Patents 

Ulmer & Berne LLP's intellectual property (IP) and technology practice assists and advises clients in connection with patent preparation, prosecution and litigation matters. We count among our group attorneys who are registered to practice before the United States Patent and Trademark Office with training in the electrical, chemical and mechanical arts. Members of our group have substantial experience in:

  • Preparing and prosecuting patent applications with respect to software, business methods and processes;
  • Preparing and prosecuting U.S. and international patent applications in the electrical, chemical and mechanical arts;
  • Managing foreign agents in connection with preparation and prosecution of patent applications filed directly in foreign countries and under the Patent Cooperation Treaty (PCT);
  • Handling extensive due diligence investigations with regard to patent assertions;
  • Drafting patent-related legal opinions, including patentability, non-infringement, invalidity and freedom-to-use options;
  • Structuring and managing invention identification and protection programs;
  • Counseling clients with respect to patent portfolio development and management and related research and development activities;
  • Structuring and documenting transactions for the commercialization of patents and related assets and rights; and
  • Asserting patents and related assets and rights, including the support of patent related litigation matters.

Members of the IP and technology practice have advanced degrees or education in various scientific disciplines including computer science, chemistry, industrial engineering, electrical engineering, biology and pharmacology.  Some have served as in-house counsel with leading companies that operate in the software, semiconductor, medical imaging, health care, pharmaceutical and industrial and consumer chemical and polymer industries.