Penny R. Slicer 816.691.3438e-mail| vCard
Our registered patent attorneys work with the United States Patent & Trademark Office, which is located near our Washington, D.C. office. Our patent attorneys possess a broad range of technical backgrounds, including degrees in aerospace engineering, agricultural biochemistry, biology, microbiology, chemistry, chemical engineering, electrical engineering and industrial engineering. Our clients are equally diverse — ranging from individuals to universities to start-up technology companies to large publicly-traded industry leaders.
Scope of Service Our patent attorneys are involved in every aspect of patent protection and enforcement, including: Invention disclosure programs Patentability/novelty searches and opinions Patent applications and portfolio development Patent and technology transfer agreements Cease and desist letters Patent infringement and/or invalidity assessment Patent litigation Of Note We have successfully represented patent owners, inventors and alleged infringers. As an example, one of our lawyers recently secured a $61 million judgment in a patent infringement action on behalf of one of our clients. More About the Patent Group Patent AttorneysInvention Disclosure Programs We believe that intellectual property strategy and portfolio development begins with proactive measures to capture and use company innovations that have been developed. This means identifying core intellectual property assets, as well as recognizing areas for potential expansion. We assist our clients with formulating effective invention disclosure programs so that engineers and technicians alike understand and appreciate the protocols that they must follow in order to protect the proprietary nature of their ideas. Our attorneys work with management to ensure that they have the appropriate information from their employees to assess the feasibility of obtaining patent protection. We also counsel our clients on how to respond to individuals from outside the company who approach our clients with an invention so as to avoid later claims of misappropriation. In our experience, perhaps the biggest disappointment to inventors is that their own activities have somehow jeopardized their patent rights. We therefore continually counsel our clients about events (such as offers to sell the invention) that trigger a time deadline for filing a patent application. Patentability/Novelty Searches and Opinions We work closely with inventors in order to understand what aspects of their invention may be patentable. A formal patentability search and opinion (often called a "novelty" search/opinion) may sometimes be warranted, depending on the complexity of the technology, the extent to which the technology is publicly disseminated and the economic importance of conducting a search to the client. Patent searching usually begins with a review of United States patents that have already issued or have been published. In order to obtain a comprehensive and cost-effective search, we work with skilled and reputable professional searchers located near the Patent & Trademark Office in Washington D.C. These searchers can thoroughly comb various databases and collections, and often consult with Patent Examiners, in an attempt to uncover the patents most relevant to patentablility. If needed, our searchers can further expand the scope of the search to various publications and journals, as well as foreign patents. After obtaining a search, our patent attorneys carefully analyze the references uncovered in the search in order to assess the novel, non-obvious and potentially patentable aspects of the invention. Patent Applications and Portfolio Development Our patent attorneys are experienced in drafting, prosecuting and maintaining patent applications both in the United States and abroad. Types of PatentsWe counsel our clients about the types of patent protection available and the circumstances under which each type of patent application is appropriate. Our patent application counseling includes: United States Utility patents Provisional applications Design patents Plant patents Foreign Patent Cooperation Treaty ("PCT") Foreign regional (e.g., Europe) Foreign national (e.g., Japan) DraftingIn drafting a patent application, we realize that every part of the patent application is important — from the abstract to the drawings to the claims. On one hand, we understand how to counsel our clients in taking a concept and turning it into a complete patentable invention. On the other hand, even with our technical training, we realize that the inventor is usually the most knowledgeable resource we have. Thus, we work closely with inventors in order to have a full and accurate understanding of the details of the invention. ProsecutionAfter the initial filing of the patent application, "patent prosecution" often involves corresponding with the Patent & Trademark Office about the disclosure in the application, the scope of the claimed invention and references that impact upon the novelty of the invention. Moreover, as experienced practitioners, we realize that advancement of the patent application may often be best facilitated by conducting an interview with the Examiner in order to crystallize, and often resolve, the outstanding issues in each application. As with the initial drafting of the patent application, our attorneys continue to consult with the inventor so that the resulting patent provides the desired protection for the innovation.MaintenanceOnce a patent issues, we assist our clients in ensuring that they are properly marking their patented products to notify potential infringers of the patent rights. In addition to monitoring deadlines for the payment of maintenance fees and annuities due on patented technologies, we provide advice to our clients regarding the utilization and management of those technologies. Accordingly, our attorneys work with our clients to monitor competitor technology to ascertain the strength of a client’s patent position in light of budgetary constraints.Patent and Technology Transfer Agreements Our clients frequently ask our patent practitioners to review, draft and/or negotiate exclusive and non-exclusive patent license agreements, patent assignments, strategic alliances, joint ventures, technology development agreements, technology transfer agreements, research agreements, employment agreements, independent contractor agreements and manufacturing and supply agreements. Our experience with such documents relates to a variety of technical areas, including e-commerce, software, the Internet, chemistry, biotechnology, electrical and mechanical inventions. In many instances, we also record the patent transfer document with the Patent & Trademark Office or the appropriate foreign registry. Cease and Desist Letters Owning a patent is merely the first step in stopping competitors from practicing a patented technology. In many instances, our patent attorneys send "cease and desist" letters to infringers, giving them formal notice of their infringing activities and demanding that they stop such activities. Our attorneys then attempt to negotiate a resolution of the matter without resorting to litigation. Patent Infringement and/or Validity Assessments Infringement AssessmentsOur patent attorneys counsel our clients before initiating litigation by carefully analyzing the strength of an infringement claim. In order to assess whether a competitor is infringing a patent, a detailed review of the claims and the prosecution history of the patent before the Patent & Trademark Office is sometimes required. Validity AssessmentsOur attorneys understand that before delving into an expensive patent litigation matter, a validity search and opinion may be necessary in order to ascertain whether one or more "references" could render the client's patent invalid. In addition to reviewing the references cited by the Patent & Trademark Office, our patent attorneys may recommend that a validity search be performed in order to uncover additional references that are material to patentability. If appropriate, the validity search can focus on relevant U.S. patents, foreign patents, and even publications and journals. Patent Non-Infringement and/or Invalidity Assessment In addition to pursuing those who infringe our clients' patents, our patent attorneys are proactive in assisting our clients with avoiding infringement claims. Thus, when our clients are proposing to market a new product or implement a new process, we work closely with them to help them avoid infringement of existing patents from the outset. In some instances, our clients are aware of particular patents of concern based on a competitor’s products that have been marked with a patent number. In such a case, we can assist our client in "designing around" the competitor's patent. In other instances, we can conduct a comprehensive non-infringement search to uncover relevant patents. Of course, our patent attorneys understand that in today’s litigious environment, there is no guarantee that a company will not be sued for patent infringement at some point. That is why our patent attorneys have become highly skilled in drafting non-infringement and/or invalidity opinions that assist our clients in defeating claims of "willful" infringement. Moreover, when our clients are faced with allegations of infringement, our patent attorneys are cognizant of having the non-infringement and/or invalidity opinion match the arguments and strategies used at trial. Patent Litigation Our patent litigation teams have experience in every aspect of patent litigation, having represented diverse clients from start-up businesses to multi-national companies. Our attorneys have been involved in temporary restraining order and preliminary injunction proceedings, court hearings to interpret patent claims (so-called Markman hearings), advancing settlement strategies and numerous trials before judges and juries around the country. We also have experience in appellate proceedings before the U.S. Court of Appeals for the Federal Circuit. Our patent litigation experience involves a wide range of technologies. Those technologies include: ambulance auxiliary generators, automobile beverage holders, asphalt plants, asphalt road sealants, chair tilt mechanisms, blood controls, boat construction, diamond shapes, emergency room splints, exercise equipment, industrial air handling equipment, laboratory freeze drying equipment, mass transfer devices for distillation columns, mowing machines, prosthetic devices, refinery burners, rumble strip cutting equipment, skin treatment compositions, toaster safety valves, and vacuum packaging equipment.
Our patent attorneys are involved in every aspect of patent protection and enforcement, including:
We have successfully represented patent owners, inventors and alleged infringers. As an example, one of our lawyers recently secured a $61 million judgment in a patent infringement action on behalf of one of our clients.
We believe that intellectual property strategy and portfolio development begins with proactive measures to capture and use company innovations that have been developed. This means identifying core intellectual property assets, as well as recognizing areas for potential expansion. We assist our clients with formulating effective invention disclosure programs so that engineers and technicians alike understand and appreciate the protocols that they must follow in order to protect the proprietary nature of their ideas. Our attorneys work with management to ensure that they have the appropriate information from their employees to assess the feasibility of obtaining patent protection. We also counsel our clients on how to respond to individuals from outside the company who approach our clients with an invention so as to avoid later claims of misappropriation.
In our experience, perhaps the biggest disappointment to inventors is that their own activities have somehow jeopardized their patent rights. We therefore continually counsel our clients about events (such as offers to sell the invention) that trigger a time deadline for filing a patent application.
We work closely with inventors in order to understand what aspects of their invention may be patentable. A formal patentability search and opinion (often called a "novelty" search/opinion) may sometimes be warranted, depending on the complexity of the technology, the extent to which the technology is publicly disseminated and the economic importance of conducting a search to the client.
Patent searching usually begins with a review of United States patents that have already issued or have been published. In order to obtain a comprehensive and cost-effective search, we work with skilled and reputable professional searchers located near the Patent & Trademark Office in Washington D.C. These searchers can thoroughly comb various databases and collections, and often consult with Patent Examiners, in an attempt to uncover the patents most relevant to patentablility. If needed, our searchers can further expand the scope of the search to various publications and journals, as well as foreign patents. After obtaining a search, our patent attorneys carefully analyze the references uncovered in the search in order to assess the novel, non-obvious and potentially patentable aspects of the invention.
Our patent attorneys are experienced in drafting, prosecuting and maintaining patent applications both in the United States and abroad.
We counsel our clients about the types of patent protection available and the circumstances under which each type of patent application is appropriate. Our patent application counseling includes:
Our clients frequently ask our patent practitioners to review, draft and/or negotiate exclusive and non-exclusive patent license agreements, patent assignments, strategic alliances, joint ventures, technology development agreements, technology transfer agreements, research agreements, employment agreements, independent contractor agreements and manufacturing and supply agreements. Our experience with such documents relates to a variety of technical areas, including e-commerce, software, the Internet, chemistry, biotechnology, electrical and mechanical inventions. In many instances, we also record the patent transfer document with the Patent & Trademark Office or the appropriate foreign registry.
Owning a patent is merely the first step in stopping competitors from practicing a patented technology. In many instances, our patent attorneys send "cease and desist" letters to infringers, giving them formal notice of their infringing activities and demanding that they stop such activities. Our attorneys then attempt to negotiate a resolution of the matter without resorting to litigation.
Our attorneys understand that before delving into an expensive patent litigation matter, a validity search and opinion may be necessary in order to ascertain whether one or more "references" could render the client's patent invalid. In addition to reviewing the references cited by the Patent & Trademark Office, our patent attorneys may recommend that a validity search be performed in order to uncover additional references that are material to patentability. If appropriate, the validity search can focus on relevant U.S. patents, foreign patents, and even publications and journals.
In addition to pursuing those who infringe our clients' patents, our patent attorneys are proactive in assisting our clients with avoiding infringement claims. Thus, when our clients are proposing to market a new product or implement a new process, we work closely with them to help them avoid infringement of existing patents from the outset. In some instances, our clients are aware of particular patents of concern based on a competitor’s products that have been marked with a patent number. In such a case, we can assist our client in "designing around" the competitor's patent. In other instances, we can conduct a comprehensive non-infringement search to uncover relevant patents.
Of course, our patent attorneys understand that in today’s litigious environment, there is no guarantee that a company will not be sued for patent infringement at some point. That is why our patent attorneys have become highly skilled in drafting non-infringement and/or invalidity opinions that assist our clients in defeating claims of "willful" infringement. Moreover, when our clients are faced with allegations of infringement, our patent attorneys are cognizant of having the non-infringement and/or invalidity opinion match the arguments and strategies used at trial.
Our patent litigation teams have experience in every aspect of patent litigation, having represented diverse clients from start-up businesses to multi-national companies. Our attorneys have been involved in temporary restraining order and preliminary injunction proceedings, court hearings to interpret patent claims (so-called Markman hearings), advancing settlement strategies and numerous trials before judges and juries around the country. We also have experience in appellate proceedings before the U.S. Court of Appeals for the Federal Circuit.
Our patent litigation experience involves a wide range of technologies. Those technologies include: ambulance auxiliary generators, automobile beverage holders, asphalt plants, asphalt road sealants, chair tilt mechanisms, blood controls, boat construction, diamond shapes, emergency room splints, exercise equipment, industrial air handling equipment, laboratory freeze drying equipment, mass transfer devices for distillation columns, mowing machines, prosthetic devices, refinery burners, rumble strip cutting equipment, skin treatment compositions, toaster safety valves, and vacuum packaging equipment.