Practice Areas

Introduction

Zhu Lehnhoff LLP provides a complete range of patent services for our clients.

Patent Drafting and Prosecution

We provide a complete range of high quality patent application services, including preparation, filing, and prosecution of applications, appeals, reissues, and reexaminations. Our firm works in a broad range of technology areas including computer hardware and systems, electronics, computer software, telecommunications, business methods, mechanical devices and systems, biotechnology, pharmaceuticals, medical devices, and chemistry and chemical processing.

Design Patents

Design patents play an important role in the patent portfolios of many of our clients. They are relatively inexpensive and, in U.S. infringement litigation, offer additional damages remedies not available to utility patents. In recent years, due to the increased use of graphic user interfaces (GUI’s) in electronic devices and the important role played by design patents in the protection of GUI’s, the number of design patents granted by the USPTO has increased significantly.

Patent Portfolio Management and Strategy

We have considerable experience in advising both large and small companies on the development and management of global patent portfolios to advance their business goals. Our service is available at every stage of the patent process: invention harvesting and evaluation, application preparation, and prosecution. We counsel clients on procuring patents that not only protect their current and future technologies but also prevent competitors from using similar competing technologies.

Patentability Analysis and Opinions

We provide patentability analyses and opinions to help clients assess the likelihood that an invention will be granted patent protection. A patentability opinion is based on an analysis of public information, such as prior art publications, that could render an invention unpatentable. We analyze prior art from clients or patentability searches performed by professional search services working under our direction.

We have assisted clients for many years with assessing patentability of inventions in different technology areas. We use the results of the analysis to help a client determine whether their invention can be patented, what aspects of the invention are patentable, and how to draft strong patents that can withstand a challenge by competitors.

Freedom-to-Operate Analysis

We have many years of experience in performing freedom-to-operate (FTO) analyses. The FTO analysis involves assessing the risk that a product or process infringes the patent rights of others. Typically, the FTO analysis is performed to help a company decide whether to invest in the R&D, production or marketing of a new product, or to help a company guide R&D and product development and design.

As the first step in an FTO analysis, we work closely with a client to thoroughly understand its product or process. Based on this understanding, we help the client perform a patent search to determine whether there are any patents that pose an infringement risk to the client’s product or process. An initial infringement review of the search results may be performed to identify patents that should undergo a further analysis. An in-depth infringement analysis can then be performed on the high-risk patents. If the FTO analysis uncovers any patents that pose a significant infringement risk, we can assist the client to develop a strategy to avoid infringement, including to design around the patents.

Patent Infringement and Invalidity Analysis and Opinions

An infringement analysis determines if a specific product or process infringes a patent. It involves an in-depth analysis of whether a product or process includes every element of a claim. This analysis requires a detailed study of the claims, the examination history of the patent, and the relevant U.S. case law.

An invalidity opinion involves a determination of whether any prior art would render a patent invalid. The analysis may preferably be based on prior art that was considered during the examination, new arguments using the prior art considered by the USPTO, or both.

Infringement and invalidity opinions are typically prepared in the context of potential litigation. A patent owner may use the infringement opinion to determine whether its patent has been infringed and whether it should sue for infringement. The invalidity opinion helps the patent owner determine whether the patent will likely withstand a validity challenge.

Additionally, a party that believes there is a risk that its product or process infringes a patent of another may use infringement and invalidity opinions to determine how likely it will be sued for patent infringement and, if sued, whether it can successfully challenge the patent’s validity. Furthermore, the party may use a favorable opinion to avoid a finding of willful infringement and tremble damages in a future lawsuit.

We have provided numerous infringement and invalidity opinions for clients over the last twenty years. Our attorneys are well qualified to conduct infringement and invalidity analyses, because they have significant experience in both patent prosecution and litigation, and the knowledge of both is critical to preparing well-reasoned infringement and invalidity opinions.

Patent Due Diligence

We also have extensive experience in performing patent due diligence which involves assessing patent portfolios and the freedom-to-operate of products of companies that are the subject of merger and acquisition transactions. We assess the scope, validity and enforceability of patents and the strengths of pending patent applications. This includes analysis of the patents, patent prosecution histories, and pending applications, searches of prior art, and reviews of assignment and license agreements.

Intellectual Property Litigation at RuyakCherian LLP

Although our attorneys have extensive experience with intellectual property litigation in, our firm does not provide litigation services. Mr. Zhu is also a partner at the law firm of RuyakCherian LLP, and provides litigation services with his partners at RuyakCherian. RuyakCherian has a highly-rated litigation team. You can find information about RuyakCherian at the firm’s website: www.ruyakcherian.com.