Patent Ownership and Inventorship: Avoiding Pitfalls in Defending Against Infringement and Enforcing Patents

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.

Mr. DeRoo has broad experience in strategic client counseling and patent litigation before U.S. district courts and the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). He has represented parties in dozens of proceedings before the PTAB, including as lead arguing counsel. His experience includes inter partes review (IPR), interference, reexamination, and ex parte prosecution appeal proceedings involving a range of technologies. He also counsels innovative and growing clients on a diverse array of patent matters. He has prepared numerous validity, infringement, and freedom-to-operate opinions for clients in the life science and chemical fields, drawing on his extensive litigation background. He also has significant experience managing patent portfolios and providing strategic prosecution guidance in the chemical and electrical arts.

Mr. Kim focuses on complex patent litigation before U.S. district courts and the Federal Circuit and on patent prosecution in the chemical and pharmaceutical fields, including Hatch-Waxman litigation arising from the filing of Abbreviated New Drug Applications. His experience includes developing pre-litigation strategy, fact discovery, preparing witnesses, developing validity and infringement strategies, motion practice, taking and defending depositions, and handling day-to-day litigation activities. He also has experience handling contested proceedings before the PTAB, including interferences and inter partes reviews. In addition to his litigation practice, Mr. Kim frequently advises clients on various contracts, including collaboration agreements, nondisclosure agreements, and other types of IP transactions. His practice also includes preparing validity, infringement, and freedom-to-operate opinions and conducting due diligence investigations and portfolio reviews for clients in the petrochemical and pharmaceutical fields. Mr. Kim maintains an active patent prosecution practice, preparing and prosecuting U.S. patent applications and coordinating global patent portfolio management in the chemical and pharmaceutical arts.