Patents
As the landscape of patent procurement and enforcement continues to evolve, the patent team assists clients with a broad spectrum of issues, including the prosecution, maintenance, and enforcement of patents. Clients benefit from an integrated approach, which leverages the scientific backgrounds of patent prosecutors in areas such as pharmaceuticals, chemistry and biotechnology with an experienced team of litigators. We help clients uphold their rights by counseling on various aspects of enforcement and defense, and guiding them through complex litigation and post-grant proceedings when necessary.
Patent Prosecution and Counseling
Our team has extensive experience in the strategic, cost-effective management of patent portfolios, including prosecution before the U.S. Patent and Trademark Office (USPTO), including the Patent Trial and Appeal Board (PTAB), and coordination of related international proceedings. We regularly assist clients with the preparation and prosecution of patent applications; counsel them on rendering opinions on patentability, reexamination procedures, and infringement; and evaluate patent portfolios.
Patent Litigation
Our litigators have extensive IP litigation experience in a wide range of scientific and technical fields, representing national and international clients in the federal district courts, U.S. Court of Appeals for the Federal Circuit, U.S. International Trade Commission and in proceedings before the USPTO. Our litigators have extensive experience and are consistently successful in the federal courts where IP disputes are most often litigated. The team is known for their skills in the courtroom and their ability to develop novel strategies to resolve matters in an efficient and cost-effective method. Our experience in handling both complex and routine cases, coupled with a deep understanding of our clients' businesses, puts us in a unique position to help clients achieve their strategic business objectives.
Proceedings Before the USPTO Patent Trial and Appeal Board (PTAB)
Our attorneys represent both petitioners and patent owners in the evolving landscape of post-grant proceedings introduced by the Leahy-Smith America Invents Act. The team's breadth of experience in patent litigation matters, combined with our patent prosecution experience before the USPTO, enables us to help clients successfully navigate the intricacies of the PTAB's procedural rules, including those related to inter partes review and post-grant review. These proceedings are often completed within one year, making them a faster and more cost-effective alternative to traditional litigation, but they also require a deep understanding of the technical intricacies of the patents in question. We routinely include the new procedures in conjunction with our overall defense strategy. For example, we use IPR proceedings in the USPTO to challenge the validity of the asserted patents and simultaneously achieve a stay of pending federal district court litigation. By utilizing a comprehensive approach to patent law, we provide a solution that is efficient and more cost-effective than conventional litigation.
Patent Diligence
We routinely represent buyers and sellers in both public and private company transactions in analyzing and examining the strength, scope, status, validity and enforceability of, the ownership rights to, and the future potential to be derived from the subject patent portfolios. Our attorneys leverage their scientific and technical backgrounds to scrutinize the patent assets being bought or sold. From the perspective of the buyer, we determine, among other things, the provenance of the target’s patent assets, the scope of the target’s patent assets to ensure requisite exclusivity for the company’s key products and technologies, and the validity and enforceability of the target’s portfolio. From the perspective of the seller, we address and resolve issues with the seller’s patent assets to maximize the value of the portfolio. Our attorneys deliver commercially viable advice to provide our clients with the requisite insight needed to make informed decisions throughout the diligence process.
As the landscape of patent procurement and enforcement continues to evolve, the patent team assists clients with a broad spectrum of issues, including the prosecution, maintenance, and enforcement of patents. Clients benefit from an integrated approach, which leverages the scientific backgrounds of patent prosecutors in areas such as pharmaceuticals, chemistry and biotechnology with an experienced team of litigators. We help clients uphold their rights by counseling on various aspects of enforcement and defense, and guiding them through complex litigation and post-grant proceedings when necessary.
Patent Prosecution and Counseling
Our team has extensive experience in the strategic, cost-effective management of patent portfolios, including prosecution before the U.S. Patent and Trademark Office (USPTO), including the Patent Trial and Appeal Board (PTAB), and coordination of related international proceedings. We regularly assist clients with the preparation and prosecution of patent applications; counsel them on rendering opinions on patentability, reexamination procedures, and infringement; and evaluate patent portfolios.
Patent Litigation
Our litigators have extensive IP litigation experience in a wide range of scientific and technical fields, representing national and international clients in the federal district courts, U.S. Court of Appeals for the Federal Circuit, U.S. International Trade Commission and in proceedings before the USPTO. Our litigators have extensive experience and are consistently successful in the federal courts where IP disputes are most often litigated. The team is known for their skills in the courtroom and their ability to develop novel strategies to resolve matters in an efficient and cost-effective method. Our experience in handling both complex and routine cases, coupled with a deep understanding of our clients' businesses, puts us in a unique position to help clients achieve their strategic business objectives.
Proceedings Before the USPTO Patent Trial and Appeal Board (PTAB)
Our attorneys represent both petitioners and patent owners in the evolving landscape of post-grant proceedings introduced by the Leahy-Smith America Invents Act. The team's breadth of experience in patent litigation matters, combined with our patent prosecution experience before the USPTO, enables us to help clients successfully navigate the intricacies of the PTAB's procedural rules, including those related to inter partes review and post-grant review. These proceedings are often completed within one year, making them a faster and more cost-effective alternative to traditional litigation, but they also require a deep understanding of the technical intricacies of the patents in question. We routinely include the new procedures in conjunction with our overall defense strategy. For example, we use IPR proceedings in the USPTO to challenge the validity of the asserted patents and simultaneously achieve a stay of pending federal district court litigation. By utilizing a comprehensive approach to patent law, we provide a solution that is efficient and more cost-effective than conventional litigation.
Patent Diligence
We routinely represent buyers and sellers in both public and private company transactions in analyzing and examining the strength, scope, status, validity and enforceability of, the ownership rights to, and the future potential to be derived from the subject patent portfolios. Our attorneys leverage their scientific and technical backgrounds to scrutinize the patent assets being bought or sold. From the perspective of the buyer, we determine, among other things, the provenance of the target’s patent assets, the scope of the target’s patent assets to ensure requisite exclusivity for the company’s key products and technologies, and the validity and enforceability of the target’s portfolio. From the perspective of the seller, we address and resolve issues with the seller’s patent assets to maximize the value of the portfolio. Our attorneys deliver commercially viable advice to provide our clients with the requisite insight needed to make informed decisions throughout the diligence process.
Experience
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We served as lead counsel to POINT Biopharma Global Inc. (NASDAQ: PNT), a biotechnology company that develops next-generation radioligand therapies...
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We represented a developer of consumer and commercial products in connection with building a portfolio of patents and other intellectual...
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We advise Beat the Bomb, a growth stage immersive gaming company, on fund-raising; intellectual property protection, including patent prosecution and...
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We represented the plaintiff in a patent infringement lawsuit relating to a patent on an award-winning toy. We won a...
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Members of the intellectual property litigation group successfully resolved a patent infringement suit filed by a prolific patent troll in...
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Our team represented Camping World, one of the nation's largest retailers of RVs, RV accessories and RV-related services, in Federal...
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We represented AutoZone in a patent infringement case and were granted summary judgment of non-infringement. EMG Technology filed suit claiming...
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We successfully moved to dismiss a patent infringement case alleging that our client's marketing and sale of a highly successful...
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We represented edo Interactive and two well-known financial institutions in connection with patent infringement claims. This matter involved four defense...
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We represented one of the largest distributors of camping and outdoor equipment in a patent infringement suit related to LED...
Experience
-
We served as lead counsel to POINT Biopharma Global Inc. (NASDAQ: PNT), a biotechnology company that develops next-generation radioligand therapies...
-
We represented a developer of consumer and commercial products in connection with building a portfolio of patents and other intellectual...
-
We advise Beat the Bomb, a growth stage immersive gaming company, on fund-raising; intellectual property protection, including patent prosecution and...
-
We represented the plaintiff in a patent infringement lawsuit relating to a patent on an award-winning toy. We won a...
-
Members of the intellectual property litigation group successfully resolved a patent infringement suit filed by a prolific patent troll in...
-
Our team represented Camping World, one of the nation's largest retailers of RVs, RV accessories and RV-related services, in Federal...
-
We represented AutoZone in a patent infringement case and were granted summary judgment of non-infringement. EMG Technology filed suit claiming...
-
We successfully moved to dismiss a patent infringement case alleging that our client's marketing and sale of a highly successful...
-
We represented edo Interactive and two well-known financial institutions in connection with patent infringement claims. This matter involved four defense...
-
We represented one of the largest distributors of camping and outdoor equipment in a patent infringement suit related to LED...
Professionals
| Name | Phone | |
|---|---|---|
|
Terry L. Clark Member |
(202) 827-2951 | tclark@bassberry.com |
|
Brian R. Iverson Member |
(202) 827-2954 | biverson@bassberry.com |
|
Paige Waldrop Mills Member |
(615) 742-7770 | pmills@bassberry.com |
|
Overton Thompson III Member |
(615) 742-7730 | othompson@bassberry.com |
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"Bass, Berry & Sims retains a notable practice with deep experience in the full gamut of IP matters. It has particular strength in the technology and healthcare spaces, as well as a growing practice in the hospitality sector. The firm possesses the capacity to handle sophisticated IP transactions and high-stakes litigation relating to patent and trademark infringement." Client feedback: "Bass, Berry, & Sims is always well aware of the latest issues and their large and sophisticated client base means they have dealt with the issues of the day in a meaningful context so they can pass along good practical advice." "The depth and breadth of their team is impressive, encompassing a wide range of expertise across various legal disciplines. Each member brings a unique set of skills and experience, which collectively contributes to a well-rounded and highly competent team capable of addressing diverse legal challenges."
From Chambers USA 2024