Patent Prosecution - Practice Areas - Fitzpatrick, Cella, Harper & Scinto

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Our firm has unparalleled experience in preparing and prosecuting patent applications in the United States Patent and Trademark Office (PTO). In the last 10 years alone, our firm has prosecuted over 20,000 patents to issuance. With over 50 experienced attorneys, including many former PTO Examiners, our prosecution group has successfully prosecuted patents in all technologies including the electronic, chemical, biotechnology and mechanical arts for clients ranging from Fortune 100 corporations to internet start-ups.

We take pride in preparing patent applications which will help our clients accomplish their real world business objectives. For example, our broad litigation and licensing experience are invaluable in obtaining patents that can be effectively licensed or enforced against infringers. We also advise on the strategic aspects of patent prosecution, helping our clients develop an appropriate and cost-effective patent portfolios.

Our patent prosecution practice includes specialized and sophisticated areas that many smaller firms rarely handle. For example, our staff includes several attorneys who are expert in interference procedures, i.e. the inter partes procedure used in the PTO to determine priority among competing applications to patent the same invention. Similarly, we have attorneys with substantial experience in prosecuting reissue applications and reexaminations of issued United States patents.

Related Information

Publications

The Supreme Court's Decision in Bilski v Kappos: Machine-Or-Transformation Is Not The Sole Test, But Claims Still Found Unpatentable Fitzpatrick Case Update
June 28, 2010

The Expanded Use of Inter partes Reexamination Fitzpatrick, Cella, Harper & Scinto’s Patent Prosecution Update Volume 1, Issue 1
June 9, 2010

Fitzpatrick, Cella, Harper & Scinto's Patent Prosecution Update Volume 1, Issue 1
June 9, 2010

The Future of Means-Plus-Function Claiming for Computer-Implemented Processes Bloomberg Law Reports
June 7, 2010

Supporting Patentability With Commercial Success Law 360
September 24, 2009

Make your IP work harder for you IP Review
Summer 2009

Patent Infringement: The Return of the Opinion of Counsel? Bloomberg Corporate Law Journal
2009

Five Ways to Improve Your Company's Bottom Line Through Proactive Intellectual Property Management SGMA
February 12, 2009

Digital Jack-of-All-Trades IP Law & Business Almanac
December, 2007

High court to rule on territorial reach of patents The National Law Journal
January 22, 2007

Patent Specification Drafting, in Fundamentals of Patent Prosecution 2006: A Boot Camp for Claim Drafting & Amendment Writing Practising Law Institute
August 2006

An Introduction to Claim Drafting Fundamentals of Patent Prosecution 2006: A Boot Camp for Claim Drafting & Amendment Writing
August 2006

Patent's Meaning Not Found in Dictionary Executive Counsel
January/February 2006

Corporate Officers Beware: Will Corporate Veils Preclude Personal Liability For Patent Infringement? Intellectual Property Today
October 2005

Effect of 'Knorr-Bremse' on Decisions to Rely on Opinion of Counsel The New York Law Journal
May 12, 2005

The Patent Quality Assistance Act of 2004 The New York Law Journal
February 17, 2005

EPO's Differing Standards The National Law Journal
October 25, 2004

Patent Notice Letters: Manage With Care General Counsel New York
October 12, 2004

Staking A Claim In The Nanoworld Corporate Counsel
June 2004

Amgen v. Hoechst Marion Roussel: The Written Description Standard in Biotechnology Patents Biotechnology Law Report
October 2003

Federal Circuit Leaves Open the Question of Which Materiality Standard Should Apply in Inequitable Conduct Determinations Corporate Counsel
October 2003

IP for the Hi-Tech Industry Building and Enforcing Intellectual Property Value: An International Guide for the Boardroom 2003
June 2003

Events

12th Advanced Forum on Biotech Patents Conference American Conference Institute
November 30 - December 1, 2010

Advanced Patent Prosecution Workshop 2010: Claim Drafting & Amendment Writing Practicing Law Institute
July 26-27, 2010

Beyond Bilski: The Future of Patent-Eligible Processes Law 360
June 30, 2010

Follow On Biologics Conference American Conference Institute
June 21-22, 2010

Fundamentals of Patent Prosecution 2010: A Boot Camp for Claim Drafting & Amendment Writing PLI
June 16-18th, 2010

Managing IP Budgets: Selectively Using Outside Counsel and Other Resources to Efficiently Enhance and Enforce IP Portfolios Corporate IP Institute Intellectual Property Conference
November 3, 2009

Corporate IP Counsel Summit World Research Group
April 29, 2009

Global Patent Strategies: Protecting Innovation in a World of Change AIPLA Mid Winter Institute
January 30, 2009

Highlighting In-Depth Interference Practices, Patent Life Cycle Management and Litigation Tactics IQPC's 2nd Annual Patent Strategies for the Pharma, Biotech and Medical Device Industries
July 15-16, 2008

Recent US Case Law Developments Affecting Primary and Secondary Pharma Patents C5's 7th Annual Pharma Patent Lifecycles Conference
June 27, 2008

Providing Quick and Efficient Due Diligence Reviews to Enhance the Commercial Value of Licensing and Transactions Worldwide Business Research’s PharmaBiotech IP Summit
May 30, 2008

Best Practices for Restriction Practice & the New Rules on Alternative Claims AIPLA Spring Meeting
May 14, 2008

Brand v. Miller: Standard of Review of Factual Findings Made by the PTO Board of Appeals 24th Annual Joint Patent Practice Seminar
April 20, 2008

Patent Drafting Considerations In Light Of Some Notable Court Interpretations Of The Written Description Requirement 16th Annual Advanced Patent Prosecution Workshop
July 2007

Preventing Adverse Findings From Terminating the Deal Technology IP Due Diligence Conference
June 21, 2007

The Use of Reexamination As a Litigation Tactic AIPLA 2007 Spring Meeting
May 9-11, 2007

In re Nuijten, Patentable Subject Matter Under 35 U.S.C. § 101 2007 NYIPLA Joint Patent Practice Seminar
May 9, 2007

Recent Judicial Developments in U.S. Patent Law C5 6th Annual Pharmaceutical Patent Lifecycles Conference
January 23, 2007

Selected Topics in Advanced Patent Prosecution 16th Annual Advanced Patent Prosecution Workshop
November 2006

U.S. Claim Construction Since Phillips Intellectual Property Institute of Canada, 80th Annual Meeting
September 28, 2006

Patent Opinions of Counsel: Practical Decision Points in an Evolving Environment AIPLA Online Seminar
July 29, 2005

Protecting, Defending and Enforcing Your Patents Patent Strategies in Deals 2004
November 17, 2004

Interesting Developments in the Monsanto v. Schmeiser Decision: Patentable Subject Matter and Damages Intellectual Property Institute of Canada, 78th Annual Meeting
October 14-16, 2004

Putting Post-Grant Patent Opposition On Trial: A Litigator's Viewpoint 2004 AIPLA Spring Meeting
May 13-15, 2004

Claim Construction-The Ordinary Meaning of Terms As Revealed By Dictionaries and Learned Treatises 20th Annual Joint Patent Practice Seminar
April 22, 2004

Japan's Article 35- Developments in Employees Remuneration Of Company-Owned Patents 20th Annual Joint Patent Practice Seminar
April 22, 2004

Patent Law and Issues of Professionalism For the Engineer Virginia Polytechnic Institute and State University
February 26, 2004

Recent Reforms in PCT Practice New York Intellectual Property Law Association Fall CLE Program
November 21, 2003

Compliance with the Written Description Requirement AIPLA's Advanced Patent Prosecution Training Seminar
June 12, 2003

Recent Developments in Inter Partes Reexamination Practice NYIPLA's 19th Annual Joint Seminar Program, Patent Practice Update
May 8, 2003

Update: Written Description and Enablement Issues NYIPLA CLE Luncheon
April 25, 2003

Whether Government Patent Offices Should Contract With Private Companies To Search The Prior Art International Federation of Intellectual Property Attorneys and the American Intellectual Property Law Association Colloquium
April 8-9, 2003

Claim Construction, Anticipation and Section 112 Issues NYIPLA CLE Luncheon
March 28, 2003

Exploring the Need for Harmonization of Law: Impending Impact of Globalization 2001 ABA Annual Meeting
August 4, 2001

Is it Good Lawyering to Write Bad Claims? ABA Section of IP Law
April 2001

In The News

Blind Spots: Hidden Risks in Patent Portfolio Management Counsel to Counsel
Summer 2010

Fitzpatrick Listed as a Band 1 Intellectual Property Firm in Chambers USA 2010 Chambers USA
June, 2010

Fitzpatrick, Cella, Harper & Scinto Named the 2010 “Best US IP Law Firm” International Legal Alliance Summit and Awards
June 8, 2010

Prolonging Patent: Under Wyeth, Many Patent Terms Will Be Recalculated Inside Counsel
April 2010

Top Patent Firms Intellectual Property Today
March 2010

ACQ Law Awards ACQ Finance Magazine
November 2009

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2010 Best Lawyers in America 2010
October 2009

Nine Fitzpatrick Partners Named As Top New York Intellectual Property Litigators in the 2009 issue of Super Lawyers: New York Metro Edition Super Lawyers: New York Metro Edition
October 2009

Respond Carefully to Notification of Adversely Held Patents Counsel to Counsel
May 2009

Fitzpatrick Listed as a Band 1 Intellectual Property Firm in Chambers USA 2009 Chambers USA 2009
June 2009

Fitzpatrick Named as Leading New York Firm Practical Law Company's Which Lawyer? Yearbook
April 2009

Managing Intellectual Property North American IP Awards Managing Intellectual Property
March 30, 2009

Fitzpatrick Ranked in Top Five in IP Today's Annual Survey Intellectual Property Today
March 2009

Fitzpatrick Listed as a Tier 1 Intellectual Property Firm in Chambers Global 2009 Chambers Global 2009
January 2009

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2009 Best Lawyers in America 2009
October 2008

Nine Fitzpatrick Partners Named As Top New York Intellectual Property Litigators in the 2008 issue of Super Lawyers: New York Metro Edition Super Lawyers: New York Metro Edition 2008
October 2008

Fitzpatrick Ranked in Top Five in IP Today's Annual Survey Intellectual Property Today
March 2008

Fitzpatrick Listed as a Tier 1 Intellectual Property Firm in Chambers Global 2008 Chambers Global 2008
January 2008

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2008 Best Lawyers in America 2008
October 2007

Nine Fitzpatrick Partners Named As Top New York Intellectual Property Litigators in the 2007 issue of Super Lawyers: New York Metro Edition Super Lawyers: New York Metro Edition 2007
September 2007

Fitzpatrick Attorneys Featured in New York Magazine Profile New York Magazine
July 2-9, 2007

Fitzpatrick Named as Leading New York Firm PLC Which Lawyer Yearbook 2007
May 2007

Fitzpatrick Ranked Top Patent Firm Intellectual Property Today
March 2007

Fitzpatrick Attorneys Featured in 2007 Who's Who Legal: Patent Who's Who Legal: Patent
2007

Fitzpatrick Cella Listed Among the Top 5 Firms for Utility Patents Granted in 2006 United States Patent and Trademark Office
February 2007

Fitzpatrick Listed as Tier 1 Intellectual Property Firm in Chambers Global 2007 Chambers Global 2007
January 2007

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2007 Best Lawyers in America 2007
October 2006

Two Fitzpatrick Lawyers Named Best of the Best 2006 The US Best of the Best
July 2006

Fitzpatrick Named as a Leading Firm in Chambers Global 2006 Chambers Global The World's Leading Lawyers for Business
2006

Fitzpatrick Ranked Top Patent Firm Intellectual Property Today
March 2006

Fitzpatrick Ranked #7 Most Diverse Law Firm in New York The New York Law Journal's Book of Lists 2006
March 2006

Fitzpatrick Named as Leading New York Firm PLC Which Lawyer Yearbook 2006
February 2006

Fitzpatrick Client Canon Inc. Ranked #2 In USPTO Top 10 Patents ListJanuary 10, 2006

Fitzpatrick Named as a Leading Firm in Chambers Global 2006 Chambers Global
2006

Two New Fitzpatrick Partners Named in 2006January 1, 2006

Fitzpatrick Ranked Leading Firm in PLC Which Lawyer 2005/2006 PLC Which Lawyer 2005/2006
December 2005

Eight Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2006, The Most Listed for IP in New York Best Lawyers in America 2006
September 2005

Fitzpatrick Ranked in Band 1 in 2005 Chambers USA Survey Chambers USA: America's Leading Lawyers for Business
May 25, 2005

Seven Fitzpatrick Lawyers Included on List of Best IP Lawyers in America Best Lawyers in America
2005-2006

Fitzpatrick Receives 2004 MCCA Thomas L. Sager AwardNovember/December 2004

Fitzpatrick Ranked #4 In 2004 Diversity ScorecardJune 2004

Fitzpatrick Ranked as Leading Firm in 2004 Chambers USA Survey Chambers USA: Leading Business Lawyers
April 21, 2004

Fitzpatrick Ranked As Top Patent Firm in 2004 Intellectual Property Today, 2004
March 1, 2004

Fitzpatrick Highly Ranked in Patent Quality Survey IP Law & Business
March 2004

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America Best Lawyers in America
2003-2004

Fitzpatrick Elects Three New PartnersJanuary 1, 2004

Fitzpatrick Ranked # 10 In 2002 Diversity ScorecardDecember 2003

Fitzpatrick Ranked Top 5 Patent Firm Intellectual Property Today
March 2003

Fitzpatrick Ranked as Top Patent Prosecution Firm IP Law & Business
March 2003

Fitzpatrick Ranked As A Top U.S. Intellectual Property Law Firm Chambers Global: World's Leading Lawyers 2003 and Chambers USA: America's Leading Business Lawyers
2003-2004

Three New Fitzpatrick Partners Named 2002January 2002

Fitzpatrick Client Canon, Inc. Ranked #2 In USPTO Top 10 Patents List2003

Six Fitzpatrick Lawyers Ranked as World's Leading Patent Experts 2003 Guide to the World's Leading Patent Law Experts
2003

Fitzpatrick Receives 2002 MCCA Thomas L. Sager AwardOctober 16, 2002

Fitzpatrick Ranked #1 for Biotech Patent Quality IP Law & Business
June 2002

Fitzpatrick, Cella Recognized for 20 Years of Service to Improving JusticeDecember 13, 2001

Four Partners Nominated to the International Who's Who of Business Lawyers2001

California Office Relocates to Larger Quarters2001

Charles P. Baker Elected as Chair of the American Bar Association's Intellectual Property Law Section2001