Patent Drafting & Prosecution

A primary area of our practice is the drafting and worldwide prosecution of patent applications.

Marbury Law has drafted and prosecuted over one thousand U.S. and foreign patent applications for national and international clients, such as Qualcomm, Philips, Time Warner Cable, and PCTel, Inc.

We have experience in drafting and prosecuting patent applications in most technical areas, including the following:

  • Electronics and Telecommunications
    • Antennas
    • Communications Systems and Devices
    • Video On Demand Systems and Methods
    • Digital Image Processing
    • Digital Telephony and VOIP
  • Software, Internet, and Business Methods
    • Computer Architecture
    • Information Systems
    • Internet Enabled Business Methods
    • Computer Scheduling Methods
    • Network and Email Security
    • Medical Billing and Recording Software
  • Cleantech
    • Batteries and Energy Storage Devices
    • Fuel Cells
    • Solar Cells
    • Thermoelectric Devices
    • Power Conditioning and Control Systems
    • Solid State Lighting Devices and Control Systems
    • Smart Windows
  • Nanotechnology
    • Nanoresonators
    • Nanowires and Nanotubes
    • Nano-composite Materials
    • Nano-optical Gas Sensors
    • Nanostructured Catalysts
  • Advanced Materials, Semiconductors and Physics
    • Telecom Semiconductor Devices and Processing
    • Semiconductor Memory Devices and Processing
    • Semiconductor Packaging and Package Testing
    • Photo-Optics and Photolithography
    • Photographic Processes
    • Filters and Material Purification
    • Metallurgy and Ceramic Processing
    • Building Materials
    • Semiconductor Fabrication Equipment
    • Organic Electronics
  • Chemical, Life Sciences, and Biotechnology
    • Bioinformatics
    • Biosensors
    • Polymer Chemistry
    • Gas Separation and Heat Exchange
    • Pharmaceutical Chemistry
    • Biochemistry
    • Cleaning Compositions
  • Mechanical and Medical Devices
    • Ultrasound Medical Devices
    • Ultrasound Catheters
    • Cardiac Stimulation Devices
    • Medical Robotics and Related Systems
    • Toys
    • Food Storage and Equipment
  • Nuclear Engineering and Special Power Systems
    • Nuclear Reactor Components
    • Space Power Systems and Components
    • Nuclear Materials and Applications
    • Special Power Systems and Applications

The Marbury Approach to Patent Drafting and Prosecution

We pride ourselves on seeing the larger business plans of our clients and how patents strategically fit into this business plan, and focusing our patent drafting and prosecution strategies around each client’s business plans. 

However, because Marbury keeps its overhead low, we are able to offer significantly lower billing rates and flat fees than large law firms. 

The lower overhead and billing rates allow our partners sufficient time to either handle a particular client matter by themselves or closely supervise our associates while staying within the client’s drafting and prosecution budget.  Our partners either draft the new patent applications and responses to communications from the various international patent offices, or closely supervise the associate working on the project.  The close supervision includes setting up the patent drafting and prosecution strategy, determining claim scope and interfacing with inventors and USPTO examiners.  We believe that direct partner involvement in every matter enhances the quality of our legal services and ensures a consistent IP strategy across the entire patent portfolio of a given client.

Our Patent Prosecution Professionals

Our attorneys and professional staff have over 80 combined years of patent drafting and prosecution experience.  We have drafted and prosecuted over 1000 U.S. and foreign patent applications. 

A number of our patent prosecution attorneys have practiced with some of the leading AmLaw 100 national and international law firms.  While working at these firms, our attorneys have worked on cutting edge prosecution, litigation and counseling projects, including generating IP strategy and patent portfolio management, bet-the-company patent litigation, and providing IP due diligence and opinions for clients in critical business situations.  They bring this experience to Marbury in drafting and prosecuting patent application that provide a competitive advantage for our clients. 

Our attorneys also include individuals who have previously worked as USPTO patent examiners, and these individuals are able to provide insights into USPTO inner-working and procedure, and accordingly tailor our strategic advice to clients.

Fine-Tuned Patent Prosecution Infrastructure

In addition to our experienced attorneys, Marbury includes a dedicated patent prosecution staff that has over 80 combined years of IP experience.  Marbury’s team of experienced patent prosecution paralegals prepare various USPTO filing forms and information disclosure statementsusing Marbury’s extensive, custom database of form reporting letters and USPTO filing forms.  Since the paralegals utilize this database, and since the paralegal billing rates are significantly lower than those of our attorneys, we are able to pass on the savings to our clients for the preparation of patent forms, information disclosure statements, and routine reporting letters.

Marbury has extensive experience in developing an international patent filing strategy and prosecuting patent applications via the Patent Cooperation Treaty (“PCT”) and outside the U.S. via trusted foreign associate law firms and patent agents.  Marbury has filed over 200 PCT and foreign counterpart patent applications.  Our foreign filing staff has many years of PCT and foreign filing procedural experience.

Marbury also has a dedicated docketing department with decades of patent and trademark docketing experience.  Marbury also has an extensive technology infrastructure and utilizes the popular CPI docketing system. This docketing system allows us to provide secure Internet client access to their files and to generate custom patent portfolio status charts and reports upon clients’ requests.

Strategic Metro D.C. Area Location

We are strategically located in Reston, Virginia, in the heart of Northern Virginia’s suburban Dulles Technology Corridor.  Our office is a short drive from the USPTO’s offices in nearby Northern Virginia suburb of Alexandria.  Our strategic location allows our attorneys to frequently and cost-effectively attend in-person interviews with USPTO examiners and oral hearings before the USPTO Trial and Appeals Board (PTAB).  Such in-person interviews and oral hearings allow our attorneys to better explain the differences between the invention and the prior art, to answer any questions that are posed by the USPTO examiners and PTAB judges, and to alleviate any concerns of the examiners and PTAB judges.

In summary, we enhance the value of our clients’ IP portfolios by providing distinctive and creative “out-of-the box” legal solutions for our clients.