U.S. Patent Prosecution Attorneys

The Intellectual Property Group at Crain Caton & James is fully prepared to assist clients, from the initial assessment of patent protection to the securing of U.S. patent rights. Led by experienced, registered patent attorneys, our team works closely with clients to identify and protect patentable inventions.

Our patent prosecution practice helps clients develop systematic approaches for identifying and disclosing new inventions, ensuring that they can evaluate whether patent protection is both available and warranted.

Patent protection is available only for inventions that meet statutory requirements, including being useful, novel (new), and non-obvious. These criteria are defined by statutes, and shaped by evolving case law. We work with our clients to create systems and forms that facilitate inventor disclosures and provide a platform for advocating patent protection. Through this process, clients can regularly assess which inventions merit further exploration for potential patentability.

How Do Our U.S. Patent Prosecution Attorneys Represent Clients?

Once an invention is identified as patentable, our Intellectual Property Practice Group collaborates with the inventors to define the scope of protection, prepare the necessary disclosures, and develop any required drawings. Upon mutual agreement that the application is ready, Crain Caton & James submits the filing to the United States Patent and Trademark Office (USPTO), while keeping the client informed of deadlines for any potential foreign filings.

After filing, the USPTO Examiner will issue communications regarding the application, which may include issues relating to the number of inventions claimed and their patentability. Working closely with the client and inventors, we craft appropriate responses and manage any associated fees to facilitate the patent’s issuance.

Upon securing a patent, the client gains the exclusive rights to exclude others from making, using, or selling the patented invention. The client can then determine the most strategic way to leverage these government-granted monopolies, including building a portfolio of patents that may serve as a counter-arsenal against any potential infringement claims from competitors.

Benefits of Working with Our Patent Prosecution Attorneys

Our patent attorneys work closely with inventors and other stakeholders to develop an efficient approach to drafting and prosecuting patent applications before the U.S. Patent and Trademark Office. Because these attorneys are routinely engaged in the licensing and enforcement of patents, as well as in the defense of infringement claims asserted by patent holders, they possess a practical awareness of the downstream consequences of drafting choices.

This experience allows them to anticipate and avoid common pitfalls and to identify circumstances in which the scope of protection may be strategically negotiated during prosecution to capture the broadest scope of protection. In addition, their familiarity with trade secret and copyright law permits a more nuanced assessment of when patent protection offers the greatest value and when complementary forms of intellectual property protection may operate synergistically to the benefit of the rights holder.