Patent Counseling

Technical Areas

With more than six decades of experience helping companies grow and protect their intellectual property, our attorneys are deeply skilled at handling all aspects of the patent drafting, prosecution, and post-grant process. All of our patent practitioners hold undergraduate degrees in hard sciences, engineering, or a related field and a majority of them have either an advanced degree or significant work experience in a related field. Our work includes all aspects of patent prosecution work from assisting with invention disclosures and drafting patents to creating freedom-to-operate opinions and handling post-grant proceedings.

 

Our Professionals

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 the number of patent filings, and our peers consistently recognize our professionals 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 before joining our firm—allowing them to bring highly specialized knowledge and experience to their technical areas of practice.

Our Professionals

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 the 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 given 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

Navigating the legally and procedurally complex landscape of a high-stakes appeal takes a different kind of lawyer. We have a team of dedicated appellate practitioners who specialize in just that—managing complicated appeals and assisting with high-stakes trial court litigation.

Collectively, our team of dedicated professionals has handled hundreds of appeals in all of the federal and state appellate courts in the Mountain West, in most other federal circuit courts, and in the U.S. Supreme Court. Our team also has provided trial support in complex civil cases of virtually every type.

Our Professionals

From semiconductors and superconductors, to optical systems and security systems, to medical devices and other electronics, our patent lawyers and agents have the experience and technical background to deliver high-quality, cost-effective protection to our clients.
Industry knowledge and technical skill are the foundations of our patent practice. Many of our lawyers and agents have bachelor’s and advanced degrees in electrical engineering. In addition to many of our lawyers and agents with years of experience in the business world, several of our lawyers also have worked as patent examiners at the USPTO.
This broad background provides our electrical engineering clients, whether large corporations or solo startups, with strategic counseling that is tailored to the specific timetables and needs of each individual business.

Hardware and software
As the use of the Internet, as well as the integration of industry-specific software, continues to increase exponentially, our clients turn to our multidisciplinary team of patent lawyers and agents to protect their computer-related technology both in the United States and abroad.
Our clients include both corporations and universities involved in the design and manufacture of a variety of computer-related technology products and services, including software, computing devices, wi-fi and offsite storage, RFID, cellular and telecommunications equipment, semiconductors, encryption systems, and cloud-based computing and storage, among others.

Our team of lawyers and agents draws upon a variety of different technical backgrounds and industry experience to serve clients with constantly changing technological needs, with many holding undergraduate or post-graduate degrees in computer science or a related discipline.

Practice Group Leaders

Our Professionals

Whether it’s trains, planes, automobiles or many other mechanical devices, our patent lawyers and agents help clients develop and protect the intellectual property behind the various components and processes that keep their businesses moving.

Our team members combine legal skill with solid technical backgrounds in mechanical engineering and other related fields to provide strategic advice to client that helps them gain a competitive edge in global, national and regional marketplaces. We counsel both large and small clients in a variety of industries, including aeronautics, automobiles, locomotives, motorcycles and mining, as well as numerous clients that manufacture products in many other fields.

Before entering private practice, most of our patent lawyers and agents spent years working in corporate and government settings. Many of them also worked in industry, offering them the real, hands-on experience that helps inform their day-to-day interactions with inventors, engineers, and thought leaders. Many of our team members also hold advanced degrees in mechanical engineering, so they can help translate and understand the core value in our clients’ products.

Practice Group Leader

Our Professionals

Despite a variety of diverse obstacles in the past few years, the life sciences and biotechnology industry in the United States and abroad has continued to prosper. Our sophisticated and nationally recognized practice serves a diverse group of clients, including corporations, universities and entrepreneurs with national and global interests in the healthcare, biotechnology, pharmaceutical, chemical, energy, and environmental industries, to name a few. As one of only six law firms selected to provide biotechnology patent services to the National Institutes of Health, our firm excels at providing targeted counsel to companies of all sizes.

Pharmaceuticals
Our pharmaceutical clients rely on our lawyers for strategic intellectual property counsel as their products progress through regulatory approval, both in the United States and abroad. No matter the type of drug, whether small molecule therapeutics or novel recombinant DNA and molecular biology-based products, we support them in every country, every step of the way. Our lawyers also have significant experience helping clients protect their pharmaceutical products from infringement both in the United States and in nearly every country in the world.
Our team is consistently recognized for its strength of service and we have achieved this success on behalf of our clients by:
• Aligning the patent prosecution process with our client’s core business strategies,
• Directing patent investment on inventions most likely to be valuable in the relevant market, and
• With patent application preparation and prosecution focused on securing patents, having excellent monetization and enforcement value over the life of the patent.
We also advise on investing in life science companies, often a risky proposition. Prudent investing requires an in-depth understanding of the intellectual property landscape for target companies.
Our lawyers have long served clients by building patent assets of value and assessing freedom-to-practice technology. We also help investors make better investment decisions by providing a clear vision of intellectual property opportunities and risks.

Chemistry
Innovators of petroleum products, polymers, environmental remediation technologies, coatings, biofuels, metal recovery and refining technologies, water treatment systems, magnets, nanomaterials, and many more chemical products have long turned to our lawyers for strategic advice on how best to protect and leverage their intellectual property.
Before entering private practice, most of our patent lawyers and agents spent years working in corporate and government settings. That experience, combined with undergraduate and postgraduate degrees in chemistry, chemical engineering, petroleum engineering, metallurgical engineering, and related disciplines, provides our clients with the knowledge, insight and skill they need in managing their IP portfolio.
Our lawyers routinely handle all aspects of chemistry patent protection, licensing and enforcement, both in the United States and abroad. We have filed patents on chemical innovations for our clients in nearly every country in the world as part of our clients’ long-term global IP strategies.

Green Technology
Innovators in the fields of energy generation, conservation and other green technology often turn to our patent lawyers and agents to help guide them through the development and protection of their intellectual property.
Our clients can rely on the diverse technical, business and legal experience of our lawyers in emerging environment-related technologies. The quickly evolving nature of the green technology market dictates a need for clients to develop sophisticated intellectual property strategies. Our lawyers help preserve the rights of owners while carefully managing the levels of investment that are appropriate to the stage and level of our clients funding.

Practice Group Leader

Our Professionals