Patent Prosecution & Strategy | Industries & Practices

INNOVATIVE STRATEGIES FOR INVENTIVE PEOPLE.

Managing Intellectual Property Firm of the Year 2019

Overview

Combining business perspectives, technical knowledge and industry experience, our IP attorneys help our clients protect their sources of competitive advantage and maximize their revenue streams. We start by understanding each client’s business in great detail and working with them to create a patent strategy that is consistent with their business objectives.

Our clients regularly count on our international, integrated Intellectual Property team for a variety of services, including:

Developing domestic and international intellectual property strategies
Patent prosecution, including reexamination, reissue, interference and foreign filings
Commercial contract matters, including development, supply and licensing agreements
Domain name registration, transfer and enforcement
Patentability, validity and infringement opinions
Intellectual property commercialization and technology transfers
M&A intellectual property due diligence

We have been helping clients with their IP needs for more than 50 years and our team has been recognized internationally for its quality and capabilities.

Medical Devices + -

Dorsey has served clients in the healthcare industry since the 1940s, with clients ranging from the largest healthcare payer in the United States, to one of the world’s most recognizable medical practices, to companies and investors at the forefront of medical innovation. Medical technology companies rely on Dorsey because our attorneys understand the legal and technical issues crucial to success in this rapidly changing industry. Our wide range of expertise and experience, which includes attorneys with scientific/engineering degrees and industry backgrounds, including Ph.D.’s, provides a framework for our clients' success.

Focus on Medical Technology:

AI/Machine Learning/Bioinformatics
Biosensors
Biomaterials
- Superelastic alloys
- Shape memory alloys
Cardiovascular Devices
- Cardiac Rhythm Management
- Coronary
- Electrophysiology Mapping
- Structural Heart
Dermatology
Drug delivery
Digital Health and Electronic Health Records
Endoscopy/Laparoscopy
Gastroenterology
Gynecology
Hematology
Imaging, including MR/Ultrasound/OCT
Implant and tissue sterilization
Minimally invasive access/surgical systems
Microfluidics/Lab-on-a-chip devices
Neurology
- Neuromodulation
- Neurointerventional systems
Otolaryngology
Ophthalmology, including IOLs and stents
Orthopedics
Osteobiologic materials and implants
Pulmonology
Radiotherapy
Robotics
Spine
Urology
Wound care

Patent Services we provide to our Medical Technology Clients:

Patent prosecution, opinions, and litigation support for one of the world’s largest medical device companies in the external and invasive catheter technology area.
Patent prosecution, opinions, and litigation support for medical device companies in the cardiovascular and cardiology device technology area.
Patent prosecution and opinions for a fortune 100 medical device company in the puncture closure technology area.
Patent prosecution and opinions related to injection and infusion devices, osteobiologics and orthobiologics, endovascular, urology, dermatology, otolaryngology (ENT), pulmonology, spine, orthopedics, cardiology, neurology, ophthalmology, gastroenterology, women’s health, robotic surgery, obesity, orthodontics, orthopedics, including sensing and ablating with RF and lasers.
Represent numerous start-up medical device companies in the U.S. and abroad, such as companies in the arterial and venous pump technology area.
Developing and executing prosecution strategies—not only to protect a client's products, but also to analyze those of its competitors—to help ensure that the client realizes value from its intellectual property assets
Preparing and negotiating licenses, assessing the licensing value of competitors' patents, and guiding the client in the decision to license.
Monitoring the field to know when a client needs a clearance opinion or has a potential interference issue. These efforts can help direct the client in research and development areas that minimize patent obstacles.
Providing counsel on business-related matters, including antitrust and competition issues, and FDA regulatory issues.
Advising on potential litigation strategies and, when necessary, deploying experienced trial teams.
Performed patent due diligence for medtech and life science venture funds.

Technical Expertise + -

Trade Secrets + -

Worldwide Reach + -

Experience

Client Achievements

Representative Matters

Leading Provider of Oral Health Products. We work with a global provider of oral health products in connection with its product development and introduction activities. We analyze potential infringement issues and provide design around advice. We also file for patent protection on its products and monitor the activities of its competitors for infringement of its IP rights. We have identified and invalidated several copycat patents filed in China by the client’s competitors who seek to use the lax Chinese utility model system to disrupt our client’s success in the region.
Leading Manufacturer of Memory and Semiconductor Technologies. For many years, we have served as patent counsel for a leading semiconductor company and helped it secure more than 1,200 patents. Our client consistently ranks among the top 10 most prolific patent registrants in the United States and its patent portfolio has at times been rated as the most valuable patent portfolio in the world.
Leader in High Performance Eyeware and Goggles. We are IP counsel to a multi-national provider of high performance eyewear and goggles that has hundreds of patents registered and pending in 32 countries around the world.
World’s Largest Luggage Company. We serve as lead counsel overseeing the entire domestic and foreign patent portfolio held by the largest luggage company in the world. We also support the client’s M&A due diligence activities and we serve as IP counsel to the entities it acquires. In addition, we represent the client in its IP licensing and acquisition activities.
Multi-National Pharmaceutical Company. We handle patent prosecution matters in the United States for the third largest pharmaceutical company in Japan.
Leading Vendor of 4G Broadband Wireless Products. We negotiated supply, licensing and services agreements with one of India’s leading mobile network provider so that it could use our client’s products to launch its 4G service in India.
Leading Engineering University. We act as IP counsel to several of the top laboratories and professors at one of the top engineering schools in the United States. We are working with the client to grow its patent portfolio as part of its efforts to bring its technology transfer operations in line with its rising stature.