Patent Prosecution & Counseling


Patent Prosecution & Counseling

A strong patent portfolio is often the most critical asset for emerging and established businesses. Clients rely on Sheridan Ross’ experienced and innovative professionals to develop comprehensive protection strategies for their intellectual assets. Our attorneys and technical specialists have in-depth knowledge across a range of industries, yet regardless of industry our counsel is rooted in the day-to-day business decisions our clients face.

Our clients are individual inventors, small startup companies, government agencies and Fortune 500 companies throughout the world and across a spectrum of technologies and industries. They rely on us to develop, register and protect their patent rights, often as part of an all-inclusive approach to managing their intellectual property portfolios.

Our patent lawyers and agents address all facets of IP rights.  We assess opportunities, evaluate options, and give our clients the information they need to make informed and knowledgeable decisions about their intellectual assets. With decades of patent prosecution experience, we are as skilled at handling patents domestically with the USPTO as we are at pursuing worldwide patent protection.  Indeed, we routinely handle patent prosecution matters, oppositions and appeals both in the United States and in foreign jurisdictions. Our firm is annually ranked among the top law firms based on number of patent filings, and our professionals are consistently recognized by their peers for the quality of their work.

Our clients benefit from our patent team’s diverse technical background in fields ranging from chemical, electrical and mechanical engineering to biotechnology, pharmaceuticals and biochemistry, and from mathematics and physics to business methods and computer science. Many of our professionals hold advanced degrees in their respective fields, and most have experience working in technical industries prior to joining our firm—allowing them to bring highly specialized knowledge and experience to their technical areas of practice.


Patent Search Services

Patent Drafting, Prosecution, and Maintenance: Sheridan Ross handles all facets of the patent lifecycle, including patentability analyses; prior art searches; preparation and filing of provisional patent applications; preparation, filing, and prosecution of non-provisional utility and design patent applications; assignments; patent appeals; inventorship and ownership issues; maintenance of issued patents; and robust patent portfolio development.  We empower our clients to make knowledgeable decisions regarding their intellectual property by carefully assessing opportunities and presenting available options. In light of the business reality of limited resources, we work with our clients to determine realistic estimates and budgets.

Our firm is annually ranked among the top law firms based on number of patent filings. We average 2,500 patent filings worldwide each year in a full range of technologies, and our professionals have evolved their practices as patent law has evolved in the last decade. Our patent prosecution and counseling team takes very seriously the need to ensure that the specifications, drawings and claims for all patent applications filed in the USPTO conform with Title 35, United States Code; Volume 37, Code of Federal Regulations; with other applicable U.S. legal authorities; and with applicable foreign patent laws.

While complying with such requirements, our patent attorneys and agents are acutely aware of the need to fully disclose our clients’ inventions, and to seek the broadest appropriate coverage in view of the pertinent prior art. All members of our team also understand the importance of obtaining rights to aspects of inventions that have commercial or other strategic value. Further, our team has a solid understanding of patent laws and pitfalls outside of the U.S. We work hard to keep our knowledge of foreign jurisprudence updated, so that we can prepare patent applications that comply with patent rules in those jurisdictions where our clients seek protection.

Written Opinions: Sheridan Ross attorneys provide grounded, practical opinions on all patent law issues, including patentability, inventorship, validity/invalidity and infringement/non-infringement. Our opinion practice is informed by the depth and breadth of our prosecution and litigation experience, which provides us with unique and ongoing insights into relevant patent and technology issues.

Trade Secrets and Confidentiality: Innovation often involves closely guarded ideas, and most businesses have a significant stake in keeping their secrets safe.  Our lawyers have been helping clients commercialize, enforce and protect their trade secrets for more than 60 years.

We recognize that under the right circumstances, trade secret protection can be more powerful than patent protection—and in some instances, trade secret protection is the only option. We work with clients to create trade secret protection plans for their businesses, not only to assess their existing confidential and proprietary assets but also to provide an established policy to prevent disclosure of potentially important information.  The very survival of company built around trade secrets can hinge on having an effective plan to protect trade secrets, and we provide the critical advice needed to ensure that survival. We have also worked to audit and evaluate existing trade secret protection systems and policies to ensure they are working properly.

While critical to trade secret protection, appropriate confidentiality protections are also important to other forms of intellectual property.  Our clients routinely rely on us to prepare and review non-disclosure agreements, confidentiality agreements, and other forms of confidentiality protection.

Intellectual Property in Employment: Key to the protection of any intellectual property is the consideration of who actually owns the rights at issue, as well as who may later develop rights under applicable law.  These issues frequently present themselves in employment situations.

Our lawyers have substantial experience in analyzing complex intellectual property ownership and licensing issues in the context of employment.  We regularly advise our clients with employment, outsourcing and consulting agreements that address these matters.

Our clients receive the strategic advice and tactical tools necessary to navigate ownership and licensing formalities for patents, trademarks and copyrights, each of which is governed by different legal frameworksWe work closely and efficiently with clients, especially because the failure to timely perfect rights in the name of the appropriate party can result in the irretrievable loss of those rights.

Intellecutal Property Transactions: We understand the nuances of crafting  agreements and other documents required to commercialize intellectual property. Our lawyers work closely with both our clients’ inventors, in-house counsel, and owners, as well as with our clients’ business or corporate law firms, to create commercial agreements that properly address—based on our clients’ objectives—the intricacies of intellectual property development, licensing, and sale.


Representative Technologies

  • Electrical Devices
  • Artificial Intelligence
  • Computer Hardware & Software
  • Telecommunications
  • Mechanical Devices
  • Machine Learning
  • Chemical Compounds & Compositions
  • Pharmaceuticals
  • Medical Devices
  • Consumer Products
  • Automotive Components
  • Automation Systems
  • Manufacturing Equipment
  • Mining Technology