Patent Preparation & Prosecution
CONTACTS
Jason Perilla
Partner, Atlanta
j.perilla@pkhip.com
Thomas Hildebrandt
Partner, Atlanta
t.hildebrandt@pkhip.com
Protecting innovation from concept through patent issuance.
A strong patent portfolio begins long before a patent is granted. Effective patent preparation and prosecution require an understanding of the technology, the client's business objectives, the competitive landscape, and how patent claims may ultimately be interpreted and enforced.
At Perilla Knox & Hildebrandt, our patent attorneys work with companies, inventors, and in-house legal teams to develop and protect innovations across a broad range of technologies. We prepare and prosecute U.S. and international patent applications with an emphasis on obtaining commercially meaningful protection while building portfolios that support our clients' long-term business objectives.
Our attorneys combine legal experience with technical backgrounds spanning electrical engineering, computer engineering, software, telecommunications, artificial intelligence, semiconductors, mechanical systems, and other technologies. That technical foundation allows us to work directly with inventors and engineers to understand complex innovations and translate them into effective patent strategies.
Patent strategies built around the business.
Patent protection is most valuable when it reflects how a company actually creates and captures value. We work with clients to identify innovations worth protecting, evaluate potential filing strategies, and develop patent claims directed toward commercially significant aspects of their technologies.
Our attorneys consider not only the invention as it exists today, but also potential product developments, competitor design-arounds, alternative implementations, and future enforcement considerations. Where appropriate, we develop layered claim strategies addressing different aspects and levels of an invention to provide meaningful protection as technologies and markets evolve.
For clients with larger portfolios, we also help establish prosecution strategies and processes designed to maintain consistency, control costs, and direct resources toward patents most important to the business.
Technical understanding. Effective patent drafting.
Patent applications involving sophisticated technologies require attorneys who can understand the underlying engineering and communicate effectively with inventors. Our attorneys regularly prepare applications involving artificial intelligence and machine learning, software and computer technologies, telecommunications and wireless systems, semiconductors, electronics, mechanical and electromechanical systems, manufacturing technologies, medical technologies, and consumer products.
We work closely with inventors to identify the inventive concepts underlying a technology, explore alternative embodiments, and develop specifications and claims designed to support both immediate prosecution objectives and future portfolio development.
Our drafting approach also considers potential enforcement. Clear descriptions, thoughtful terminology, appropriate claim scope, and disclosure of meaningful alternatives can become particularly important years later when a patent is asserted, challenged, licensed, or evaluated in a transaction.
Strategic prosecution before the USPTO.
Obtaining a patent frequently requires navigating multiple rounds of examination and determining when to amend claims, present legal or technical arguments, conduct an examiner interview, appeal an adverse decision, or pursue different claim scope in a continuing application.
We represent clients throughout prosecution before the U.S. Patent and Trademark Office, including responses to Office Actions, examiner interviews, restriction requirements, appeals, continuation practice, Requests for Continued Examination, and other prosecution matters.
Our attorneys focus on obtaining commercially useful claims rather than simply securing a patent. We evaluate cited prior art, prosecution history, potential claim amendments, and the client's broader portfolio so that decisions made during examination support both allowance and the long-term value of the resulting patent rights.
Building U.S. and international patent portfolios.
Innovative businesses increasingly compete in global markets. We help clients develop international filing strategies based on where products are developed, manufactured, sold, licensed, and likely to face competition.
Our attorneys prepare and manage Patent Cooperation Treaty (PCT) applications and coordinate national and regional patent prosecution through foreign counsel around the world. We work with clients to determine where patent protection provides meaningful commercial value while considering filing costs, enforcement environments, competitive activity, and overall portfolio budgets.
We also manage continuing U.S. prosecution through continuation, divisional, and continuation-in-part applications where appropriate, allowing clients to pursue additional claim scope as technologies and commercial priorities develop.
Our Clients.
We represent clients ranging from individual inventors and emerging technology companies to established businesses and multinational corporations. Our attorneys regularly work directly with inventors, engineering teams, executives, and in-house counsel to develop patent portfolios that support products, licensing programs, investment, transactions, competitive positioning, and enforcement.
We recognize that patent prosecution is an investment. Our objective is not simply to accumulate patent filings, but to help clients develop patent rights that provide meaningful commercial value. We work with clients to balance claim scope, prosecution strategy, portfolio coverage, timing, and cost so that their patent programs remain aligned with their broader business objectives.
Our Patent Preparation and Prosecution Services
-
We work with clients to identify patentable innovations and develop filing strategies aligned with their products, technology roadmaps, competitive landscape, and business objectives. Our attorneys help determine what to protect, when to file, and how to pursue claim scope that provides meaningful commercial value.
-
We prepare and prosecute U.S. utility patent applications across a broad range of technologies. Our attorneys work directly with inventors and technical teams to understand the innovation, develop comprehensive specifications, and pursue claims designed to protect commercially important aspects of the technology.
-
We help clients protect the ornamental appearance of products, components, graphical user interfaces, and other eligible designs through U.S. design patents. Our attorneys advise on drawing strategy, claim scope, related applications, and prosecution before the USPTO to develop effective design patent portfolios.
-
We evaluate inventions against relevant patents, published applications, and other prior art to assess potential patentability and inform filing strategy. These analyses can help clients identify meaningful points of distinction, refine proposed claim scope, and make informed decisions about whether to invest in patent protection.
-
We prepare responses to Office Actions addressing prior-art rejections, eligibility issues, written-description and enablement requirements, claim clarity, and other examination issues. Our approach focuses on advancing prosecution while preserving commercially valuable claim scope and avoiding unnecessary limitations where possible.
-
Examiner interviews can provide an efficient way to clarify disputed issues, understand an Examiner's position, and explore potential paths toward allowance. We regularly conduct interviews with USPTO Examiners and use those discussions strategically in conjunction with written responses and claim amendments.
-
Continuation and divisional applications allow patent owners to pursue additional claim scope and protect different aspects of important technologies. We develop continuing-application strategies designed to expand portfolio coverage, address competitor activity, and preserve opportunities for additional protection as products and markets evolve.
-
When prosecution reaches an impasse, we represent applicants in appeals before the Patent Trial and Appeal Board (PTAB). Our attorneys evaluate whether appeal provides the appropriate path forward and develop focused legal and technical arguments directed to the issues underlying the Examiner's rejection.
-
We prepare and manage Patent Cooperation Treaty (PCT) applications and advise clients on international filing strategies. We help clients preserve opportunities for patent protection across multiple jurisdictions while considering commercial markets, manufacturing locations, competitors, enforcement considerations, and cost.
-
We coordinate patent prosecution with trusted foreign counsel in jurisdictions around the world. Our attorneys manage instructions, review proposed responses and amendments, and work to maintain consistency between U.S. and foreign prosecution while accounting for jurisdiction-specific patent requirements.
-
We help clients build and manage patent portfolios that support their broader business objectives. Our attorneys evaluate portfolio coverage, identify potential gaps and filing opportunities, coordinate related patent families, and help prioritize prosecution resources based on the commercial importance of the underlying technologies.