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Patent Prosecution

Dickstein Shapiro’s clients are best served through the integration of world-class IP procurement and enforcement services. The firm takes a litigation-educated approach to preparing and prosecuting patent applications with the philosophy that an ounce of prevention is worth a pound of cure.

Litigation is made simpler and costs are significantly reduced if patents are prosecuted with a view toward common litigation issues. A prosecutor who has been involved in several Markman hearings and/or defended several motions for summary judgment will be much more likely to identify litigation issues (e.g., estoppel, Bilski, and MuniAuction) and prosecute around them than one who has not. As part of its integrated approach, Dickstein Shapiro provides its prosecutors with litigation experience and in-house training to ensure that they excel in the rapidly changing legal landscape. In prosecuting patents, the firm focuses on identifying the broadest concepts incorporated in clients’ inventions and obtaining commercially valuable patents that will protect the clients’ commercial position and provide an opportunity to monetize those patents, both within and outside their commercial space, thereby maximizing the value of IP assets.

Trademark Prosecution

In prosecuting trademarks, Dickstein Shapiro’s attorneys help clients in all aspects of trademark law, including:

  • assisting in the selection of candidate marks; 
  • conducting clearance searches in the United States and abroad; 
  • assisting in the selection and clearance of Chinese character marks; 
  • filing trademark applications using the most effective methods, including national, CTM, and Madrid filings; 
  • litigating opposition and cancellation proceedings; 
  • negotiating co-existence agreements to ensure use and registration of the desired mark; and 
  • coordinating all of the above in the context of global product launches.

Trademarks are part of an organization’s global marketing strategy, and Dickstein Shapiro’s IP attorneys work to provide trademark guidance that is appropriate to the commercial context. Firm attorneys have particular experience in the unique challenges faced by pharmaceutical companies in the selection, clearance, and registration of marks and also have considerable experience in the food, food service, tools, and electronics industries.

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