Patent Protection, Licensing, and Freedom to Operate

Patent Protection, Licensing, and Freedom to Operate

When working with clients, our attorneys seek to craft patent applications that look beyond mere patentability to meaningful enforceability when tested in litigation or in other contexts. With extensive experience in both FDA regulations and patent law, we are well-positioned to advise companies on the complex inter-relationship between the two.

At Amin Talati Upadhye, our objective is to provide patent counseling that covers the range of issues from prosecution to protection from infringement. We also assist in finding ways to maximize a patent portfolio’s value in the marketplace by employing such strategies as licensing and freedom to operate.

We are experienced in foods, drugs, supplements, cosmetics, medical devices, biotechnology, and human and animal life sciences, providing our clients with patent advice and representation that is fully sensitive and responsive to particular business and regulatory contexts.

The full extent of our patent counseling includes:

  • Analyzing patentability for new technologies
  • Conducting U.S. and international patent searches encompassing state of the art and infringement
  • Providing opinion letters related to freedom-to-operate, non-infringement and validity/invalidity
  • Counseling on Hatch-Waxman issues pertaining to branded and generic drug products including non-patent exclusivity periods for new drugs, patent term extensions and expedited FDA approval processes
  • Providing strategic IP counseling related to infringement risk analysis, mitigation, patent design-around and maintenance and review of IP Portfolios
  • Counseling on and assistance in International Trade Commission (ITC) matters including proceedings initiated under Section 337 of the U.S. Tariff Act
  • Preparing and filing of United States and foreign patent applications and patent maintenance
  • Assistance in patent proceedings such as re-examination, interference, public use and infringement

 

More on Trademark, Brand, Logo and Slogan Protection here.