PATENTS Perkins IP’s services in the patent area include:

Searches and Opinions. We perform preexamination patentability searches as an aid to clients in deciding whether to file a patent application. Where a client wants to learn whether its actual or proposed product infringes a patent, we perform a product clearance search. We can perform an invalidity search to test whether a patent asserted against a client is valid in view of the prior art, and, prior to asserting our client’s patent against others, to identify the potential attacks on the validity of the patent which the defendant is likely to raise; this search is more in-depth than a preexamination search. We write opinions based on each of these.

Patent Application Preparation and Prosecution. Perkins IP prepares and files patent applications for its clients in the mechanical, electronic, computer and certain chemical arts. Once a patent application is filed, we prosecute the application before the U.S. Patent and Trademark Office, urging the Examiner to allow the broadest claims that the prior art will permit.

Maintenance. Once a patent issues, Perkins IP dockets it for the payment of maintenance fees, which (in the US) occur at 3 1/2, 7 1/2 and 11 1/2 years from issue.

Assertion. A patent is a right to exclude others from making, using, selling, offering for sale or importing the patented invention. When faced with another’s infringement, the patent owner may solicit a license or demand that the infringer stop the infringement. We assist clients in determining whether infringement exists, in negotiating settlements from infringers (including damages for past infringement), and, where necessary, in instituting and prosecuting patent infringement actions in federal district court.

Defense. If the client receives a notice of infringement or is sued, there are several things it can do. The first is to determine whether the accusation of infringement is well-founded. We investigate the asserted patent to determine the real scope of its claims and deliver opinions on whether infringement really exists. Further, the patent being asserted may be invalid in view of the prior art, particularly prior art, found by us, which the Examiner never considered. The validity of the patent can be challenged in federal district court, or before the United States Patent and Trademark Office in a post-grant review (within nine months of issue), inter partes review (thereafter) or an ex parte reexamination (any time).

Licensing and transfer. Patents are intangible personal property and may be assigned, licensed, or hypothecated. We draft, negotiate and record such documents of transfer.

Foreign rights. Patents are national in scope and if an inventor or patent owner wants patent protection in a foreign country, he or she will have to obtain and maintain a patent in that country. We have an extensive network of foreign correspondents by which such international protection can be achieved, and coordinate the international prosecution of patents for our clients’ inventions. As economically appropriate, we use the Patent Cooperation Treaty, Paris Convention and European Patent Convention to achieve our clients’ objectives. We further docket and keep track of the annuities necessary to keep most foreign patent applications and patents pending or in force.