Davidson, Davidson & Kappel, LLC

Patent Procurement

DDK has been involved in the patenting of important technological advances as well as commercially important inventions at different technological levels, enabling our clients to create/protect their market share, and has assisted start-up companies in building strong patent portfolios which have enabled these companies to attract investors and/or licensees.

We have the technical expertise to understand sophisticated technologies, and the legal expertise to provide technically sound yet creative approaches for protecting our clients' inventions in a wide variety of technical fields including large industrial machinery, simple mechanical devices, new chemical entities, pharmaceutical formulations, electrical and computer-related technologies (from hardware to software to databases), polymer chemistry, organic or inorganic chemistry, biopharmaceuticals, biotechnology, data communication, electronic control systems, medical and biomedical devices, and agricultural and food technologies for our clients.

One area of particular expertise is pharmaceuticals. Our staff includes attorneys who have pharmaceutical degrees and expertise in the medical and pharmaceutical arts. DDK has helped pharmaceutical companies obtain patent protection for new drug products, controlled release formulations, new chemical entities, and new methods of medical treatment. Our expertise in the pharmaceutical sciences enables us to counsel our clients well beyond traditional advice and services commonly available.

Patent Post-Grant Proceedings

DDK’s attorneys have substantial experience with the recently created procedures of the America Invents Act (AIA), including Post-Grant Review (PGR), Inter Partes Review (IPR), and Supplemental Examination. Our attorneys also have years of experience participating in the traditional Reexamination and Reissue procedures. We have both challenged and defended patents under these proceeding. This extensive experience allows our clients to defend and strengthen their own patents, and to attack the validity of their competitor’s patents.

Patent Opinions

DDK advises and assists our clients in evaluating their ability to commercialize their technology free and clear of third party patents. The firm has extensive experience in investigating and evaluating the scope and validity of patents, and considering the design of our clients from both a patentability and non-infringement point of view.

We are also experienced in evaluating the scope of protection afforded by our clients' own patents, and in investigating and evaluating the possible infringement of those patents by the products and/or activities of third parties.

We are frequently called upon to evaluate the patent position of our clients' competitors, and to advise our clients on how to proceed in view of their competitor's patent positions. Our goal is to work closely with the management, marketing, and technical personnel of our clients to better anticipate their needs and problems and also to create a comprehensive patent strategy to meet our clients' individual needs.

With respect to pharmaceuticals, DDK is experienced in evaluating our clients' positions and preparing patent certifications/notifications as part of our clients' preparation and filing of Abbreviated New Drug Applications (ANDA's) and Paper New Drug Applications (NDA's filed under §505(b)(2)).

Litigation

At DDK, it is our goal to find solutions which enable our clients to avoid the costs associated with litigation. However, there are times when disputes cannot be readily resolved and the only alternative is to turn to the courts.

As a full service intellectual property law firm, DDK actively practices before the federal and state courts including the Court of Appeals for the Federal Circuit, and the International Trademark Commission. Our litigators have a broad range of litigation experience in relating to patent, trademark and copyright, unfair competition, and related issues. We work quickly and efficiently to protect the rights of our clients in courts and have been successful in obtaining (and defending) preliminary injunction motions in all areas of intellectual property. We pride ourselves on our record of obtaining excellent results through both litigated verdict and negotiated settlement, at a fair price to our clients. We have also on many occasions acted as co-counsel or assisted other firms in their litigation of patents.

ANDA Litigation

DDK handles and supports Hatch-Waxman (“ANDA”) litigations. With its smaller boutique footprint, DDK can more efficiently serve its clients’ needs in ANDA litigations, and DDK’s expertise in pharmaceuticals enables it to quickly understand the scientific issues and efficiently arrive at successful litigation strategies. When the need arises, DDK represents its litigation clients in tandem with a general practice firm, thereby bringing further weight (and support) to bear on the legal issues that arise. For smaller ANDA litigations, DDK often handles the litigation on its own.

Trademarks

The name chosen for a product, a business or a service can have a profound effect on the success of a business. Selecting a name without adequate investigation can have a devastating effect on a business.

At DDK, we have extensive experience in all phases of U.S. and foreign trademark practice, including prosecution, licensing, due diligence and litigation (including "ex parte" and "inter partes" trademark proceedings). We have worked with clients from a broad range of industries, and have particular expertise in advising clients and prosecuting trademarks in pharmaceutical and internet and e-commerce arenas.

Our attorneys actively assist our clients in choosing their trademarks, service marks and trade names. Our database capabilities enable us to perform in-house screening searches to assist in the initial selection of the mark or name. We obtain and analyze the results of sophisticated mark and design searches. We file and prosecute federal, state and foreign applications for trademark and service mark registrations. We actively engage in the policing of our client's trademarks and monitoring competitor's trademark activities, both in the United States and abroad, and we have extensive experience in opposition and cancellation proceedings.

Tech Transfers / IPOs

DDK’s attorneys advise and assist our clients in their acquisitions, licensing and sales of all intellectual property such as patents and trademarks. The firm has extensive experience in drafting agreements with third parties, negotiating the terms thereof, interpreting the terms of existing agreements, and evaluating the technology/intellectual property rights in question. On the other hand, we are often asked to provide counsel to corporate law firms concerning intellectual property aspects of technology licenses.

We are experienced in providing our clients with the level of due diligence required for a particular situation. We are often asked to evaluate a technology and a patent position on short notice while our client is in the midst of negotiating or completing negotiations with a third party. Our attorneys are available for providing our clients with updates with respect to our progress and evaluation of the situation in question. Often, we have interim meetings with our clients to identify and address issues which arise during our evaluation. As a result of our close working relationship with our clients, we are able to provide an evaluation quickly and at a cost which we believe reflects our efficiency.

DDK has experience in representing its clients concerning intellectual property evaluation in their dealings with venture capital firms, bankers and their legal representatives during acquisition of financing, Initial Public Offerings, etc.