Patents

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
  • Biochemistry
  • Biotechnology
  • Pharmaceuticals
  • Abbreviated New Drug Application (ANDA)
  • Small molecule chemistry
  • Combinatorial chemistry
  • Formulations
  • Organic chemistry/synthetic pathways
  • Medical and mechanical devices
  • Building materials
  • Computer software and hardware
  • Electronics
  • Nuclear engineering
  • Nanotechnology

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.

REPRESENTATIVE MATTERS

  • Mophie, Inc. v. Incase Designs Corp., patent interference No. 105,946 (USPTO): Counsel for Mophie, Inc. Prosecuted patent application involving battery packs for mobile devices on behalf of client and succeeded in including all claims and all issued patents of opposing party in interference.
  • Prosecute business-method patent applications for software used by a large New York investment banking firm to monitor, predict and evaluate the impact of credit ratings on complex financial instruments and special-purpose vehicles and to predict and evaluate the application of cures to one or more downgrade-trigger events.
  • Manage the intellectual property portfolio of an established business consulting firm: prosecute business-methods patents for software tool used for forecasting demand; analyze supply-chain elements to monitor and reduce risk and cost of over- or under-supply conditions; tailor supply considerations on the basis of period changes in demand.
  • Prosecutes patents for a company providing lasers for diagnostics and communications.
  • Prosecutes patents for a leading provider of medical diagnostic and testing tools.
  • Prosecute business-method patent applications for one of the 10 largest U.S. banks; applications pertain to statistical-analysis software used to predict and evaluate portfolio growth and bank's attendant profit and risk in connection with the time-variable components of its products.
  • Obtained patents for one of the largest financial services holding companies in the U.S. for online banking and have prepared and filed patent applications for online account opening, e-lending, automatic loan processing and bank cards, among other products and services.
  • Counsel to local university in patent preparation matters.
  • Counsel to power IC design and manufacturing company as startup through purchase by a Fortune 200 company. Guided company in building a patent portfolio from scratch into an industry leading position.
  • Counsel to a technology company specializing in home medical products for patent prosecution involving biometric monitoring devices.
  • Counsel to a beauty products company for patent prosecution involving cosmetic compositions.
  • Represented a variety of clients in the biotechnology and pharmaceutical industries to prepare and prosecute patent applications.
  • Advised leading research university on issues related to patents developed by employees, including assignability of patents, enforcement against alleged infringers and royalty payments to employees.
  • Manage the patent portfolios for leading companies in the petrochemical and packaging industries.
  • Counsel to an optical retailer for patent re-examinations involving eyewear devices.
  • Represented numerous companies in the recordation of patent, trademark, and copyright assignments, normally in connection with securitized financings.
  • Represented a large European chemical company in connection with a trial de novo following a favorable interference ruling from the Patent and Trademark Office. The case involved a priority of invention and reduction to practice issues.
  • The J. David Gladstone Institutes v. Oregon Health And Science University, patent interference (USPTO). Supported The J. David Gladstone Institutes in obtaining settlement that the client found favorable.
  • Luciw v. Alizon, patent interferences (USPTO). Lead counsel for the National Institutes of Health in patent interferences against Institut Pasteur involving first-generation HIV hybridization assays.
  • University of California v. Alza Corporation, patent interference (USPTO). Obtained judgment of priority for the University of California in an interference involving targeted therapeutic liposomes.
  • Luciw v. Chang, patent interference (USPTO): Counsel for the National Institutes of Health in patent interferences against Novartis/Chiron involving first-generation HIV hybridization assays. Obtained judgment of priority for client.
  • Prosecuted U.S. Patent No. 8,523,971, pertaining to multilayer nanofiber filters, on behalf of a Chinese university.
  • Prosecuted U.S. Patent No. 8,399,029, pertaining to influenza prevention and treatment compositions, on behalf of a Chinese company.
  • Prosecuted U.S. Patent No. 8,349,299, pertaining to a conditioning agent and methods for making hair having a shape memory effect, on behalf of a Chinese university.
  • Prosecuted U.S. Patent No. 8,344,007, pertaining to water-soluble polymer-based canthararimides as potentially selective anti-tumor agents, on behalf of a Chinese university.
  • Prosecuted U.S. Patent No. 8,329,425, pertaining to methods and systems for the detection of chloramphenicol, on behalf of a Chinese university.
  • Prosecuted U.S. Patent No. 8,318,922, pertaining to treatment and prevention of hyperproliferative conditions in humans and antisense oligonucleotide inhibition of human replication-initiation proteins, on behalf of a Chinese university.
  • Prosecuted U.S. Patent No. 7,993,647, pertaining to monoclonal antibodies to HIV-1 and methods of using same, on behalf of the National Institutes of Health.
  • Prosecuted (to PTO Board of Patent Appeals and Interferences) U.S. Patent No. 7,880,029, related to a method for dispersing and maintaining polymerization by-products in suspension during acrylic acid and acrylate monomer formation, on behalf of a specialty chemical company.
  • Prosecuted U.S. Patent No. 7,815,916, pertaining to the Cloning and Expression of HTLV-III DNA, on behalf of the National Institutes of Health.
  • Prosecuted U.S. Patent No. 7,754,861, pertaining to a Method For Purifying Proteins, on behalf of a U.S. biotechnology company.
  • Prosecuted U.S. Patent No. 7,723,021, pertaining to Methods For Treating Lentivirus Infections, on behalf of a U.S. research institute.
  • Prosecuted (to PTO Board of Patent Appeals and Interferences) U.S. Patent No. 7,651,852, pertaining to a method and apparatus for aeration of organic material wherein the organic material undergoes an aerobic composting process, on behalf of a waste-management-services company.
  • Prosecuted U.S. Patent No. 7,645,449, pertaining to Sensitizing Cells For Apoptosis By Selectively Blocking Cytokines, on behalf of a German biotechnology company.
  • Prosecuted U.S. Patent No. 6,927,028, pertaining to noninvasive methods for detecting non-host DNA in a host using epigenetic differences between the host and non-host DNA, on behalf of a Chinese university.
  • Prosecuted U.S. Patent No. 6,550,474, related to nasal dilators and strips and methods for their manufacture, on behalf of a consumer products company.
  • Prosecuted U.S. Patent No. 6,534,590, pertaining to a silicone-grafted vinyl copolymer emulsion composition that can produce highly water repellent films, on behalf of a specialty chemical company.

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Diversity

"In my discussions with Duane Morris leaders, they frequently speak about how diversity within their firm has enabled them to better serve their diverse clients. They understand that investing in diversity is a wise business decision that positions them for the marketplace of the future."

Don Liu
Senior VP, General Counsel & Corporate Secretary
Xerox Corporation

At Duane Morris, achieving diversity is paradoxical. By supporting and celebrating the differences of our attorneys - and the individual strengths that they bring - our firm culture expands, fostering creative solutions for our clients. But diversity at Duane Morris does not mean that we have a certain number of diverse attorneys; true diversity means that it is no longer noteworthy to see diverse lawyers leading our practice groups or managing client relationships. Ascending to positions of leadership and greater responsibility and providing the highest levels of client service is simply what is expected of all our lawyers. Diversity is another strong asset that adds to our collective abilities to meet the needs of our clients.

Our vision of diversity at Duane Morris is to realize an environment in which our lawyers' outstanding qualities are not just measured by ethnicity, race, gender and sexual orientation, but more importantly, that our lawyers are remarkable as excellent attorneys above all else. Only then can we celebrate our differences while focusing on the common pursuit of legal excellence which everyone shares at Duane Morris.

To reach this goal, Duane Morris understands that the familiar diversity strategies and policies that most law firms have are needed. Without demanding results from such policies, most law firms are bound to fail in even achieving numerical hiring and retention goals. Duane Morris has been proactive and ambitious in its efforts to improve diversity at the firm, and has set deadlines for reaching the milestones which mark our progress. To create a more diverse law firm, Duane Morris is:

  • Committed to strategically increasing our diversity levels, which is currently at 10 percent.
  • Bringing together our Diversity Committee and our Hiring and Retention Committee to raise diversity as an important factor in our hiring decisions.
  • Dedicated to improving retention by building upon our monitoring and mentoring program for all diverse associates.

Combining new initiatives with our longstanding diversity efforts, Duane Morris has seen increasingly positive results. In the Minority Law Journal's annual diversity survey of the nation's largest 260 firms, Duane Morris continued to improve its regional and national ranking, rising to number 136 of all firms surveyed. Our strides in Philadelphia are encouraging; in a city known for both the racial diversity of its population and the lack thereof in its law firms, Duane Morris is one of only two law firms to exceed the national average of minority partners at all law firms. Additionally, Duane Morris leads all national law firms based in Philadelphia in the number of Latino partners. Nearly 30 percent of all of our attorneys are women, and more than 20 percent of our partners are women.

In our approach to diversity, progress in racial, gender and cultural diversity cannot be measured in numbers alone. Duane Morris has focused our diversity initiatives on both increasing the number of diverse associates and addressing the challenges diverse attorneys face in building lasting careers and rising to senior and leadership positions. While several of our key practice groups are led by diverse partners and female partners, Duane Morris endeavors to create a culture which will foster a deep pool of such attorneys who can then develop into the firm's future leaders. Duane Morris understands that simply hiring diverse associates will not change the diversity of the firm; Duane Morris is working to mentor and retain diverse associates so that our progress in racial, gender and cultural diversity is also reflected at the highest levels of leadership within the firm.

Our progress on gender diversity has been profound. We have no glass ceilings: women hold positions of leadership at all levels of management at the firm. Women lead a number of our key practice groups, including our Energy, Immigration and International practices, and serve on the firm's Executive Committee. The success of our female attorneys at Duane Morris has not gone unnoticed. Barbara Adams was chair of the firm's Finance Practice until her appointment by Pennsylvania Governor Edward Rendell to serve as General Counsel of the Commonwealth. In 2004, our longtime General Counsel, Gene E.K. Pratter, was approved by the United States Senate and is now a judge for the U.S. District Court for the Eastern District of Pennsylvania.

Our efforts to improve diversity extend beyond our firm's walls. The chair of our Diversity Committee, Nolan N. Atkinson, Jr., recognized the lack of diversity in Philadelphia's legal community and formed the Philadelphia Diversity Law Group. Nolan now serves as the chair of the organization, a consortium of 25 law firms and corporations that commits to employing at least one diverse first-year law student each as a summer associate. From this program, law students of diverse backgrounds gain access to what was once an exclusive legal community, and now have the opportunity to learn and develop their legal careers with experience at Philadelphia's top law firms.

In addition to our involvement in the Philadelphia area, Duane Morris has increased our presence at national conferences and events focused on diversity. We sponsor the Hispanic National Bar Association and its job fair. Duane Morris is also a longtime supporter and sponsor of the Equality Forum, a national gay and lesbian rights organization. Duane Morris continues to sponsor the Minority Corporate Counsel Association, and is active in other associations of diverse attorneys including: the Asian American Bar Association of the Delaware Valley; the Charles Houston Bar Association; Cuban Bar Association; Korean American Lawyers Association; National American Indian Housing Counsel and the National Bar Association.

The challenge of improving gender, ethnic and cultural diversity at Duane Morris is an ongoing effort that has the support of the entire firm. Duane Morris has been at the vanguard in supporting gender diversity throughout the firm beginning a generation ago. Our diversity programs are leading to similar success in improving racial and national origin diversity at Duane Morris. But even as we share these examples of Duane Morris attorneys and our involvement in numerous legal events, associations and programs for diversity, our hope is that such examples will no longer be necessary to mention in the future. We hope that through our efforts, and the efforts of other law firms, these stories become so common that they are no longer the remarkable accomplishments they are today, but simply routine aspects of the legal world tomorrow.