Patent Prosecution

Patent Prosecution


Schiff Hardin’s patent prosecution practice provides innovative and effective U.S. and worldwide patent procurement strategies for clients in nearly every industry sector, including electronics, semiconductors, automotive, wireless telecommunications, medical imaging and devices, light emitting diode lamps and lighting systems, chemical, pharmaceuticals, biotechnology, computer software, and business methods.

Our patent prosecution professionals represent a large number of U.S. and international clients ranging from multinational corporations and universities to start-ups and individual inventors, providing each client with the exceptional personal service and attention for which Schiff Hardin is known.

Protecting Innovation

Our patent prosecuting attorneys work closely with our clients to help identify, build, protect, and manage innovations, as well as develop and strengthen their short-term and long-term business plans and objectives. We also help clients implement practical, cost-effective ways to address obstacles created by third parties’ patents.

We are adept in providing a wide variety of services to ensure that our clients have the tools and support they need to succeed in a highly competitive marketplace.

Our Services Include

  • U.S. and international patent prosecution services and counseling
  • Performing patent portfolio audits
  • Auditing and developing in-house patent procurement procedures
  • Conducting in-house patent prosecution training sessions and seminars
  • Providing patentability, validity, and freedom-to-operate opinions
  • Creating and driving patent monetization and licensing opportunities
  • Conducting due diligence on patent assets related to M&A deals.

Providing Perspective

We help our clients on a level that is more comprehensive than merely securing a patent. In addition to assisting our clients with their patent licensing and transactional needs, our patent prosecution attorneys are active members of patent litigation teams. They coordinate and implement efforts in traditional prosecution, litigation, and American Invents Act procedures, including post-grant review, covered business method review, derivation proceedings, inter partes review and supplemental examination. As a result, our attorneys possess a strategic understanding of the lifecycle of a patent, which equips them to build patent assets that will withstand the tests of time and the marketplace.

Providing Depth and Breadth

The attorneys in Schiff Hardin’s patent prosecution practice hold undergraduate and/or graduate degrees in science or engineering. Many of them have worked in our clients’ industries and/or were former patent examiners prior to practicing law. A number of them are also actively involved in organizations that influence patent law legislation and implementation both in the U.S. and abroad.

Additionally, many of our team’s attorneys are experienced patent litigators, who regularly advise clients on how issues such as patentable subject matter, written description, enablement, novelty, obviousness, double patenting, and estoppel, are handled before the patent offices and courts.

Our patent prosecution team has extensive experience in procuring and enforcing patents in the U.S. and worldwide. We have established a cost-effective network of experienced foreign counsel to assist clients in international patent procurement, management and enforcement.