Patents - China Business Team

With over 100 attorneys, patent agents and specialists registered at the U.S. Patent and Trademark Office, Alston & Bird's Intellectual Property Group is the largest in the Southeast and one of the largest of any full service general practice firms in the country. From our offices in Atlanta, Washington DC, New York, Silicon Valley, Charlotte, Dallas, and the Research Triangle area, we provide our clients with a full range of patent services including patentability assessment; patent application preparation and prosecution both in the United States and worldwide; appeals; oppositions; patent maintenance; counseling regarding infringement avoidance; and validity and infringement studies and opinions. Our attorneys have expertise in emerging and cutting edge technologies such as genetic engineering, microelectronics, computer hardware, computer software, and internet and business methods patents.

During 2011, we filed over 1,500 patent applications in the United States Patent and Trademark Office, and about 700 United States patents were awarded to our clients. We have an active foreign patent practice. We filed approximately 160 PCT applications and 1,000 patent applications in over 30 countries worldwide in 2011. Several of our attorneys have had extensive involvement in Opposition proceedings and hearings before the European Patent Office in Munich. Others have significant experience in managing patent and trademark enforcement proceedings in China.

Four concentrations, focused by technical discipline, comprise our Intellectual Property – Patents Practice: Mechanical, Electronics and Computer Technology, Biotechnology and Chemical and Pharmaceutical.

The Mechanical team includes four former Examiners of the United States Patent and Trademark Office. Last year, we prepared and filed numerous patent applications in various industries including aerospace, textiles, construction, papermaking, healthcare and medical products, consumer products packaging and metalworking. Our track record was very successful for our clients last year. As an example, we obtained two patents for Sonoco Products Company directed to its important new unsupported liner concept for composite containers. We were successful in an appeal to the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office with regard to a new textile product. The Board decision was unanimous and overturned the final rejection of all of the pending claims by the Examiner. The team has successfully defended several oppositions lodged against our clients' patents in the European Patent Office.

The design patent team has been active in securing patent protection for the product designs of our clients in the areas of automotive, sports equipment, equipment housings, and product containers. Alston & Bird leads the nation in the number of furniture design patents obtained. In 2009, we filed 75 design patents.

The Electronics and Computer Technology team continues to secure patents in the electronics, computing, and information technologies fields. Patent applications have been filed in such diverse areas as microelectronic circuit fabrication, integrated circuit packaging, global positioning satellite systems, tomography, communications, switching networks, laser devices, fiber optics and all aspects of computer software and applications. Among our electrical patent solicitation clients are: Nokia, Boeing, Zebra Electronics, Industrial Technology Research Institute, Suniva, Northrup Grumman, UPS, and Navico. As evidenced by the worldwide presence of many of these clients, we have substantial experience in drafting applications that are well received by patent offices around the world, and in managing patent portfolios on a global basis.

All of the members of the Biotechnology team hold advanced degrees in diverse scientific fields. This level of knowledge insures a thorough understanding of our clients’ issues and challenges. Our technical degrees are in the areas of genetics, molecular biology, physiology, cell biology, pharmacology, and immunology. Our attorneys and patent agents have extensive industry and research experience. Additionally, we have experience in the Examining Corps of the U.S. Patent and Trademark Office in the biotechnology examining group.

We service a range of both corporate and university clients in the areas of molecular biology, genomics, immunology, medical diagnostics, and plant genetics. We represent both university and corporate clients. Among our biotechnology clients are: University of California at Berkeley and Emory University. Several start-up biotechnology companies have built their businesses based upon patents secured by our biotechnology team. Our biotechnology attorneys prepare and prosecute patent applications; provide validity, infringement, and freedom to operate opinions; negotiate and draft license agreements; and provide general client counseling.

Our Chemical and Pharmaceutical Patents team attorneys have diverse academic and industrial backgrounds. The team was selected as patent counsel for a major manufacturer of fiberglass yarn, a new joint venture established to exploit Owens Corning's glass fiber technology. With the reorganization of the Celanese Ventures USA chemical business, we have assumed responsibility as patent counsel for a number of their out-ventured business units. The team has also helped a major pharmaceutical company in developing a patent strategy relating to their combinatorial chemistry technology for drug development. With our assistance, our client Shearwater Corporation (nka Nektar Therapeutics) closed a license agreement for Hoffman-LaRoche to manufacture interferon with Shearwater's proprietary poly (ethylene glycol) reagent. The product is a potentially superior new drug for the treatment of chronic hepatitis C and is currently in Phase III clinical trials.

The following examples illustrate the depth and diversity of our patents capabilities and our ability to help clients use patents as an integral part of a profitable business strategy.

Significant amounts of original patent application preparation work. Unlike many Washington or New York based firms, our practice includes much more than filing and prosecution of inbound foreign applications.
Preparation of original patent applications in highly sophisticated technologies including friction stir welding, semiconductor fabrication, low-gravity cryogenic fuel tank construction, jet engine fan blade metallurgy, plasma arc cutting and machine tool design.
Preparation of original patent applications in more traditional technologies such as papermaking, textiles and the machinery associated with these industries. We also have significant experience in most aspects of consumer packaging products including paperboard composite containers, film packaging products and label manufacture.
Preparation of a significant number of design patent applications for various products including furniture, sports equipment, hand tools, housings for electrical and mechanical devices and product containers.
We have deep experience in post-grant review of patents, and have handled over 170 reexaminations and reissues of United States patents before the USPTO.
Performed a due diligence for a new product in trial studies for a major pharmaceutical company.
Secured primary patents for a small biotech company in Greenville, NC.
Filed numerous applications on novel genes for a leading genomics company.

Contacts

Christopher Gegg

Partner

Charlotte

Phone: +1 704 444 1024

Email: chris.gegg@alston.com