`PTO Form 1478 (Rev 09/2006)
`
`OMB No. 0651-0009 (Exp 02/28/2018)
`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 87361405
`Filing Date: 03/07/2017
`
`The table below presents the data as entered.
`
`Entered
`
`87361405
`
`BUCHANAN IP
`
`YES
`
`YES
`
`BUCHANAN IP
`
`The mark consists of standard characters, without claim to any particular font,
`style, size, or color.
`
`Input Field
`
`SERIAL NUMBER
`
`MARK INFORMATION
`
`*MARK
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`LITERAL ELEMENT
`
`MARK STATEMENT
`
`REGISTER
`
`APPLICANT INFORMATION
`
`*OWNER OF MARK
`
`INTERNAL ADDRESS
`
`*STREET
`
`*CITY
`
`*STATE
`(Required for U.S. applicants)
`
`*COUNTRY
`
`*ZIP/POSTAL CODE
`(Required for U.S. applicants)
`
`LEGAL ENTITY INFORMATION
`
`TYPE
`
`STATE/COUNTRY OF INCORPORATION
`
`Principal
`
`Buchanan Ingersoll & Rooney PC
`
`One Oxford Centre
`
`301 Grant Street, 20th Floor
`
`Pittsburgh
`
`Pennsylvania
`
`United States
`
`15219-1410
`
`corporation
`
`Pennsylvania
`
`GOODS AND/OR SERVICES AND BASIS INFORMATION
`
`INTERNATIONAL CLASS
`
`045(cid:160)
`
`*IDENTIFICATION
`
`FILING BASIS
`
`Legal services; providing legal services in the field of intellectual property law
`
`SECTION 1(a)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`At least as early as 01/23/2017
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`At least as early as 01/23/2017
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)SPECIMEN FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(7 pages)
`
`SPE0-38107146132-20170306165745789258_._000023BuchananBrochure.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\873\614\87361405\xml1\RFA0003.JPG
`
`
`
`\\TICRS\EXPORT17\IMAGEOUT17\873\614\87361405\xml1\RFA0004.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\873\614\87361405\xml1\RFA0005.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\873\614\87361405\xml1\RFA0006.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\873\614\87361405\xml1\RFA0007.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\873\614\87361405\xml1\RFA0008.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\873\614\87361405\xml1\RFA0009.JPG
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)SPECIMEN DESCRIPTION
`
`brochure, marketing material
`
`ATTORNEY INFORMATION
`
`NAME
`
`ATTORNEY DOCKET NUMBER
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`COUNTRY
`
`ZIP/POSTAL CODE
`
`PHONE
`
`FAX
`
`Carla J. Vrsansky
`
`9999974-23
`
`Buchanan Ingersoll & Rooney PC
`
`301 Grant Street, 20th Floor
`
`Pittsburgh
`
`Pennsylvania
`
`United States
`
`15219-1410
`
`412-562-1639
`
`412-562-1041
`
`EMAIL ADDRESS
`
`carla.vrsansky@bipc.com
`
`AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
`
`OTHER APPOINTED ATTORNEY
`
`CORRESPONDENCE INFORMATION
`
`Lynn J. Alstadt, Registration No. 29,362; Jason P. Camillo, Registration No.
`69,615; Craig G. Cochenour, Registration No. 33,666; Michael L. Dever,
`Registration No. 32,216; Ralph G. Fischer, Registration No. 55,179; Bryan H.
`Opalko, Registration No. 40,751 and Duane A. Stewart III, Registration No.
`54,468
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`COUNTRY
`
`ZIP/POSTAL CODE
`
`PHONE
`
`FAX
`
`*EMAIL ADDRESS
`
`Carla J. Vrsansky
`
`Buchanan Ingersoll & Rooney PC
`
`301 Grant Street, 20th Floor
`
`Pittsburgh
`
`Pennsylvania
`
`United States
`
`15219-1410
`
`412-562-1639
`
`412-562-1041
`
`carla.vrsansky@bipc.com;susan.hilburg@bipc.com;
`vicki.cremonese@bipc.com
`
`*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
`
`FEE INFORMATION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`
`APPLICATION FILING OPTION
`
`TEAS RF
`
`NUMBER OF CLASSES
`
`FEE PER CLASS
`
`*TOTAL FEE DUE
`
`*TOTAL FEE PAID
`
`SIGNATURE INFORMATION
`
`SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`1
`
`275
`
`275
`
`275
`
`/Carla J. Vrsansky/
`
`Carla J. Vrsansky
`
`Attorney of Record, PA Bar Member
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`412-562-1639
`
`03/07/2017
`
`
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1478 (Rev 09/2006)
`
`OMB No. 0651-0009 (Exp 02/28/2018)
`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 87361405
`Filing Date: 03/07/2017
`
`To the Commissioner for Trademarks:
`
`MARK:(cid:160)BUCHANAN IP(cid:160)(Standard Characters, see mark)
`The literal element of the mark consists of BUCHANAN IP.
`The mark consists of standard characters, without claim to any particular font, style, size, or color.
`
`The applicant, Buchanan Ingersoll & Rooney PC, a corporation of Pennsylvania, having an address of
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)One Oxford Centre
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)301 Grant Street, 20th Floor
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Pittsburgh, Pennsylvania 15219-1410
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)United States
`
`requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register
`established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) International Class 045: (cid:160)Legal services; providing legal services in the field of intellectual property law
`
`In International Class 045, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at
`least as early as 01/23/2017, and first used in commerce at least as early as 01/23/2017, and is now in use in such commerce. The applicant is
`submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed
`goods/services, consisting of a(n) brochure, marketing material.
`
`Original PDF file:
`SPE0-38107146132-20170306165745789258_._000023BuchananBrochure.pdf
`Converted PDF file(s) (7 pages)
`Specimen File1
`Specimen File2
`Specimen File3
`Specimen File4
`Specimen File5
`Specimen File6
`Specimen File7
`
`The applicant's current Attorney Information:
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Carla J. Vrsansky and Lynn J. Alstadt, Registration No. 29,362; Jason P. Camillo, Registration No. 69,615; Craig G. Cochenour, Registration
`No. 33,666; Michael L. Dever, Registration No. 32,216; Ralph G. Fischer, Registration No. 55,179; Bryan H. Opalko, Registration No. 40,751
`and Duane A. Stewart III, Registration No. 54,468 of Buchanan Ingersoll & Rooney PC(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)301 Grant Street, 20th Floor
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Pittsburgh, Pennsylvania 15219-1410
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)United States
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)412-562-1639(phone)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)412-562-1041(fax)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)carla.vrsansky@bipc.com (authorized)
`The attorney docket/reference number is 9999974-23.
`The applicant's current Correspondence Information:
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Carla J. Vrsansky
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Buchanan Ingersoll & Rooney PC
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)301 Grant Street, 20th Floor
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Pittsburgh, Pennsylvania 15219-1410
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)412-562-1639(phone)
`
`
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)412-562-1041(fax)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)carla.vrsansky@bipc.com;susan.hilburg@bipc.com; vicki.cremonese@bipc.com (authorized)
`E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant, the applicant's
`attorney, or the applicant's domestic representative at the e-mail address provided in this application. I understand that a valid e-mail address
`must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the
`Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Reduced Fee status and a requirement to
`submit an additional processing fee of $125 per international class of goods/services.
`
`A fee payment in the amount of $275 has been submitted with the application, representing payment for 1 class(es).
`
`Declaration
`
`If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):
`
`The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered;
`The mark is in use in commerce on or in connection with the goods/services in the application;
`The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and
`The facts set forth in the application are true.
`
`If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d),
`and/or § 1126(e):
`
`The signatory believes that the applicant is entitled to use the mark in commerce;
`The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the
`application; and
`The facts set forth in the application are true.
`
`To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the
`mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the
`goods/services of such other persons, to cause confusion or mistake, or to deceive.
`
`To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the
`allegations and other factual contentions made above have evidentiary support.
`
`The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §
`1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration
`resulting therefrom, declares that all statements made of his/her own knowledge are true and that all statements made on information
`and belief are believed to be true.
`Declaration Signature
`
`Signature: /Carla J. Vrsansky/(cid:160)(cid:160)(cid:160)Date: 03/07/2017
`Signatory's Name: Carla J. Vrsansky
`Signatory's Position: Attorney of Record, PA Bar Member
`Payment Sale Number: 87361405
`Payment Accounting Date: 03/07/2017
`
`Serial Number: 87361405
`Internet Transmission Date: Tue Mar 07 12:50:32 EST 2017
`TEAS Stamp: USPTO/BAS-XX.XXX.XXX.XXX-201703071250323
`98815-87361405-5803ef4db5b1f51fd3dfbd769
`69a73ef6de522ea7a04cb15715281b43ad3c41a-
`CC-11581-20170307123822174015
`
`
`
`BUCHANAN IP
`
`
`
`
`
`Intellectual Property
`
`Procurement
`
`Buchanan offers a full—service IP Section, the cornerstone of which is
`
`the intellectual property procurement group. Whether you need a patent,
`
`trademark or copyright, Buchanan will ably assist you at every turn.
`
`Patents
`
`Buchanan boasts over 50 practitioners registered to practice before the United States Patent and
`Trademark Office. In 2014, we prosecuted over 2,100 applications and helped our clients obtain
`1,682 U.S. patents. Calling upon our network of foreign counterparts, we helped our clients
`prosecute over 550 foreign applications and obtain 342 patents in 2014.
`
`Application Dralting
`
`An invention’s value often turns on the quality of the patent embodying it. Because our team
`members are versed in life sciences, we can readily understand an inventor’s contribution to the
`art, and we work directly with inventors to capture and claim the full invention. We follow case
`law developments in the Life Sciences area and draft applications that satisfy current standards
`yet leave options open should shifts occur.
`
`Prosecution
`
`Buchanan’s lP Section prides itself on cross—training. Our patent prosecutors have litigation
`experience and realize that every word in a file history is carefully analyzed. As a result, our
`patent prosecutors draft accurate and efficient responses. Should an Examiner fail to appreciate
`a given invention based upon written responses, Buchanan frequently takes advantage of its
`location and conducts in-person interviews with Examiners. Buchanan’s flagship IP office is in
`Alexandria, Virginia, just blocks away from the Patent Office.
`
`Opinions
`
`Key business decisions rest upon analyses not only of your IP, but also that of your competitors.
`Whether the issue is validity/invalidity, infringement/non-infringement or both, we can help you
`determine whether to stay the course or modify your tentative plan so as to minimize risk.
`
`Diligence Investigations
`
`Whether you seek to acquire a patent portfolio or seek to transfer your patent portfolio, diligence
`investigations involve a detail-oriented process. From verifying that the “owner” truly owns the
`property to determining whether the risks in the transaction outweigh the potential rewards,
`Buchanan's Life Sciences Team can assist with every step.
`
`Licensing
`
`A key reason to have patents is to monetize them. We have experience with issues encountered
`in life sciences licensing transactions, including those associated with inter-institutional
`agreements, federal funding, cooperative research and development agreements, the Bayh-Dole
`Act, F/RAND and export control.
`
`
`
`Portfolio Management
`
`Obtaining a patent is just one hurdle along the life cycle of an invention. Buchanan’s Life
`Sciences Team will help you chart out how best to fully protect an invention, be it with one or
`many patents. Buchanan offers institutional knowledge of the invention from its inception, and
`we use that knowledge to assist you in deciding what assets to retain and enforce.
`
`Patent Term Adjustment
`
`Every day of patent term matters, especially in the life sciences world. Due to our familiarity
`with PTA-triggering events, our patent prosecutors work with you to maximize valuable term. In
`addition, Buchanan's team can verify PTA calculations performed by the PTO and can challenge
`erroneous calculations.
`
`Patent Term Extension
`
`Applying for PTE is a seemingly straight—forward task but one that brings with it important
`consequences. From helping to analyze which patent in the portfolio should be extended to
`shepherding the application through the regulatory channels, Buchanan can advise you at every
`turn.
`
`Biosimilars/Biologics
`
`The Biologics Price Competition and Innovation Act (BPCIA) became law almost five years ago,
`and the import of the Act is now emerging. Our team can help you navigate the biosimilars world
`—from pre—litigation considerations to discovery mechanisms to actual litigation.
`
`Trademarks and Copyrights
`
`Buchanan’s Trademark and Copyright Group includes attorneys and paralegals who handle all
`aspects of trademark and copyright matters, including investigation and clearance, registration
`and maintenance, opposition and cancellation proceedings at the Trademark and Trial and Appeal
`Board (TTAB), federal and state court litigation involving the protection and enforcement of
`trademarks and copyrights, and administrative litigation at the International Trade Commission
`(ITC). The firm has experience in remedies against trademark and service mark counterfeiting on
`the Internet. We also handle preparing and filing copyright applications and have experience in all
`aspects of copyright litigation, including notice and takedown demands and safe harbor defenses
`underthe Digital Millennium CopyrightAct.
`
`Product Naming
`
`Our trademark lawyers represent life sciences companies in selecting and obtaining approval of
`product names for prescription and over—the—counter drugs. We research, review and vet possible
`trademarks with our clients and guide them through each phase of the naming process.
`
`Counterfeit Products
`
`Because the value of a product can be undermined by harmful or ineffective counterfeits, our
`Trademark Group develops strategies to uncover and combat counterfeit goods in the markets.
`Buchanan’s trademark lawyers are prepared to work aggressively to obtain injunctions and
`seizure orders and to take other steps to minimize the harm to our clients a the public.
`
`
`
`Intellectual Property
`
`Enforcement
`
`Patents, trademarks and copyrights permit the holder to exclude others
`
`from encroaching upon the protected area. Buchanan’s Life Sciences Team
`
`helps patent, trademark and copyright holders decide whether their rights
`
`are being threatened and, if so, when and how to take action. Our team
`
`also helps alleged infringers determine whether the infringement allegations
`
`are well—founded and whether the underlying intellectual property is valid.
`
`We are sensitive to the invasive nature of litigation, as well as the costs
`
`associated with enforcement. Drawing upon the technical knowledge of
`
`our deep bench, we tailor each litigation team to your particular needs.
`
`Traditional Litigation
`Buchanans IP Litigation Group offers the resources and experience of a general practice firm
`but with the locus of an IP boutique. We handle patent, trademark, copyright, trade secret,
`unfair trade/competition, ITC and arbitration matters from the initial tribunal through the highest
`appellate court.
`
`Patent
`
`Patent litigation is complex, and the amount in controversy in the life sciences space is often
`very high. Our litigators roll up their sleeves and truly learn the technology, which enables them
`to develop efficient litigation strategies. We have handled many life sciences cases involving
`chemicals, pharmaceuticals, genetica||y—modified organisms and medical devices.
`
`Trademark
`
`Buchanan’s trademark litigators handle a wide range of trademark disputes, including all types
`of trademark infringement and dilution claims, counterfeiting, gray-market goods, domain name
`claims and licensing disputes. We also assist our life sciences clients in disputes before non-
`judicial forums, including ex parts and inter partes registration and cancellation disputes before
`the TTAB and anti—counterfeiting enforcement through the United States Customs & Border
`Protection Service.
`
`Copyright
`
`Our copyright litigators understand and work through key issues in copyright disputes, including
`originality, fair use, work-for-hire agreements and ownership, public domain, the Digital
`Millennium CopyrightAct, Orphan Works and database protection.
`
`Trade Secret
`
`Trade secrets can be among a life science company’s most valuable assets. In today’s
`competitive global marketplace, it is all too easy for a trade secret to be revealed, especially in
`light of the mobility within the life sciences sector. Our litigation team handles a broad spectrum
`of scientific, factual, legal and procedural issues in all state and federal courts, and we are
`prepared to proceed under all state and federal statutes and regulations, the Uniform Trade
`Secrets Act, the Federal Economic Espionage Act and state business tort laws.
`
`
`
`Unfair Trade and Unfair Competition
`
`Buchanan’s litigators are familiar with the substantial body of federal and state law directed to
`unfair trade practices and unfair competition, including laws that prohibit false advertising. False
`advertising can be especially harmful in the life sciences area. We develop creative strategies
`using the Lanham Act and other tools to protect our clients against unfair competition in various
`forms, including false product comparisons and scientific claims made without proper testing and
`verification.
`
`International Trade Commission
`
`The ITC provides a specialized, fast-paced venue for solving intellectual property disputes,
`including for life science companies. Whether you are a complainant or respondent, our litigators
`can assist with every step of the process from development of theories for domestic industry
`assertions to the full scope of invalidity attacks and defenses.
`
`Arbitration
`
`Because the courts are not the only, best or most cost-effective forum for many disputes, our
`IP litigators are experienced in domestic and international arbitration of patent, trademark and
`copyright disputes. Our team members use this experience to counsel clients on the advantages
`of arbitration in certain IP disputes.
`
`Hatch—Waxman (Paragraph IV) Litigation
`Ever since its adoption, members of Buchanan's Life Sciences Team have counseled companies
`with Paragraph IV litigation under the Hatch—Waxman Act. We staff our Paragraph IV teams
`in a manner that makes sense for the particular dispute. We endeavor to minimize invasive,
`expensive discovery that does not bear on the merits of the validity and infringement challenges.
`We work with our FDA and Antitrust groups to stay abreast of developments in these overlapping
`areas. Because members of our team are located in key Paragraph IV |ocations—DeIaware
`(Wilmington), New Jersey (Trenton and Newark), New York (New York City), and Virginia
`(Alexandria, home of the "Rocket Docket")—the expense of local counsel is obviated.
`
`Concurrent Proceedings
`
`Gone are the days of single patent, single proceeding litigation. Life sciences companies
`increasingly face concurrent proceedings on several assets, which can drain precious resources.
`Due to our teams familiarity with each type of concurrent proceeding, we can work with you
`to determine whether a multi-proceeding path is wise and can advise you on what to expect at
`each phase. For example, |PRs (detailed below) are now a complement to traditional Paragraph
`IV litigation. We counsel pharmaceutical companies about the pros and cons of using IPRs and
`on how best to navigate such proceedings. If you are faced with concurrent proceedings, we will
`quickly assemble a team to vigorously protect your assets.
`
`(continued)
`
`
`
`Intellectual Property Enforcement
`(continued from previous page)
`
`interferences
`
`Buchanan offers an interference team that has handled hundreds of interferences before what is
`
`now the Patent Trial and Appeal Board (the Board). While interferences are being phased-out due
`to the transition to first-inventor-to-file, many cases in the life sciences field remain vulnerable to
`interference practice. Our interference practitioners can work with you to position your portfolio
`so as to provoke an interference and then assist you with every step of the process. Should you
`unexpectedly find yourself in an interference, we can work with you to develop validity attacks on
`your opponent. Buchanan’s experience with all phases of interference practice and our familiarity
`with the Board removes what would otherwise be unknowns associated with an “arcane”
`
`practice.
`
`Inter Partes Reviews (|PRs)
`
`The America lnvents Act (AIA) brought about several new types of post-grant proceedings,
`including |PFls. |PRs are modeled closely after the motions phase of an interference, and
`Buchanan has effectively transitioned its interference experience to IPR practice. To date, we
`have assisted with over 35 |PFls, on behalf of both patent owners and petitioners. For petitioners,
`we help identify art, retain experts, formulate bases to efficiently attack the targeted claims,
`and draft persuasive petitions. For patent owners, we develop a coherent strategy to protect the
`patent, retain experts, decide whether to file a preliminary response and whether to amend, and
`draft persuasive responses. Our versatility in these proceedings allows us to craft and execute
`an appropriate strategy, anticipate our opponent’s next move, and create an appropriate record
`should the matter proceed to appeal.
`
`Post Grant Reviews (PGRs)
`Subject matter eligibility, written description and enablement issues are key concerns to our life
`sciences clients. While not appropriate for |PFls, which are limited to anticipation and obviousness
`attacks, these issues can be pursued using a PGR. Our team can help you determine if a PGR is
`the right way to challenge your competitor and can help defend you should your property face
`one of these new attacks. In time, a PGR will also become a possible alternative to traditional
`Paragraph IV litigation.
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`Reissue and Reexamination
`
`Our patent reissues team has the in—depth knowledge our clients have come to expect,
`particularly when they are considering filing patent infringement litigation to enforce their
`intellectual property rights. Reissue proceedings are similar to standard patent prosecutions, but
`critical differences between the two can lead to a poor outcome if they are not handled correctly.
`Our experience in both broadening and narrowing reissue applications and in reissue protests
`provides our clients with full access to this sometimes critically valuable option. Many defendants
`and some plaintiffs in patent litigation are interested in reexamination requests, an option with
`both benefits and serious risks. We are ready to advise our clients about the complex strategic
`decisions presented by reexamination requests.
`
`For more r'nformafr'on, please visit us at B/PC.com
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