What We Do

Organizations that flourish in today’s economy take patent management and protection seriously. They engage counsel who can skillfully guide them through the patent-preparation and prosecution process, and assist them in managing patent portfolios.

Ulmer & Berne’s Intellectual Property (IP) and Technology practice includes approximately 15 attorneys who are registered to practice before the U.S. Patent and Trademark Office, with training in the electrical, chemical, mechanical and software arts.

Members of our group have substantial experience in:

• Preparing and prosecuting U.S. patent applications in the electrical, chemical and mechanical areas, as well as with respect to software, business methods and processes
• Managing foreign agents in connection with preparation and prosecution of patent applications filed in foreign countries directly and through use of the Patent Cooperation Treaty (PCT) process
• Coordinating prior art searching and preparing patent-related legal analyses and opinions, including patentability, landscape, non-infringement, invalidity and freedom-to-use opinions
• Counseling clients with respect to 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 licensing and other transactions for the commercialization of patents and related assets and rights
• Conducting due diligence investigations involving patents or portfolios of patents, such as in connection with mergers, acquisitions and business divestitures

Members of the IP and Technology practice have advanced degrees or education in various scientific disciplines such as electrical engineering, mechanical engineering, computer science, chemistry, biology and pharmacology. Some have served as in-house counsel with leading companies that operate in the medical device, industrial and consumer chemical and polymer industries.