By patenting their innovations, our clients increase the value of their intellectual property and enhance their ability to compete in the marketplace. We work with individual scientists and engineers, laboratory and research teams, and R&D and product development groups to determine whether, when and where it is in our clients' business and technical interests to seek patent protection. And we don't just file patent applications. Drawing on our experience with patent litigation, corporate financings and technology transactions, we implement IP strategies that conserve resources, add measurable value and give our clients a cost-effective and commercially practical competitive edge.

Over the past two years, we filed nearly 4,000 US and foreign patent applications and obtained more than 1,500 US and foreign patents for our clients, covering innovations that span the technological spectrum, including aerospace, biochemistry, biotechnology, business methods, chemistry, computer science, fuel cells, genetics, high speed data communication, integrated circuits, materials science, medical devices, nanotechnology, pharmaceuticals, semiconductor devices/processes, and software. We also prepare and prosecute patent applications internationally—under the Patent Cooperative Treaty and in working with a network of seasoned patent lawyers around the world. Our experience extends to appeals, interferences and opposition proceedings within the USPTO, the US Court of Appeals for the Federal Circuit and the European Patent Office. 

Contacts

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Steinberg, Donald R.

Donald R. Steinberg

Chair, Intellectual Property Department

+1 617 526 6453 (t)

don.steinberg@wilmerhale.com

Haag, Joseph F.

Joseph F. Haag

Vice Chair, Intellectual Property Department

+1 650 858 6032 (t)

joseph.haag@wilmerhale.com

Experience

In recent matters, we:

  • Filed and obtained patents covering methods of treatment using NitroMed's commercial drug product, BiDil®—which is targeted to the treatment of heart failure in black patients—and worked with the company on the implementation of strategies for product life cycle management
  • Prosecuted a large and complex family of US and foreign patents for Wyeth and its licensee XCyte, concerning an anti-cancer immunotherapy that is currently in Phase III clinical trials
  • Represented Columbia University in the negotiation of several intellectual property licenses, and in patent prosecution relating to diverse fields such as software applications, integrated circuits, life sciences, chemistry and physical sciences

Publications & News

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August 7, 2017

The Use of Applicant Admitted Prior Art in IPR Petitions

In this article published by Bloomberg BNA's Patent, Trademark & Copyright Journal,  Don Steinberg, Yung-Hoon Ha and Liv Herriot explore how the Patent Trial and Appeals Board has considered Applicant Admitted Prior Art (AAPA) when a petitioner has relied upon it as part of one or more of its grounds in its IPR petition requesting the Board invalidate a patent. The authors provide recommendations for both petitioners and patent owners based on how the Board has decided on this issue.

July 20, 2017

LMG Life Sciences Recognizes WilmerHale in 13 Categories on 2017 Award Shortlist

In its annual recognition of the top law firms, lawyers and in-house counsel in the life sciences industry, LMG Life Sciences named WilmerHale to its 2017 award shortlist in 13 categories.

July 20, 2017

WilmerHale Earns Win at Federal Circuit on Behalf of Takeda in Hatch-Waxman Litigation

The appeals court reversed a district court finding of patent invalidity based on obviousness and remanded the case with instructions to enter judgment in favor of Takeda.

July 10, 2017

Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2017

WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently denied petitions, organized in reverse chronological order by date of certiorari petition.

July 10, 2017

Patent Law and the Supreme Court: Patent Certiorari Petitions Granted

WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently granted petitions, organized in reverse chronological order by date of certiorari petition.

July 10, 2017

Patent Law and the Supreme Court: Patent Certiorari Petitions Pending

WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all pending petitions, organized in reverse chronological order by date of certiorari petition.

June 13, 2017

What Reviving the TTIP Agreement Could Mean for the Future of Geographical Indications

BNA's Patent, Trademark and Copyright Journal published an article written by Kirsten Donaldson and John Hobgood analyzing considerations for trademark and geographical indication owners to take into account should the Trump Administration re-engage in the Transatlantic Trade and Investment Partnership Agreement.

June 9, 2017

The Legal 500 United States 2017 Recognizes 125 WilmerHale Lawyers Across 28 Practice Areas

The Legal 500 United States has released its 2017 rankings, recommending 125 WilmerHale lawyers—including 12 who are named to its elite “Leading Lawyers” list and two on its “Next Generation Lawyers” list—and 28 practice areas in its 11th edition.

May 26, 2017

WilmerHale Lawyers and Practices Recognized in 2017 Edition of Chambers USA

Chambers and Partners announced its rankings for the 2017 edition of Chambers USA: America's Leading Lawyers for Business, with WilmerHale listed among the nation's best in 50 practice area categories. Chambers also ranked 86 WilmerHale lawyers as leaders in their respective fields.

May 23, 2017

WilmerHale Earns Win for Unified Patents at PTAB

WilmerHale achieved a significant victory on behalf of Unified Patents Inc. when the Patent Trial and Appeal Board issued its final written decision in Unified Patents Inc. v. American Vehicular Sciences, LLC, holding unpatentable all challenged claims of US Patent [No.] 9,043,093.

Current Developments

Patent Certiorari Petitions

WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently pending, granted and denied petitions, organized in each listing in reverse chronological order by date of certiorari petition.

Patent Law and the Supreme Court: Certiorari Petitions Pending

Patent Law and the Supreme Court: Certiorari Petitions Granted

Patent Law and the Supreme Court: Certiorari Petitions Denied

For more information on these petitions or other patent appeal matters, contact:

Joseph J. Mueller (+1 617 526 6396, joseph.mueller@wilmerhale.com)
Thomas G. Saunders (+1 202 663 6536, thomas.saunders@wilmerhale.com)
Leslie Pearlson (+1 617 526 6809, leslie.pearlson@wilmerhale.com)