Scientific and technological breakthroughs are represented by Schwabe.
Overview
Scientists, entrepreneurs, and companies from start-ups to multinationals come to Schwabe for robust patent prosecution, licensing, and transactions.
We assist clients in developing and executing strategies through all phases of patent prosecution, from the preparation, filing, and prosecution of applications to appeal, reexamination, reissue, and post-grant proceedings. We provide freedom-to-operate opinions, non-infringement and invalidity opinions, intellectual property due diligence, and legal support for funding efforts and mergers and acquisitions. We also counsel clients seeking to exploit their patents and other intellectual property assets, including negotiating and drafting licenses and other contracts.
In 2023, Schwabe’s patent group obtained 1,775 U.S. and foreign patents and had over 7,860+ pending U.S. and foreign patent applications.
We speak your language
Our patent lawyers have focused industry backgrounds, with top academic and industry credentials in engineering, computer sciences, and biology. Our deep understanding of client technologies—including information technology, life sciences, mechanical technology, and nanotechnology/microtechnology—increases our efficiency and can lead to creative strategies for achieving patent goals.
Services for the patent life cycle
We help clients develop and execute patent strategies through all phases of patent prosecution, including:
- preparation and filing of patent applications
- office actions/prosecution
- appeal, reexamination, reissue, and post-grant proceedings
- non-infringement, invalidity, and freedom-to-operate opinions
- strategies for global protection
- portfolio management
- intellectual property due diligence
- licenses, technology transfer, and other contracts
- support for funding efforts and mergers and acquisitions
- infringement and other patent litigation
Trade secrets and unfair competition
Trade secrets often fall into a gray area between patented inventions and proprietary business practices. We provide strategic advice on whether to seek patent protection or maintain trade secret status, how to protect trade secrets through employment, non-disclosure, and non-compete agreements, and when to litigate trade secret disputes.
One of the LARGEST patent practices in the Pacific Northwest
19 registered patent attorneys
535 design patents
obtained in 2023
1,240 utility patents
obtained in 2023
2024 leading trademark law firm
The Patent Lawyer
Fresh From the Bench
A weekly summary of precedential patent decisions issued by the U.S. Patent & Trademark Office, the Federal Circuit Court of Appeals, and the U.S. Supreme Court.
Experience
- Successfully defended West Marine in a suit for patent, trademark, and copyright infringement, forcing the plaintiff to dismiss its patent claims and winning dismissal of some trademark claims. The plaintiff dismissed its remaining claims after we asserted a counterclaim based on the new anti-patent troll provision of Oregon’s Unfair Trade Practices Act.
- Represent Oregon Health & Science University in the preparation and prosecution of patent applications directed to medical devices, diagnostics, therapeutics, drug delivery, and imaging.
- Guided RevMedx through the process to obtain its first patent on X-Stat (a device that can instantly plug up bullet wounds to prevent victims from bleeding out before medical help arrives), named an Invention of the Year by Popular Science.
- Represent a sportswear company in a racketeering and fraud case brought against a competitor and its supplier, alleging that they conspired to defraud the Patent Office through the filing of sham petitions for inter partes review of the company’s patents.
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Represented a sportswear company in successfully defeating two inter partes review petitions, and setting precedential authority on the issue of who is in “privity” or a “real party in interest” under the America Invents Act.
- Represented a knife company in a design patent infringement suit brought against its competitor, securing a permanent injunction.
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Represented a global manufacturing client in a high-stakes trade secret misappropriation case against a group of former employees and their new employer, winning a preliminary injunction.
- Represented a nuclear power technology company in its purchase of patent rights from a university, for a relatively large international patent portfolio that we drafted and prosecuted.
- Successfully argued an appeal before the Federal Circuit in a patent case relating to electrochemistry, defending the district court’s Markman and summary judgment decisions.
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