Cozen O’Connor: Patents

Patents

Recent News:

Cozen O’Connor Recognized As a Best Law Firm in 25 Practice Areas Nationwide, 106 Practice Areas Regionally

The U.S. News – Best Lawyers “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations and peer review from leading attorneys in their field.

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Cozen O’Connor’s patent attorneys practice at the cutting edge of law and science. They routinely handle every phase of the patent process, from initial patentability analysis and prior art searches, to documentation and disclosure, to prosecution, protection, licensing, and enforcement. Cozen O’Connor has also established reciprocal relationships with foreign firms in all jurisdictions in order to provide clients comprehensive patent protection. With the globalization of technology and commerce, a sophisticated IP practice must have international patent capabilities.

We represent a range of companies, from small start-ups to multinational blue chips, that do business in many sectors, including industrial science, engineering, computer software, finance, education, manufacturing, telecommunications, managed services, retail, arts, and sports. Cozen O’Connor is also one of the only large law firms in the country with a team of patent attorneys dedicated to serving the generic pharmaceutical and biologics industries.

The concepts at issue in most patent matters are highly technical. It is essential that patent counsel have the requisite scientific training to fully comprehend the underlying IP at issue. In addition, they must be able to communicate with clients at a sophisticated level and persuasively defend clients’ patent rights. More than half of our team holds advanced degrees in the natural sciences and nearly all members have experience as research scientists in industry or academia. Our attorneys have worked at pharmaceutical companies and leading research universities, and many have published work in top scientific journals.

In addition to technical ability, Cozen O’Connor attorneys have the business acumen to counsel clients on building and managing their patent portfolio. Patents are assets that can bestow tremendous competitive advantage, but only if they are protected and leveraged wisely. We develop a deep understanding of each client’s business model and design patent strategies that complement each client’s financial position and long-term aspirations. A good patent lawyer does not simply draft documents and perform due diligence. A good patent lawyer helps determine what assets to protect and how to maximize each asset’s value.

 

SERVICE AREAS

  • Prosecute patent applications with the U.S. Patent and Trademark Office and abroad
  • Develop strategies to maximize patent protection
  • Analyze patentability of inventions not yet protected
  • Assist with searches of prior art and survey competitors’ patent activities
  • Perform freedom-to-operate, clearance, validity, due diligence and infringement studies
  • Represent clients in reissue, reexamination, inter partes review, post grant review and derivation proceedings
  • Counsel clients about leveraging domestic and international patent rights
  • Provide transactional advice on acquisitions, joint ventures, and transfer and licensing agreements
  • Assert or defend patents with respect to infringement claims or other disputes

Experience

Publications

Breathing New Life Into The “Tangential” Exception to Prosecution History Estoppel [Alert]

August 26, 2019

Martin B. Pavane and Darren S. Mogil discuss the importance of carefully analyzing the prosecutorial history of a patent to determine the reason for the narrowing amendment. If the reason was only tangential to the equivalent at issue, estoppel will not apply.

The Tangential Exception to the Presumption of Prosecution History Estoppel [Alert]

August 19, 2019

Marilyn Neiman and Martin B. Pavane discuss the Federal Circuit's split decision in Ajinomoto Co., Inc. v. ITC.

Why CBD-infused food and beverages could be ripe for a labelling class action [World Trademark Review]

June 13, 2019

Edward Weisz wrote about the legal landscape for food and beverage manufacturers looking to enter the hemp-based cannabidiol (CBD) market.

Medical Diagnostic Patent Ineligible Under Section 101 [Alert]

April 09, 2019

Marilyn Neiman and Martin B. Pavane discuss problems with Section 101 and a possible legislative solution expected by early summer.

Experimental-Use Exception [Alert]

April 02, 2019

Marilyn Neiman and Martin B. Pavane discuss the decision in Barry v. Medtronic, Inc.

Guidance on Enforcing and Defending Intellectual Property Rights on Amazon [New York Law Journal]

March 22, 2019

Edward Weisz and Alanna Miller wrote about Amazon's process for managing infringement and counterfeit allegations.

Inconsistency Between the Patent Term Adjustment Statute and Its Regulations [Alert]

January 30, 2019

Marilyn Neiman and Martin B. Pavane discuss the Federal Circuit's decision in Supernus Pharmaceuticals, Inc. v. Iancu.

USPTO Issues Revised Guidances Concerning 35 U.S.C. §§ 101 and 112 [Alert]

January 28, 2019

Tom Pontani, Ed Weisz, and Darren Mogil review the USPTO's new guidance for patent-eligible subject matter and claims using functional language to claim computer-implemented inventions.

Confidential Sales of an Invention Do Not Avoid the “On Sale” Bar Under the America Invents Act [Alert]

January 23, 2019

Martin B. Pavane and Darren S. Mogil discuss the U.S. Supreme Court decision in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.

PTAB Not Bound by Federal Circuit’s Findings on Appeal From Preliminary Injunction [Alert]

January 10, 2019

Marilyn Neiman and Martin B. Pavane discuss PTAB's denial of Aurobindo’s challenge of the validity U.S. Patent No. 6,866,866. Over six years ago, the Federal Circuit found that a substantial question of invalidity had been raised.

When is a Disclosure Not a Disclosure? [Alert]

November 01, 2018

Martin B. Pavane and Darren S. Mogil discuss the Federal Circuit's decision in FWP IP APS v. Biogen MA, Inc., an appeal from a Patent Trial and Appeal Board decision in an interference between FWP and Biogen.

The Use of IPR Institution Denial Decisions in Litigation [Intellectual Property Alert]

October 24, 2017

Darren Mogil and Marty Pavane discuss the important issue that arises at trial when the PTAB denies institution of an IPR.

Evidence Postdating a Patent’s Priority Date May Be Relevant to Written Description and Enablement [Intellectual Property Alert]

October 19, 2017

Martin Pavane and Darren Mogil discuss the Federal Circuit's decision in Amgen Inc. v. Sanofi.

The Trans-Pacific Partnership and Its Effect On Biosimilars [Inside Counsel]

November 23, 2015

Aaron Lukas and Keri Schaubert, associates of Cozen O’Connor’s IP group, discuss the effect that the Trans-Pacific Partnership will have on the biopharmaceutical and biosimilar industry.

Dow and Teva: Indefiniteness Defense Can Be Powerful Weapon [Law360]

October 28, 2015

Marilyn Neiman discusses The Federal Circuit’s recent decisions in The Dow Chemical Company v. Nova Chemicals Corporation (Canada) (Fed. Cir. Aug. 28, 2015)[2] and Teva Pharms. USA Inc. v. Sandoz Inc., (Fed. Cir. June 18, 2015)[3].

Will the Inventor of the Handheld Cash Register Ever Cash-In? [Inventors Digest]

December 15, 2014

Aaron Lukas, an associate in Cozen O'Connor's Intellectual Property Department, authored an article for Inventors Digest titled ‘Will the Inventor of the Handheld Cash Register Ever Cash-In?’ The article addresses recent rulings in cases involving CardSoft and Teva and changes to how patent validity is decided in patent litigation cases.

Supreme Court: Reverse Payment Settlements Subject to Antitrust Scrutiny [Intellectual Property Alert]

June 25, 2013

On June 17, 2013, the U.S. Supreme Court handed down a decision that addressed a “reverse payment” settlement agreement between a brand-name pharmaceutical company and multiple generic drug companies. The Supreme Court held that a settlement agreement in which a patentee pays an accused infringer not to enter the market – even if the agreement allows market entry before the patent term expires – is not presumptively lawful and is still subject to antitrust scrutiny.

Patent Law and Uneasy Compromises at the U.S. Supreme Court [The Legal Intelligencer]

May 09, 2013

At oral argument in Association for Molecular Pathology v. Myriad Genetics, the U.S. Supreme Court recently grappled with the question of whether human genes are patentable. Justice Stephen Breyer seemed to capture the justices' sentiment in the lively argument session: "The patent law is filled with uneasy compromises." The compromises that the justices choose will affect the future work of the U.S. Patent and Trademark Office (PTO) and shape the path of genetic research in the future.

IP: Obamacare’s Constitutional Impact on Patents [InsideCounsel]

April 30, 2013

A variety of patent issues arise from the act’s Biologics Price Competition and Innovation Act.

IP: Compound Patents Take a Hit in Delaware District Court [Inside Counsel]

March 19, 2013

A recent decision from the Delaware District Court held that the composition of matter patent for the drug Baraclude was invalid as obvious. This opinion has drawn immediate attention because it is the first time that a lead compound obviousness challenge has succeeded in a district court since KSR v. Teleflex issued. What this means for inside counsel depends on which side of the aisle you are on, but regardless this decision may provide the beachhead for obviousness attacks where none existed before.

IP: 5 practice tips from the recent Rambus rulings [Inside Counsel]

February 19, 2013

Four recent decisions shine some light on document retention policies. Case law has not been particularly precise as to when inside counsel should advise clients to begin the tedious—and costly—task of preserving documents for patent litigation. However, the twin 2011 rulings by the Federal Circuit (Micron II and Hynix II) followed by their respective 2013 remand decisions provide a solid primer. Together, these four decisions highlight a proper path for document preservation and the fatal consequences of failing to comply.Inside counsel should take note because document retention (and its converse cousin, spoliation) can negatively impact the enforceability of a company’s intellectual property while establishing a core defense for the accused infringers. This article examines the recent Rambus rulings, particularly the sanctions meted out for document retention violations and spoliation.

Events & Seminars

Upcoming Events

Taiwan National Technology Law Conference 2019

November 28, 2019 - Taiwan

Ude Lu will be presenting two topics at the 2019 Taiwan National Technology Law Conference.

Intellectual Property Essentials for Engineers: Patents, Trademarks, Copyrights, and Trade Secrets

November 21, 2019 - Cherry Hill, NJ

Kevin Gibbs will be presenting at the Engineering Law and Ethics Workshop.

Past Events

CRISPR Patent War between MIT and UC Berkeley

September 28, 2019 - Gaithersburg, MD

How Can I Protect My Ideas?

March 15, 2019 - Philadelphia, PA

Patent & Trade Secret Bootcamp

March 01, 2019 - Coral Gables, FL

6th Annual Summit on Biosimilars

June 01, 2015 - New York, NY

9th Annual Paragraph IV Disputes Conference

April 27, 2015 - New York, NY

Law360 Tweet Chat on the Innovation Act

February 11, 2015 - Tweet Chat

RT Imaging Summit

October 15, 2014 - Zhuhai, China

In The News

Cozen O’Connor Recognized As a Best Law Firm in 25 Practice Areas Nationwide, 106 Practice Areas Regionally

November 05, 2019

The U.S. News – Best Lawyers “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations and peer review from leading attorneys in their field.

Four Cozen O'Connor Attorneys Named Managing Intellectual Property IP Stars

October 15, 2019

Four members of Cozen O'Connor’s Intellectual Property Group, Frank Abramonte, Thomas Fisher, James Gale, and Hugh Marbury, have all been named IP Stars by Managing Intellectual Property.

Cozen O’Connor Patent Attorneys Represent, Pro Bono, Nonprofits Established by Parents of Children with Ultra-rare Genetic Disorder

October 14, 2019

Cozen O’Connor patent attorneys Jeff Townes and Hongling Zou represent, pro bono, three partner nonprofits established by parents of children with the ultrarare, and potentially fatal, alternating hemiplegia of childhood (AHC).

138 Cozen O’Connor Attorneys Named to the Best Lawyers in America

August 28, 2019

Best Lawyers selected 138 Cozen O’Connor lawyers from 21 of the firm’s national offices for inclusion in the 2020 edition of The Best Lawyers in America.

Outside Counsel: Federal Trademarks Still Difficult to Obtain for Cannabis Companies

February 08, 2019

Edward Weisz discussed with Corporate Counsel how different strains of cannabis can be registered with the U.S. Patent and Trademark Office under the federal patent law which allows for patents to be places on plants.

Cozen O’Connor’s Western Expansion Continues as the Firm Adds Two Attorneys From Seed IP Law Group to its Seattle Office

August 21, 2018

In a move that significantly enhances its Seattle office and expands its IP practice on the west coast, Cozen O’Connor today announced two attorneys from Seed IP Law Group LLP, Frank Abramonte & Lorraine Linford, have joined its fast-growing global IP Practice.

100 Cozen O’Connor Lawyers Named to the Best Lawyers in America

August 23, 2017

Lawyers were selected for inclusion in the 2018 edition based on a rigorous peer-review that has been developed and defined for more than 30 years.

Sixty-Two Cozen O’Connor Lawyers Named to the Best Lawyers in America

August 15, 2016

Sixty-two Cozen O’Connor lawyers from 13 of the firm’s national offices have been selected for inclusion in the 2017 edition of The Best Lawyers in America.

Kyle Vos Strache and George Bibikos Named 2015 Lawyers on the Fast Track

September 15, 2015

Two Cozen O'Connor attorneys are among those recognized by The Legal Intelligencer as Lawyers on the Fast Track.

Marilyn Neiman Quoted in Intellectual Property Watch Regarding Anti-Patent Troll Law

February 19, 2015

Marilyn Neiman, a member in the firm's Intellectual Property practice group, is quoted in Intellectual Property Watch in an article discussing the Innovation Act, and how this bill aimed at patent trolls would cause many changes to US patent law. Marilyn also discusses the effects this would have on patent litigation.

Edward Weisz Discusses New Software Systems Employed by the USPTO in FedScoop Article

January 09, 2015

In an article titled "Patent Office CIO Aims for Culture Change Amid Systems Updates," Edward Weisz, a member of Cozen O'Connor's Intellectual Property Department discusses the benefits of new software systems employed by the US Patent and Trademark Office.

Contacts

Frank Abramonte

Co-Chair, Patent Prosecution Practice

fabramonte@cozen.com

(206) 373-7270

Thomas Langer

Co-Chair, Patent Prosecution Practice

tlanger@cozen.com

(212) 297-2662

Edward M. Weisz

Co-Chair, Patent Prosecution Practice

eweisz@cozen.com

(212) 297-2660

People

Related Practice Areas

Upcoming Event:

Intellectual Property Essentials for Engineers: Patents, Trademarks, Copyrights, and Trade Secrets

Cherry Hill, NJ 11/21/2019

Kevin Gibbs will be presenting at the Engineering Law and Ethics Workshop.

Event Details