Clark+Elbing

Clark+Elbing

Our practice encompasses all aspects of intellectual property in the areas of biotechnology, medicine, and chemistry, with particular focus in the following five practice areas.

Patent Prosecution

Our approach to patent prosecution begins with an exceptional ability to communicate with inventors at the corporations, universities, and medical centers that are our clients. Because our professionals have worked in some of the top research laboratories in the world, we are able to connect with scientists and inventors and work with them from the very earliest stages of their discoveries. Our early and ongoing relationship with inventors, combined with our legal expertise, enables us to secure the broadest possible patent coverage for our clients.

Patent Portfolio Management

In addition to prosecuting patents, we help our clients evaluate and manage their patent portfolio. We utilize a strategic perspective, detailed client knowledge, and deep technical expertise to produce concrete, actionable advice for our clients.

Our review begins with a focused analysis of a client's patents, the strength of the claims, and the protection afforded to the client's method or product. We then study our client's portfolio in relation to the broader domestic and international intellectual property landscape to obtain a strategic perspective on third-party patents as well as licensing needs and opportunities.

As a small firm, our attorneys and scientists spend a great deal of time working directly with our clients, often serving on scientific advisory boards or in other advisory capacities. Consequently, we gain an in-depth knowledge of our clients' technology and business.

This in-depth knowledge, combined with our technical expertise, allows us to make concrete business recommendations. For example, when a client is faced by a third-party patent, we are able to counsel whether it is more advantageous for the client to alter its product or method, challenge the patent, or seek licensing.

Freedom-To-Operate Analysis

We provide freedom-to-operate analysis both as part of patent portfolio management and as an independent service. We critically review our clients' products and methods against potentially blocking third-party patents and assess the validity and enforceability of those patents. When appropriate, we also issue non-infringement and invalidity opinions.

In the situation where competitors do hold potentially blocking property rights, we are able as attorneys and fellow scientists to advise our clients both legally and technically on how best to avoid infringement.

Corporate & Investment Diligence

We conduct due diligence reviews of intellectual property for acquiring and merging companies as well as for institutional investors and venture capitalists.

In conducting due diligence we adopt an overarching view of intellectual property assets. We critically analyze all of a company's intellectual property - including its products, patents, patent applications, and licensing agreements - in order to assess the overall strengths and liabilities of a company's intellectual property.

Because our diligence practice encompasses both corporate and investor clients, it creates reciprocal benefits. Through working with corporate clients, we are intimately familiar with the business realities of intellectual property. And our work with investors keeps us current on what the market looks for in evaluating a business' intellectual property.

Technology Licensing

Often technology licenses are drafted by corporate law firms or departments because of their familiarity with contracts. At Clark+Elbing, we have the philosophy that a technology license is only as good as the understanding of the value of the intellectual property that underlies it.

As attorneys and technology experts, we are able to value the intellectual property behind the license more accurately and, thus, are better able to secure and protect our client's interest in the licensing agreement. We provide full legal services, including valuation and negotiation, in the area of technology licensing.