- Intellectual Property
- Transactions, Licensing and E-commerce
- IP Litigation
- Trademarks, Copyrights, Marketing and Advertising
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 support for funding efforts and mergers and acquisitions. We also counsel clients on how to exploit their patent and other intellectual property assets, including negotiating and drafting licenses and other contracts.
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.
- Defended BowTech Archery in patent infringement litigation over a resilient coating and cam designs used on its bows.
- Represented US Natural Resources (USNR) in suing ex-employees for patent infringement, trade secret misappropriation and breach of contract when those ex-employees started their own business and took advantage of confidential knowledge and trade secrets to steal customers. This matter was important to USNR as a way to communicate that it would enforce its patent portfolio and its rights against ex-employees in Canada and the United States in an industry where employees move regularly between competing companies.
- 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 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.
Resources & Ideas
- Nika AldrichOf Counsel
- Steven BlairAssociate
- Karri Kuenzli Bradley, Ph.D.Shareholder
- Gillian Bunker, Ph.D.Shareholder
- Michael A. CofieldSenior Counsel
- Graciela Gomez CowgerShareholder
- Scott EadsShareholder
- Martin GarthwaiteSenior Counsel
- Ian J. Griswold, Ph.D.Associate
- Peter HeuserShareholder
- Bryan D. KirkpatrickShareholder
- Enoy Lawless-LewerenzParalegal
- Joanna LeeOf Counsel
- Katherine LeeSenior Counsel
- Brenna LegaardIndustry Group Leader
- Jeffrey S. MarlinkAssociate
- Micah StolowitzShareholder