PracticesIntellectual Property

Patent Counseling & Prosecution

In today’s rapidly changing business environment, patent procurement must be directed, innovative and cost-effective, and consistent with a thorough understanding of the competitive landscape. Our attorneys have the depth of academic and industry experience to be the "right fit" to your technology, are skilled in strategic crafting of patent portfolios, and have years of experience analyzing complex patent matters.

We do not just prepare and file patent applications. Beyond procurement, we handle the lifecycle of strategic counseling—patentability and freedom to operate, continuation plans, whitespace mapping, due diligence for financings and M&A, and post‑grant matters before the USPTO (including inter partes proceedings at the PTAB).

Core Services

Our patent attorneys have a depth of experience across the life sciences industry.

Our patent attorneys have outstanding academic and professional credentials and have many years of experience working with clients in the fields of chemistry, medicine, pharmaceuticals, biotechnology, physics, devices and instrumentation. They are familiar with technologies ranging from biologics to drug delivery, and include emerging fields such as stem cell technology.

For pharmaceutical and biopharmaceutical clients, we have attorneys who are experienced in FDA-related IP work for both brand and generic companies, including: counseling on patent and pre-litigation strategies in light of the Hatch-Waxman Act and the Biologics Price Competition and Innovation Act; preparation of Patent Term Extension Requests; filing patent submissions with the FDA; handling pre-litigation ANDA work such as Paragraph IV submissions and preparation of Notification Letters, and offering assistance to our clients’ ANDA litigation counsel.

Our patent attorneys provide business‑driven patent counsel for software, electronics, semiconductor, artificial intelligence, robotics and other high‑tech innovations.

Many of our attorneys have decades of experience helping our clients in the technology industries, including software, electronics, semiconductors, AI and other high‑tech innovations. We don’t just “prepare and file.” We consider not only portfolios, but also the competitive IP landscape and licensing/tech‑transfer opportunities so the applications we draft support business goals.
Some representative technologies handled by our team include: software; artificial intelligence/machine learning; robotics and automation; computer vision; cloud services; mobile applications; cybersecurity; networking/telecom; semiconductors; embedded systems; signal processing; imaging; augmented and virtual reality; optics; mechanical systems; IoT and smart devices; antennas; e‑commerce and fintech.

Our team also represents a diverse group of clients in the fields of manufacturing, medical devices, clean technology, nanotechnology, semiconductors, displays, microfluidics, agricultural science and engineering, consumer products, apparel, toys, bioinformatics and other industries. We also prepare and prosecute design patents for a range of consumer and industrial products.

When the client’s interest is acquisition, financing, licensing or collaboration, our patent attorneys provide IP due diligence services that are focused, relevant and value-added to help identify potential weaknesses and safeguard the investor’s business interests.

We assess business objectives and analyze not only issues of validity and enforceability, but also the competitive and technical landscape to evaluate patent strength and breadth, freedom to operate and the offensive and defensive strategies for positioning the acquiring company to maximize exclusivity in light of its business objectives. Related services include:

 

  • Optimized portfolio strategy: claim architecture, continuation filing/pruning and whitespace/competitor mapping;
  • Opinions and post-grant strategies (e.g., PTAB) to support licensing, disputes and exits;
  • Performing patentability and freedom to operate studies aligned to product, launch timing and market risk;
  • Performing due diligence for financings, collaborations and acquisitions; and
    Executing, in conjunction with other practice areas, transaction diligence for financing and M&A.

Our patent attorneys provide strategic preparation and facilitate prosecution of international applications to help clients obtain patents around the world.

Our professionals work closely with IP counsel throughout the world to protect clients’ international patent rights, including the filing and defending of patent oppositions.

Our patent attorneys have extensive expertise in the development and management of complex international patent portfolios.

  • Harvesting inventions and shaping claim strategy;
  • Coordinating prosecution across large domestic and foreign portfolios;
  • Conducting examiner interviews and pursuing appeals to advance prosecution;
  • Managing continuation/divisional practice; and
  • Fine-tuning portfolios to product and market priorities

Areas of Expertise

Our Practice Group Members

Our Technology Transactions attorneys are business-minded problem solvers,
focused on helping you build, protect, and commercialize your technology.
  Browse attorney profiles to find the right partner for your needs. If you would like
assistance selecting a member of our team, please contact us.

Benjamin J. Carroll

Benjamin J. Carroll

Counsel

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David A. Roise

David A. Roise

Partner

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David J. Thibodeau

David J. Thibodeau

Partner

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Dianne E. Reed

Dianne E. Reed

Partner

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Doreen Y. Trujillo

Doreen Y. Trujillo

Partner

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Jim A.D. White

Jim A.D. White

Partner

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Kurt T. Mulville

Kurt T. Mulville

Partner

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Lance Topham

Lance Topham

Partner

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Michael Meehan

Michael Meehan

Partner

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WHY WORK WITH VLP

Senior-level attention backed by proven experience.

Every client relationship at VLP is partner-led, strategy-driven, and tailored for today's complex business landscape. Our seasoned attorneys combine the expertise and polish of Big Law with the responsiveness of an elite, lean team – you will always work with a senior attorney – giving you confidence, clarity, and experienced insight in every matter you entrust to us.

OUR ATTORNEYS
AVERAGE

27+

YEARS EXPERIENCE 

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