ph.D. chemists and six chemical engineers.

Range. Sutherland’s IP practice assists companies with all of their domestic and international needs. We counsel clients on patent prosecution, validity analysis, litigation and portfolio management; freedom-to-practice opinions and patent infringement strategic counseling; technology transfer, patent licensing and other cooperative commercialization agreements; re-issue, re-examination, and interference practices; due diligence reviews in connection with mergers and acquisitions; and IP audits and evaluations.

Corporate and regulatory backgrounds. Several of our patent attorneys have worked as in-house counsel at industry-leading companies and as examining attorneys at the U.S. Patent and Trademark Office (USPTO), giving us unique insights into business objectives and regulatory priorities.

Focus. Our IP Practice Group is composed of nearly 30 attorneys, 25 of whom are registered patent attorneys.

Trial experience. Our attorneys are willing and able to litigate on behalf of our clients. Our patent litigation team represents both plaintiffs and defendants involving a variety of technologies in cases involving disputes over infringement, validity, inventorship and ownership of patents.

Serving a wide range of industries. Our clients’ patented goods and services encompass consumer products, computers, software, electronics, basic and specialty chemicals, energy and clean technologies, biomedical devices, biotechnology, and include mechanical inventions as well the emerging area of business methods.

Nuts and Bolts
We provide the full range of patent services, including:

  • Preparing and filing patent applications in all of the technological arts
  • Prosecuting patents in the U.S. and internationally
  • Auditing technology to identify patentable subject matter and develop strategies to protect it
  • Advising on alternative methods to protect patentable, commercially valuable information
  • Mapping client patents and/or competitor patents for strategic analysis
  • Developing and implementing patent programs to grow and manage patent portfolios
  • Performing due diligence reviews and negotiating IP-related provisions in mergers and acquisitions
  • Performing a due diligence validity review of pending or issued patents
  • Preparing non-infringement invalidity and clearance opinions
  • Analyzing and advising with regard to infringement claims of patent-holding companies
  • Drafting, negotiating and advising about technology development and acquisition or licensing
  • Litigating issues of ownership, licensing, validity and infringement

Take Action
Often, the first and most important action attorneys can take is to truly listen to their clients. We always consider how patents fit into a client’s overall business objectives, and listen carefully to identify exactly what the client views as a successful outcome.

Selected Experience
Sutherland counsels The Coca-Cola Company on various patent matters
Sutherland provides general patent counseling and prosecution to The Coca-Cola Company. As part of our work for Coke, we represented the company in securing patents on the Coca-Cola Freestyle® dispenser, the company’s interactive fountain dispenser.

Sutherland advises Fortune 50 healthcare corporation on intellectual property matters.
Sutherland advises a Fortune 50 healthcare corporation on its intellectual property needs. We provide general patent counseling and worldwide patent prosecution, advise on patent portfolio strategies and third-party patent issues. We also advise on its trademarks.

Sutherland advises GE on patent counseling and prosecution.
Sutherland provides general patent counseling and prosecution services to GE related to green/renewable energy technologies.

Group Presentations
  Webinar on Written Description Requirement after Ariad v. Lilly, June 10, 2010
Urologic Invention Convention, May 14, 2010
IPO Webinar - Ariad v. Lilly: What Are The Lessons?, April 6, 2010
Past Seminar Materials
  Patent Litigation 2010, November 8, 2010
The 7th Annual Patents and the Financial Services Conference, July 28, 2010