Patent Prosecution / Procurement

At DeMatteo Law, we understand that patents are one of the most valuable assets that small-to-mid sized businesses can acquire because they provide the means for not only creating revenue through licensing and other monetization activities, but also for carving out exclusive practice rights in tight, competitive markets.  For this reason, we make it our mission to understand our clients’ business objectives and align our patentability assessment, preparation, prosecution, post-grant and opinion activities to meet, and ultimately exceed, their needs.

When we take on a patent procurement/prosecution matter in particular, we do not focus on simply obtaining patent rights.  We, instead, focus on “strategic” prosecution, creating prosecution “solutions” that are designed specifically to achieve our clients’ business objectives at the least expense.  If your goal is to license your invention, for example, we will craft a patent prosecution strategy to obtain a “licensable” invention and work with you to plan other necessary activities, such as preparing Non-Disclosure Agreements (“NDAs”), planning pitch meetings with potential licensees, and drafting iron-clad license agreements that will help maximize revenue streams.  If your goal is to obtain a competitive advantage in the marketplace, we will implement prosecution strategies to identify and patent aspects of your invention that differentiate your business in the marketplace and create a prosecution roadmap to assist in identifying and protecting innovations in future technologies to be developed by your business, thereby helping to ensure you remain competitive as your products and services evolve over time.

Our patent prosecution services include:

  • Preparing and prosecuting utility and design patent applications, including preparing and prosecuting reissue applications and re-examinations
  • Patentability searches
  • Counseling on prosecution strategy issues
  • Analyzing inventorship issues, making inventorship determinations, and creating invention disclosure forms
  • Advising on patent life-cycle management
  • Auditing patent portfolios