Patents and Patent Prosecution

Hodgson Russ attorneys work with Fortune 500 companies, universities, startups, and individuals to secure protection for their ideas and inventions. We provide comprehensive advice relating to obtaining patent protection for our clients’ technologies at the U.S. Patent and Trademark Office and globally in collaboration with a network of patent attorneys in all major countries.

Our attorneys guide clients through the decision of whether to file for a patent, including an initial discussion and review of the technology, the execution and analysis of prior art searches, and the evaluation of patentability. We prepare and prosecute patent applications before the U.S. Patent and Trademark Office, from drafting applications and responding to actions, to accelerating prosecution and appealing adverse decisions.

Hodgson Russ has extensive experience handling post-issuance proceedings, and we advise clients on using these challenges as a strategic advantage to litigation, and even as a less expensive alternative. We help clients develop strategies and options to address the big picture, not just the immediate need.

We approach complex multi-discipline technologies as a team by bringing together attorneys with relevant technical backgrounds. Our depth and breadth of technical knowledge make Hodgson Russ an attractive firm for clients seeking protection for their technologies—whether simple or complex.

Design Protection

In the crowded marketplace, product design is often the biggest differentiator between a company and its competitors. It is no accident that the top global companies are also design leaders in their respective fields. At Hodgson Russ, we understand that design protection should be a key part of your intellectual property strategy.

Our attorneys take a creative approach to protecting product design by balancing design patent, copyright, and trade dress rights to build a robust intellectual property portfolio for our clients. We help clients protect against knockoffs and protect individual features of a product that may be incorporated into competitors’ products. We also leverage continuing application practice to provide our clients with the flexibility to capture the full scope of their designs.

Hodgson Russ attorneys regularly use design law to help clients obtain protection on products that can be difficult to protect with utility patents. For example, our attorneys routinely use design law to protect “functional” articles, consumables, incremental product improvements, packaging, and software—including animated images, graphic user interfaces, and computer-generated icons.

We also assist clients in protecting their designs globally by working with a network of experienced foreign law firms to coordinate strategies for international design protection—including taking advantage of the Hague System for the International Registration of Industrial Rights. We have the know-how to deal with the variability of foreign design protection schemes to protect our clients’ interests in foreign markets.

Hodgson Russ has been awarded a prestigious "Best Law Firms" Metropolitan Tier 1 ranking by Best Lawyers/U.S. News & World Report in the Patent Law category.

People

Podcasts

  • What Legal Teams in the Semiconductor Industry Can Learn from Barbie

    While the knockoff concerns and “packaging” are a little different, the underlying legal problems are surprisingly similar between the semiconductor and toy industries. Both have extremely complex supply chains. Knockoffs in either space can lead to costly reliability and quality problems. For both, IP is one of the most valuable assets and represents thousands of hours of development and market research. 

    Nathaniel and Elizabeth were joined by Jordan Walbesser, Director of Legal & Business Affairs at Mattel, Inc., to learn more about how the toy industry approaches these issues. They talked about a more friendly approach to licensing, working upstream in the supply chain, RFPs, and how to protect products when patent protection isn’t appropriate (or isn’t possible). On the last point, Jordan explained that product quality and customer service can protect you when patent protection is limited – whether that cost-sensitive customer is a parent shopping for an upcoming birthday or a massive multinational company.

  • Litigation Finance: Impact to the Semiconductor Space

    Cost can be a limiting factor (or even THE limiting factor) when considering a patent infringement lawsuit. Staying under a million dollars in legal spending can be considered a victory of sorts for complex matters. That is a huge impediment to small companies and entrepreneurs. On this episode, we explore an alternative that may help level the playing field across high-tech industries: litigation funding. Nathaniel Lucek and Elizabeth Morris are joined by Justin Maleson from Longford Capital to discuss how litigation funding works and what makes an interesting case for a litigation funder.

  • Patent Trolls in the World of Semiconductors

    Business executives and patent practitioners tend to have similar negative feelings around patent trolls and their letters offering to license sometimes dubious IP. These patent troll entities tend to file a large volume of nuisance lawsuits, which increases legal costs for companies. No industry is immune and these lawsuits impact companies at all levels of semiconductor manufacturing. But besides their ultimate goal of making money using their collection of patents, how do these patent trolls operate? Where do they find their targets? And, most importantly, what should you do when you receive a letter from a patent troll? Nathaniel and Elizabeth are joined on this episode by Pat Muffo, who is a patent attorney and IP litigator. Pat shares his insights and experiences gained from studying, writing about, and battling with patent trolls.

  • Changes to Filing US Patent Applications: The USPTO’s DOCX Program

    The process to file US patent applications online has been almost the same for the past 10-15 years. That filing process finally changed in January 2024 when the USPTO started requiring new U.S. nonprovisional patent applications be uploaded as DOCX files to avoid a surcharge. The DOCX requirement, which was postponed repeatedly, caused an uproar in certain corners of the U.S. IP world. But what does the DOCX requirement cover and what will the impact be? Nathaniel and Elizabeth are joined by John DiMaio, a patent attorney at Hodgson Russ, to figure out if this new requirement harms applicant rights or if the risks are exaggerated.

  • Another Option to Protect Spares: Design Patents for Consumable Parts

    The spares business is an essential revenue stream for semiconductor capital equipment manufacturers. While these components typically are not easy to protect with a utility patent application, many of them are ideal for design patent protection. Nathaniel Lucek and Elizabeth Morris were joined by Charles Rauch, head of the design patent practice at Hodgson Russ LLP, to talk about the benefits of design patent protection. Charlie explained how design patents can be used to protect components like graphite shields or end effector components. Charlie also explained how design patents are enforced against third party manufacturers.

  • Increasing Invention Disclosures from Underrepresented Inventors: The “She Invents” Program at Western Digital

    Companies in the semiconductor industry need to gather invention disclosures from all corners of the company to help maintain a competitive advantage. Yet studies have shown that participation among different groups of inventors can be uneven, which leads to underrepresentation by certain groups. For example, the USPTO has shown that women are 20% of the technical workforce, but only 10% of inventors. On this episode, we are joined by Sabra Truesdale to learn about the “She Invents” program at Western Digital, which demonstrated an 88% increase in female inventor participation in its patenting process. Sabra explains some of the causes in underparticipation by women inventors and how the Western Digital program addresses these causes.

  • Artificial Intelligence and the Law: Rise of the Machine Inventor

    We know that the advance of artificial intelligence absolutely will not stop (it was in a movie). To assess where AI may go with respect to law, Nathaniel Lucek and Elizabeth Morris spoke with David Sanker, Ph.D., who works on patent matters related to machine learning. The group discussed patent inventorship with AI, patentability of machine learning, AI assistance with patent drafting and patent examination, and machine learning algorithms for job candidate interviews.

  • Unitary Patent and Unified Patent Court: What Patent Law Changes in Europe Mean for Semiconductor Innovation

    After years of waiting, Europe is finally experiencing big changes with its Unitary Patent (UP) and new Unified Patent Court (UPC). The UPC will be open for business in June 2023 and will dramatically change how patents are litigated in Europe. The cost structure and benefits for a UP are already being analyzed for pending patent applications in Europe. But what does this mean for semiconductor innovation? Nathaniel Lucek and Elizabeth Morris are joined by Paul Keane, a European Patent Attorney at FRKelly in Dublin, to learn how these changes will affect companies in the semiconductor space and to discuss initial strategies for patent applicants that are considering their options.

  • Designing a Patent Strategy for Enforcement

    For such an unassuming document, patents can be hugely important. Whether you’re an inventor who just developed the next “latest and greatest” idea, or a company that helps those inventors get their product out in to distribution, patenting is an important part of the process. It can literally make or break your opportunities for growth and business.

    In this episode of The Semi Interesting Podcast, Hodgson Russ LLP Partner Nathaniel Lucek and Pure Storage’s Legal Director of IP & Product Elizabeth Morris dive in to the patenting process. They’ll explain why designing a patent strategy tends to work best when it’s done as a team effort, how to be ready to throw elbows when competitors start crowding nearby, as well as why thinking bigger really is better when it comes to patenting in the semiconductor industry.

  • Inventing isn’t just for people with PhD’s

    In Episode Two of “The Semi Interesting Podcast,” we’re talking about one of the toughest issues facing any company – pulling in quality talent, and retaining it. In an industry as small (literally and figuratively) as that of semiconductors, that task can be daunting, to say the least. As difficult as it is to cultivate new talent, it’s equally as tough for those with talent to navigate the intellectual property patenting process. In this episode, Nathaniel Lucek and Elizabeth Morris take a look at how companies can break down the barriers for inventors and make it easier for them to get their ideas into the industry.

  • Generating Engagement with Inventors

    You’ve probably heard the saying, “It’s hard to find good help these days.” No matter what industry you’re working in, that saying almost always rings true. But once you do manage to find that good help – or inventors, in the case of the semiconductor industry – how do you retain it? Enter, the Semi Interesting Podcast Episode One.

    In the premiere episode, Hodgson Russ LLP Partner Nathaniel Lucek and Pure Storage’s Legal Director of IP & Product Elizabeth Morris take a look at strategies on how to generate engagement with inventors. As they explain, it’s not always about the monetary reward when it comes to encouraging inventors.

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Patent Preparation & Prosecution / News & Insights