Patent Prosecution

Patent Prosecution


Schiff Hardin’s patent prosecution practice develops long-term relationships with clients around the world to understand business objectives and protect valuable intellectual property assets.  We are honored to have retained many of our clients for decades, building long standing relationships and developing a strategic understanding of our clients’ goals.  

We provide innovative and effective U.S. and worldwide patent procurement strategies for clients in nearly every industry sector, including electronics, semiconductors, automotive, autonomous driving systems, machine vision, wireless telecommunications, medical imaging and devices, computer software, and business methods.

Our patent prosecution professionals represent a large number of U.S. and international clients ranging from multinational corporations and universities to start-ups and individual inventors, providing each client with the exceptional personal service and attention for which we are known.

Protecting Innovation

Our patent prosecution attorneys work closely with our clients to help identify, build, protect, and manage innovations, as well as develop and strengthen their short-term and long-term business plans and objectives. We also help clients implement practical, cost-effective ways to protect intellectual property rights, including through design patents. We are adept in providing a wide variety of services to ensure that our clients have the tools and support they need to succeed in a highly competitive marketplace.

Our Services Include

  • U.S. and international patent prosecution services and counseling
  • Performing patent portfolio audits
  • Auditing and developing in-house patent procurement procedures
  • Conducting in-house patent prosecution training sessions and seminars
  • Providing patentability, validity, and freedom-to-operate opinions
  • Creating and driving patent monetization and licensing opportunities
  • Conducting due diligence on patent assets related to mergers and acquisitions and other transactions.

Providing Perspective

We help our clients on a level that is more comprehensive than merely securing a patent. In addition to assisting our clients with their patent licensing and transactional needs, our patent litigation teams are ready to assist where needed and as appropriate. They coordinate and implement efforts in traditional litigation and America Invents Act procedures, including post-grant review, derivation proceedings, inter partes review, and supplemental examination. As a result, our attorneys possess a deeper understanding of the broader implications of a patent, which equips them to build patent assets that will withstand the tests of time and the marketplace.

Providing Depth and Breadth

The attorneys in Schiff’s patent prosecution practice hold degrees in science or engineering and includes members who have worked in our clients’ industries and/or were former patent examiners prior to practicing law. Our attorneys are also actively involved in organizations that influence patent law legislation and implementation.

Our team’s attorneys regularly advise clients on how issues such as patentable subject matter, written description, enablement, novelty, obviousness, double patenting, and estoppel, are handled before the patent offices and courts.

Our patent prosecution team has extensive experience in procuring and enforcing patents in the U.S. and worldwide. We have established a cost-effective network of experienced foreign counsel to assist clients in international patent procurement, management, and enforcement.