Patent

Our goal is to provide high-quality patent application preparation and prosecution services for our clients in a timely manner and at a reasonable cost.

At Oliff PLC, patent application preparation and prosecution are as important to us as anything we do.  We do not view these activities as secondary services to be provided to clients for whom we are providing litigation, opinion, or counseling assistance.  To the contrary, we view the task of obtaining solid patent protection for our clients’ research and development investments to be a primary mission, from which licensing, enforcement, and other activities flow.  We apply our expertise in litigation, opinion drafting and counseling to our patent preparation and prosecution practice and vice versa to maximize the value we add to these investments.  We have developed a substantial base of patent application preparation and prosecution expertise, to achieve technical aptitude across a wide range of technologies, and to customize our patent practice to fit the needs of each client.

Substantial Experience

Our firm’s substantial patent application preparation and prosecution experience starts at the top. Thirteen of our members and senior counsel are registered with and have extensive patent practice experience before the Patent and Trademark Office (PTO). Jim Oliff has over 45 years of experience, 15 of which predated the founding of the firm in 1983. Bill Berridge, Ed Walker and Kirk Hudson have more than 35 years of experience each. Mario Costantino has more than 30 years of experience. Joel Armstrong, and Chris Brown each have over 20 years of experience and Gang Luo, Jesse Collier, Aaron Webb, John Radi and Matt Barthalow each have about 10 years or more of patent experience. These attorneys have devoted substantial periods of their careers to drafting and prosecuting patent applications, and Jim, Ed, Mario, Chris and John are all former PTO Examiners. All of our members have significant litigation, opinion-drafting, counseling and licensing experience. We believe this diverse base of experience results in the highest quality patent applications and patents, drafted and prosecuted efficiently and effectively, with a view toward licensing and enforcement, as necessary.

In addition, we have maintained continuity by capitalizing on the experience of retired members Tom Pardini and Paul Tsou in their continuing roles as “of counsel” to the firm.

In addition to the members, most of our associate and other attorneys are registered to practice before the PTO, and many are former PTO Examiners. As with the members, we seek to engage all of our attorneys in a diverse range of activities, so that they will bring the broadest range of experience to their patent application preparation and prosecution.

Beyond our direct experience with patent application preparation and prosecution, our attorneys have the technical aptitude to handle virtually any project, regardless of technical complexity. The patent prosecution group at Oliff PLC has a wide range of academic and practical experience in a variety of technologies including:

  • aerospace, including turbine engines;
  • automotive, including hydraulic brake systems, automatic transmissions, engine controls, vehicle navigation systems and tires;
  • biochemistry and molecular biology, including diagnostic assays and kits, virus characterization, vaccines, natural and recombinant DNA and RNA isolates and fragments, and  genetically engineered organisms ranging from bacteria and viruses to pigs;
  • business methods;
  • chemistry, including adhesives, agrochemicals, catalysts, cosmetics, foods, hazardous waste treatments, inks and toners, lubricants, osmotic membranes, pharmaceuticals, diagnostic reagents, and polymers;
  • communications, including networks and wireless systems;
  • computer control;
  • computer hardware and software, such as data/image processing, user interfaces and electronic games;
  • construction equipment;
  • consumer electronics and office equipment, including PCs, printers, facsimile machines, copiers, video projectors, cameras and watches;
  • materials science, including metallurgy and ceramics;
  • medical equipment, including electronic monitors, test kit structures and chemistry, dialysis machines, components and fluids, surgical instruments and artificial circulation and resuscitation devices and fluids;
  • physics/optics, including contact and eyeglass lenses, zoom lenses and projection exposure lenses;
  • power transmission equipment;
  • precision measurement, including touch trigger probes, laser interferometers, Raman spectrographs and electronic calipers;
  • robotics, including measuring, forming, assembly and painting robots;
  • semiconductors, including their chemistry, structure, manufacture and assembly onto printed circuit boards; and
  • textiles, including fibers, filaments and consumer and industrial woven and nonwoven fabrics and textile machinery.

Oliff PLC handles a wide range of technologies in all of the major technical disciplines.  The following chart shows the approximate distribution by technical field of the patent applications filed and patents obtained by our firm.

Distribution of Patents Pie Chart

We have represented parties in patent interferences and post-issuance proceedings involving the following technologies, among others:

  • air conditioning and refrigeration lubricants;
  • aircraft engine fan blades;
  • bleaches and detergent additives;
  • medical equipment;
  • precision microlithography;
  • petrochemical processing catalysts;
  • pharmaceutical compositions;
  • photosensitive paper;
  • plastic bottles;
  • prostaglandin precursor genes and proteins;
  • seat belt mechanisms;
  • surfactants;
  • thermal barrier coatings; and
  • working fluids.

Growing Diverse Practice

With the close guidance of its members, Oliff PLC has experienced significant, virtually continuous growth since its founding in 1983.  Published reports for many years show that we are consistently among the top 10 U.S. law firms in obtaining U.S. patents.  The chart below shows U.S. patents obtained by our firm over a recent ten year period.  In a ranking of intellectual property law firms representing the world’s fifty largest companies, Oliff PLC was ranked first in the category of U.S. Patent Prosecution Counsel, and tied for first in the category of U.S. Prosecution and Litigation Counsel.  In an analysis of patent quality, Oliff PLC was ranked among the top 10 firms in the country for patent quality in each of chemical patents, electrical patents and mechanical patents.    Our growth is the result of referrals made by our clients, and our determination to keep our clients satisfied through our ability and willingness to customize our procedures to our individual clients’ needs, provide high quality work in a prompt, timely manner, and communicate our thoughts and strategies in simple, direct language.

 

2014 - US Patents Granted Bar Chart

We regularly provide a wide variety of patent prosecution services to our clients, including:

  • conducting patentability, validity and infringement searches and studies;
  • drafting and filing patent applications (for utility, design and plant patents);
  • providing advice concerning Office Actions from the PTO;
  • drafting Amendments and Requests for Reconsideration responding to Office Actions;
  • conducting personal interviews with Patent Examiners;
  • drafting petitions to the PTO 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;
  • counseling and licensing;
  • coordinating foreign filings through our associates in Europe, Asia, South America and elsewhere;
  • translating Japanese and other foreign language documents in-house; and
  • drafting drawings in-house to reduce costs, expedite the application process, and ensure accuracy.

Customized Service

Oliff PLC performs a variety of services for clients in preparing patent applications, depending on their particular needs.  For many clients (large and small corporations, universities, individuals), we perform a patentability search prior to incurring the cost of application drafting to determine the scope of available patent protection.  When preparing an original patent application, we thoroughly discuss the invention, personally or by video conference, telephone or correspondence as needed, to facilitate the application drafting process.  We try to obtain as much information as possible “up-front,” so the inventor reviews a first draft of the application that is as complete as possible.

For many foreign clients, for whom an original application was prepared abroad, we may directly file applications with minimal or no revision, depending on the client’s wishes.  For others, we will revise the translated application as needed before filing it in the PTO to ensure compliance with U.S. patent laws and to obtain the broadest possible scope of protection.  For some clients, we prepare translations in-house or have translations prepared by outside translators with whom we have longstanding relationships.  This has the advantage of eliminating many informalities before the patent examiner reviews the application, thus accelerating prosecution, simplifying the issues in dispute, avoiding estoppels, and focusing examination on the substantive aspects of the application.

We handle prosecution in a variety of ways based on our clients’ needs and desires.  For many clients, we prepare proposed Amendments and comment letters analyzing Office Actions and applied references.  Other clients may send us instructions for responding to Office Actions without any prior comments from our firm.  In either case, our clients welcome and know they will receive our further comments, if needed, on their proposals.

On most pending applications, we conduct personal patent examiner interviews, thus expediting prosecution while minimizing unnecessary claim limitations and estoppels.  Our focus on personal interviews results in a higher rate of issuance of broad patents, and reduces overall prosecution costs.  Our location, just ten minutes from the PTO, enables our attorneys to interview cases efficiently and without significant additional cost.  This also allows us to develop a rapport with the examiners in technologies in which our clients have many applications.

To further ensure optimal working relationships and the strongest patents, many of our foreign clients send members of their patent staffs to our office to work with our attorneys in patent application preparation and prosecution, and to study U.S. patent laws.  The “trainees” gain first-hand experience in U.S. patent prosecution, and can take this knowledge back home to improve the quality and efficiency of their companies’ patent departments.

Cost-Effective, High-Quality Results

Many of our firm’s clients have stated that they have found our firm’s work to be of higher quality and more reasonably priced than other U.S. patent firms.  We welcome your review of some of the patents we have obtained for our clients.  We also encourage you to request a copy of our schedule of typical patent fees, and to compare our fees with those of other firms.

For Further Information

For biographical information about our attorneys, please refer to the Attorney Profiles section on our firm’s web site.  For more information about our patent prosecution practice, please contact our members.