Our Practice

Patent Prosecution

Our prosecution practice is well-established and continues to grow in response to our clients’ demand. Nearly all of the members of Oliff PLC are registered to practice before the United States Patent and Trademark Office and have extensive prosecution experience. Many of the members and associate attorneys are former Patent Examiners. Our experience with litigation and licensing matters is brought to bear on all prosecution matters to optimize the value and enforceability of the patents and registrations we obtain for our clients.

Our patent practice spans the gamut of inventions, from complex communications hardware and software to genetically engineered mammals, from components and systems of automotive and jet aircraft engines to textile chemistry and fabric structures, from snow skis to semiconductors. As detailed in our attorney profiles, our patent attorneys and agents have a wealth of technical education and industry experience to apply to their patent prosecution efforts.

We provide a broad spectrum of patent prosecution services to our clients, including:

  • Conducting patentability, validity and infringement searches and studies;
  • Drafting and filing applications for utility, design and plant patents;
  • Providing advice and strategies for effectively responding to Office Actions;
  • Drafting Amendments and Requests for Reconsideration in response to Office Actions;
  • Conducting personal interviews with Patent Examiners;
  • Drafting petitions to the USPTO Director and the Group Directors;
  • Briefing and arguing appeals to the Patent Trial and Appeal Board;
  • Instituting, prosecuting and monitoring interference, inter partes review, reexamination, reissue and patent term extension proceedings;
  • Patent portfolio management, counseling and licensing;
  • Coordinating foreign filings through our associates in Europe, Asia, South America and elsewhere;
  • In-house translations for all Japanese language documents, Japanese-English interpretation services for in-person meetings, video and telephone conferences; and
  • Drafting drawings in-house to reduce costs, expedite the application process, and ensure accuracy.