Patent Practice

We are a firm of veteran intellectual property professionals with extensive experience in patent prosecution, as well as complementary skills that reflect a wide range of experience, practice strengths, and technology backgrounds. The lawyers of Wagner Blecher have the scientific and engineering background necessary to prepare, file, and prosecute patents in a wide spectrum of sophisticated technologies and products. Our engineering training and experience—often combined with practical experience in computer, electrical, electromechanical, aerospace, biochemical, and other sophisticated applications—enables us to fully understand the interactions between patent law, product technology, and your business needs.

Complete Practice

From the prosecution of individual patent applications to performing due diligence and freedom to operate studies, Wagner Blecher LLP is skilled in the handling of all patent-related issues. Our well-honed process involves working with inventors to assess the novelty of each invention and whether the claim is properly positioned against competing inventions. We then determine the filing’s strategic position in our client’s patent portfolio, advise on the use of design patents to secure additional protection, determine the best application procedure, and diligently and zealously prosecute each application to meet the client’s objective. We give each application individual care, crafting the claims and disclosure to optimize the value of each patent. Our skill in patent prosecution further enhances our portfolio analysis when performing due diligence and freedom to operate studies.

At Wagner Blecher, we have made significant investments in the latest case management technology to maintain a highly secure electronic database. By maintaining offices in both Silicon Valley and Santa Cruz County, we are easily accessible to clients over a large geographic area.

Patent Prosecution

Successful patent prosecution—the process of preparing and filing the patent application, then filing responses to the rejections of the patent examiner—is the foundation of effective patent law counsel. The U.S. Patent and Trademark Office has specific and often complex rules about the content and examination of applications, and patent disputes frequently hinge on complicated points in the prosecution process. At Wagner Blecher, we help clients draft and prosecute patent applications that withstand the most rigorous technical examination. Our professionals consider each filing’s strategic position in your patent portfolio, advise on strategies to secure additional product patent protection, determine the best application procedure to use, and diligently work to satisfy the prosecution objectives.

Portfolio Management and Analysis

Patent portfolio management is central to our counseling efforts. We implement invention disclosure and patent programs that audit and assess the current and pending core technology for you and your competitors. As a result, we can protect new technology from the moment of creation, and build a patent portfolio that is profitably leveraged and exploited in the marketplace. Our portfolio counseling has a strong transactional focus on what is required to generate the market for a patented product, so that you can grow that market and derive the most revenue from it by using our knowledge of technology and our skill at patent law to exploit that technology.

Prior Art Searches

Understanding and evaluating prior art prior to filing for patent protection can help to focus the novel aspects of an invention and increase the likelihood of ultimate allowance. We can effectuate prior art searches before filing a patent
application to survey the state of the art and to distinguish inventions from the closest art. Prior art searches are beneficial to applicants by identifying similar art in advance of filing, thereby improving chances at obtaining a patent.

Due Diligence & Freedom to Operate Analysis

The analysis of patent portfolios, whether they are the portfolios of acquisition targets or those of competitors, is often critical to accomplishing the goals of our clients. Our expertise in patent prosecution enhances our portfolio analysis when performing due diligence and freedom to operate studies. A complete understanding of the strengths and weaknesses of a patent portfolio is essential in evaluating the portfolio, and weighing the risks associated with acquiring or challenging the portfolio. Wagner Blecher has extensive expertise in the handling of portfolio analyses, providing our clients with information to assist in crucial business decisions.

Infringement and Validity Challenges

When clients encounter patent infringement and validity challenges, our firm conducts the necessary analysis on a single patent or an entire portfolio. We draft and prosecute patent claims, deal with notices of possible infringement, and analyze and manage portfolios that can involve numerous patents. Our extensive experience lets us determine when and how to respond to notices, and when and if it is appropriate to initiate a study. Each of our patent applications is drafted with an eye toward any potential challenge.

Patent Strategy

Effective IP asset management requires aggressive protection of all your intellectual assets. Wagner Blecher helps clients actively manage their intellectual property assets through global strategies for development, valuation, licensing, and protection. Our IP asset management strategies are specifically tailored for each stage of our clients’ development, whether they are startups planning market growth or mature companies facing acquisition opportunities.

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