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Practice Overview


Baker Donelson's Patent Prosecution attorneys advise on the protection of inventions for clients ranging from institutions of higher learning and research institutes, to start-ups, to Fortune 500 companies. We obtain, defend and enforce patents in the United States and throughout the world, as well as advocate on behalf of clients in USPTO administrative proceedings.

We understand that patents are business tools to be leveraged to generate revenue and control competition, and that those patents may be challenged in litigation someday. Therefore, we work closely with our clients to take a forward-looking approach to claim coverage that anticipates market developments and technology advances to maximize your legal protection, while carefully prosecuting applications that can be defended against challenges from competitors.

Our attorneys are experienced in preparing and prosecuting patent applications for universities, start-ups and international companies; managing and growing university and commercial patent portfolios; and formulating overall intellectual property strategy. We offer strategy for resolving difficult freedom-to-operate obstacles, negotiating licensing and material transfer agreements, and utilizing effectively existing intellectual property portfolios to strengthen clients' competitive positions.

We also collaborate with counsel in other countries to develop international patent portfolios and effective licensing strategies. Our attorneys negotiate and draft a broad range of transactional documents involving intellectual property, including license agreements, joint ventures, mergers and acquisitions, and other technology transfers, and we conduct due diligence searches in connection with such transactions.

Representative Matters
  • Patent counsel to international machinery and replacement parts manufacturer.

  • Patent counsel to independent engineering firm designing trusses for space-based applications.

  • Trademark litigation and prosecution counsel to international medical garment manufacturer.

  • Intellectual property litigation and prosecution counsel to international refrigerator component manufacturer.

  • Patent prosecution counsel to leading toy development company.

  • Patent litigation and prosecution counsel to the leading international ceiling fan manufacturer, including protecting such against infringement in the U.S. District Court.

  • Patent prosecution counsel to thin film battery manufacturer.

  • Counsel to international corporation for patent matters.

  • Patent counsel to national financial services company.

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