Patent

Unitalen provides a full range of worldwide services in the patent area, including patent prosecution, counseling, licensing, contracts, acquisitions, technology transfers, portfolio defense in connection with financial transactions, pre-litigation counseling, Chinese and international litigation, and international opposition proceedings. Unitalen has attorneys and patent agents with advanced degrees, in a variety of technical areas.

Unitalen patent group includes more than 180 attorneys, and the practice represents both nation and international companies ranging from start-ups to Fortune 500 corporations, in matters involving intellectual property rights and preparation and prosecution of patent applications before the Chinese Patent Office and foreign patent offices. The firm has experience preparing and prosecuting patent applications in a wide variety of diverse technologies ranging from computer hardware and software, semiconductors, integrated circuits, telecommunications, electronics, electromechanical, to biotechnology, pharmaceuticals, chemistry and plant genetics. We are counsel records for more than 8,000 patent applications annually. Although many of our clients provide us with prepared applications, our lawyers are skilled at drafting an application from limited disclosure materials, and this is where our work on most application begins. A final version is prepared and forwarded with formal papers for execution. Patent applications are read and interpreted not only by Patent Office Examiners, but also - should litigation arise - by judges. We use our experience as litigators to draft patent applications with both audiences in mind. Furthermore, we are able to litigate more effectively because we are experienced in drafting patent applications.

The group has extensive experience drafting new Chinese and PCT (Patent Cooperation Treaty) patent applications and performing the follow-up prosecution work including preparing amendments and, if necessary, preparing appeals to the Chinese Reexamination Board. The group has also successfully prosecuted reexaminations, protests, and invalidation. The group has a foreign patent prosecution practice, where we prosecute foreign applications for our clients through a network of international foreign associates.

We also counsel clients on patent licensing, assignments and related issues, including drafting and negotiating confidentiality agreements. We conduct novelty, validity, and patent assessment searches; avoidance analyses; invalidity and infringement investigations and analyses which ensure the continuous legal vitality of a client’s innovation; provide maintenance assistance for issued patents; prepare and assist with reexamination proceedings, and provide extensive litigation support.

Many of our attorneys hold advanced technical degrees and have acquired industrial experience in fields of specialty with major corporations. These attorneys are technically trained in a variety of scientific disciplines and technical areas. Our attorneys have expertise in emerging and cutting edge technologies such as genetic engineering, microelectronics, computer hardware and software, and Internet and business methods patents. We also have expertise in traditional areas of mechanical, chemical, electronic and biotechnological patents. Your case is always being handled by an attorney educated in, and by practice familiar with, the art to which it pertains. The firm also includes numerous attorneys and agents with valuable experience as former administrative patent judges and Chinese Patent Office examiners, petitions specialists and government international representatives.

Our attorneys are often engaged in rendering infringement and validity opinions with respect to patents and products of competitors of our clients. We measure the risk of exposure of the products or services of our clients to infringement of patents owned by competitors and, conversely, determine whether there is infringement of patents obtained for our clients by the products of services of competitors. The group can also assist its clients to design around competitors’ patents so that our clients can offer non-infringing products. Attorneys of the group are often involved in licensing patent rights and establishing licensing programs that provide clients with profitable royalty income. In addition, members of the group have experience in establishing, analyzing and optimizing intellectual property portfolios and programs. The goal of such client counseling is to avoid conflicts in the marketplace in a manner that is fair and cost effective, as well as to maximize the clients’ profits.

Our attorneys have extensive experience representing patentees and defending against patent infringement claims in patent litigation cases. They are familiar with foreign patent and patent-related dispute resolution mechanisms in several foreign countries, including the United States and Japan. In each case, we focus on explaining complex technical issues, and on presenting our client ’s story to the judge in the most compelling way possible. Realizing that judges do not always have the technical background to understand many of these products, we serve our advocacy role in part by translating the patent product, including both the technical and legal issues associated with it, into terms that can be understood by layperson. We have relationships with experts who can assist in evaluating the technical aspects of the patent claims as well as the viability of applicable defenses.

We have experience helping clients exploit their domestic and international patent rights, including negotiating and developing technology transfer arrangements, such as joint venture and license agreements.

Our computerized docketing system tracks maintenance obligations in more than 200 countries. Patent paralegals and a patent docketing clerk to manage the details of our active patent prosecution practice. Our docketing system ensures timely responses to outstanding communications from the Chinese Patent Office and from foreign patent offices, as well as timely notification to the client of foreign filing deadlines, and issue fee payment dates and patent annuities.

We also advise on the strategies aspects of patent prosecution, helping our clients on an appropriate and cost-effective patent portfolio.

 

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