Duane Morris LLP
30 S. 17th Street, Philadelphia, PA 19103, USA.
Phone: +1 215 979 1000
Duane Morris LLP, a law firm with more than 800 attorneys in offices across the United States and internationally, is asked by a broad array of clients to provide innovative solutions to today’s legal and business challenges.
Evolving from a partnership of prominent lawyers in Philadelphia a century ago, Duane Morris’ modern organization stretches from the U.S. to Europe and across Asia. Throughout this global expansion, Duane Morris has remained committed to preserving its collegial, collaborative culture that has attracted many talented attorneys. The firm’s leadership, and outside observers like the Harvard Business School, believe this culture is truly unique among large law firms, and helps account for the firm continuing to prosper throughout changing economic and industry conditions.
Intellectual Property Practice
Duane Morris’ IP attorneys focus on leveraging their clients’ intellectual property to help them achieve success in the marketplace. Our IP lawyers provide counsel on the most efficacious methods of establishing and developing IP holdings and protecting IP rights so clients can realize the most value from those assets. From patents to trademarks and copyrights to licensing and technology transfers to IP audits and IP asset due diligence, our attorneys offer clients portfolio management and strategic advice on obtaining and protecting valuable intellectual property.
The firm’s IP lawyers represent clients ranging from large multinational corporations to individual inventors, authors and owners of creative works. Our IP team includes highly trained attorneys with multiple technical degrees and jury trial experience as well as former patent examiners and patent agents, former corporate patent and trademark counsel and professors of IP law. Our attorneys utilize cutting-edge technological resources, including offering our clients technology solutions for real-time patent and trademark docket management. A sampling of matters the IP Practice Group handles includes biotechnology, pharmaceuticals, consumer products (particularly in the food and home and personal care categories), entertainment, media, franchising, distribution, trade secret matters and licensing projects. Our IP attorneys also assist clients in disputes regarding rights of privacy and publicity, antitrust and Internet and e-commerce issues.
Clients rely on the specific knowledge of Duane Morris’ registered patent attorneys and agents to obtain patent landscape and patentability analyses, prepare, file, and prosecute U.S. and PCT patent applications in all subject matters and disciplines, file appeals at the PTAB and Federal Circuit, counsel and manage strategic patent portfolios, and render validity/invalidity and infringement/non-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. Our lawyers represent clients in patent acquisition directed to a wide variety of complex technologies, including biotechnology processes and products, pharmaceuticals, medical devices, business systems and methods, computer systems and software, telecommunications equipment, optics and cameras, security and monitoring equipment, electronic instruments, block chain, consumer products, consumables, packaging, chemical processes and products, and manufacturing processes and equipment, to name a few. All of the firm’s patent lawyers and agents have science or engineering backgrounds and most have real world experience in their respective disciplines.
Duane Morris IP attorneys endeavour to understand our clients’ goals and focus on securing strong and enforceable patent protection. Given the combination of extensive trial experience as lead counsel in litigation before federal courts, as well as unique trial experience within the U.S. Patent and Trademark Office (USPTO), Duane Morris IP attorneys can also 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 USPTO. This 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 of resolving a patent dispute as compared to initiating a litigation proceeding in federal district court. Filing for IPR may also provide leverage in settlement negotiations.
Duane Morris IP 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.
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. 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.
Our patent litigators combine mastery in trial advocacy, an in-depth knowledge of patent law, an aptitude for science and technology and a focus on our clients’ business objectives. We represent clients in enforcing their patents, defending against claims of patent infringement, and disputes concerning inventorship and ownership of patents, and patent licenses. Duane Morris litigators have played a leading role in some of the most important cases in the field of patent law, as well as some of the most complex (including one of the largest patent cases ever tried before the International Trade Commission).
Samuel W. Apicelli