Intellectual Property

Patent Prosecution

For research-driven companies, universities, academic medical centers, and other institutions that put a premium on innovation, it’s important to work with a firm that helps secure patent rights and provides guidance on how best to leverage those protections. Our attorneys will help you to obtain patents that reflect the technical details of your invention as well as your business plan.

Focusing on the unique aspects of your invention and your business goals, we will help you transform your ideas into a valuable product. Mintz Levin represents clients in all technical areas throughout the globe, helping them obtain and enforce the best patent protection available in each country. Our reach is virtually boundless, both in where our clients are located and where we can obtain and enforce patent rights.

Quick Facts


  • One point of contact for global patent procurement
  • National and international practice
  • Team consists of attorneys, patent agents, and other professionals, including former patent examiners
  • Represent clients before the US Patent and Trademark Office, US Copyright Office, UK Patent Office, European Patent Office, in federal and state courts, and before regulatory and administrative agencies
  • Experience in complex patent prosecution, including re-issues, re-examinations, interferences, oppositions, protests, and patent appeals
  • Clients include public and private multinational corporations, hospitals, research centers, universities, early-stage companies, and individual inventors

Areas of Focus

  • Biotechnology
  • Energy and clean technology
  • High technology
  • Life sciences
  • Manufacturing
  • Medical devices
  • Microfluidics
  • Nanotechnology
  • Pharmaceuticals
  • Software
  • Telecommunications

Rankings & Recognitions

  • Ocean Tomo (2016)
    • Patent Prosecution practice identified as among the 20 US practices producing the highest quality patents
  • IAM Patent 1000 (2016)
    • 5 patent prosecution attorneys recognized among the "World's Leading Patent Practitioners"
  • Managing Intellectual Property (2016)
    • 7 attorneys named "Patent Stars" and 2 named "Trademark Stars"
  • Chambers USA (2016)
    • Massachusetts Patent Practice recognized for its quality and 3 attorneys identified as leading practitioners in their fields
  • Best Lawyers in America (2016)
    • 5 IP attorneys listed in Boston and San Diego
  • Super Lawyers
    • 40 IP attorneys listed in California, Massachusetts, New York, and Washington, DC
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REPRESENTATIVE EXPERIENCE


ENERGY TECHNOLOGY
  • Serve as patent counsel to the US-based global leader in laser-based gas analyzers used in oil and gas applications.  Firm attorneys have led all of the US-based company’s prosecution work since 1999, as it grew into the industry leader it is today.
  • Represented a global oil and gas company in the procurement of intellectual property rights for exploration and monitoring technologies (geographic information systems, seismological measurement analysis, fluid dynamic measurement analysis) and extraction technologies (high pressure drill bit architectures, deep sea drill motor systems, computing systems for controlling and monitoring drill bits and drill motors).
  • Serve as IP counsel for a fast-growing developer of cost-competitive, high-efficiency internal combustion engines.  In a highly competitive space with over 100 years of potentially relevant prior art, our attorneys have developed and implemented a strategy to build an impressive portfolio protecting the company’s core IP both in the United States and in several key international markets.
  • Drafted and prosecuted patent applications for GE Oil & Gas, which included working with technology such as fuel dispensers, subsea equipment for subsea refining operations as well as other technology used in an oil pipeline such as compressors.
  • Serve as patent counsel for Wayne Fueling Systems LLC, a producer of fuel dispensers, including building and maintaining their patent portfolio and counseling on IP strategy and patent enforcement.
  • Conducted strategic patent landscape analysis for research & development project on producing target chemicals, including analyzing patents in landscape and counseling on path to navigate the IP.
HIGH TECHNOLOGY
  • Represent a global software company recognized for its complex database and data management systems, with the development of a significant portion of its IP portfolio (approaching 1,000 patent families) working with in-house counsel and innovators across the globe. We are the go-to team when it is launching new platforms.
  • Serve as sole outside patent counsel to a leading company in credit scores, credit card fraud detection, and various technologies relating to big data. Tailored its portfolio development and filing strategies while achieving protections in the markets where it most needed them. Mintz Levin is responsible for more than 90 issued US patents and nearly two dozen non-US applications, and has many applications pending.
  • Served as primary outside counsel handling the patent prosecution needs of a provider of cost-effective and scalable disk backup solutions.
  • Serve as sole patent counsel to an innovator in open source software as it evolves to include proprietary offerings in addition to its substantial open source catalog. We have advised the company in revising its patent strategy and authored continuations on patents as well as created new families to provide protections around the company’s most innovative and valuable advances. Mintz Levin is working with the company’s engineers and senior management to creatively guide the company through expansion in both of its user bases – paying versus open source.
  • Mintz Levin provides patent prosecution and strategic patent counseling to a global wireless telecommunications company.  The company sold many patent assets to a global software corporation in 2015, and our work continues with the company as it innovates in new areas outside of the technologies it divested. 
LIFE SCIENCES
  • Serve as exclusive outside patent counsel to a leading pharmaceutical company focusing on theranostic products that improve detection and treatment of cancer and other diseases. Designed and manage worldwide patent strategy. Responsible for all in-licensing and out-licensing, enforcement, and defense of portfolio. Work with management on strategic partnerships and technology co-development — negotiate and draft relevant agreements. 
  • Serve as exclusive outside patent counsel to biotech therapeutics company, developing antibodies and antibody-toxin conjugates for treating breast cancer and melanoma. Designed and manage worldwide patent strategy. Assist in the preparation, filing, and prosecution of patent applications directed to four different antibody-toxin conjugates for treating cancer. The company is currently enrolling patients for a clinical trial for treating patients with triple negative breast cancer.
  • A team of professionals who joined Mintz Levin in 2015 worked for several years in-house at a world leading biotech company developing and defending IP in oncology, inflammation, autoimmunity and antibody engineering.
  • Serve as an outside patent counsel to innovative Scandinavian biotech company, developing personalized organs for regenerative medicine. Designed and manage worldwide patent strategy. Assist in the preparation, filing, and prosecution of patent applications directed to recellularized blood vessel. The company will commence a clinical trial in Norway and in Korea in 2016.
  • Serve as an exclusive outside counsel to a major public research university's patent portfolio on muscle-derived stem cells.  Assist in the preparation, filing, and prosecution of patent applications directed to muscle-derived stem cells globally, and counsel client on license agreement. The licensee of UPITT patent portfolio on muscle-derived stem cells is carrying out clinical trials in the US to treat stress urinary incontinence and anal incontinence with the isolated cells. 
  • Represent as outside IP counsel, a world leader in immunohematology and molecular diagnostics in in all aspects of intellectual property, including patent procurement and defense, licensing and other technology-related transactions.
MEDICAL DEVICES
  • Represent one of the nation's largest medical device companies, and a number of its subsidiaries, in developing therapeutic devices. Handle global patent portfolios and produce strategic opinions and work-around recommendations.
  • Conducted complex due diligence in the course of a significant planned acquisition for a subsidiary of a Fortune 50 pharmaceutical company.
  • Counseled a company, whose product targets liver tumors, to expand from one issued patent to an extensive patent portfolio and a product launch imminent in Europe.
  • Represented a company which developed and produces a cleaning cap for ports to blood lines in 3 inter partes re-examinations. After several setbacks and three years of fighting with the USPTO, the Patent Trial and Appeal board reversed the adverse decisions of the IPR examiner and reinstated the patents.
  • Helped start-up build their patent portfolio from scratch by creating a tailored IP strategy focused on helping the company advance toward its goal of getting their product onto the market. Also defended a due diligence conducted by Teva Pharmaceuticals, a strategic partner assessing whether to invest in our client, which ultimately resulted in Teva making the investment.
  • Conducted a freedom to operate assessment for a company that produces a clinical diagnostic product, which allows treatment professionals to carry out testing on-site. 

Clients We Serve

  • Emerging technology, life science, biotechnology, and medical device companies
  • Individual inventors
  • Leading research institutions and hospitals
  • Pharmaceutical companies
  • Public and private multinational corporations
  • Software companies
  • Telecommunications companies
  • Universities and nonprofit institutions
  • Venture capital funds

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