Practice Areas

Patent Drafting and Prosecution

Davidson Kappel’s attorneys have helped our clients obtain thousands of U.S. patents covering important technological advances as well as commercially important inventions at different technological levels, enabling our clients to enhance market share. We have assisted start-up companies in building strong patent portfolios which have enabled these companies to attract investors and 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 technologies [insert link to technologies section]. We are skilled at interviewing with patent examiners, and will appeal rejections of patent application to the PTAB when it is in the best interests of our clients.

Patent Post-Grant Proceedings

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


We are adept at finding 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, our attorneys litigate intellectual property disputes before the federal and state courts including the Court of Appeals for the Federal Circuit, and the International Trademark Commission. 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 have also on many occasions acted as co-counsel or assisted other firms in their litigation of patents, including Hatch-Waxman (“ANDA”) litigations, where our expertise in pharmaceuticals enables us to quickly understand the scientific issues and efficiently arrive at successful litigation strategies. When the need arises, we represent our litigation clients in tandem with general practice firms, thereby bringing further weight (and support) to bear on the legal issues that arise.

Patent Opinions

Our attorneys advise and assist our clients in evaluating their ability to commercialize their technology free and clear of third party patents. We have extensive experience in investigating and evaluating the scope and validity of patents, and considering designs of our clients from both a patentability and non-infringement point of view.

We also are 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.
With respect to pharmaceuticals, our attorneys are 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)).


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.

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

Davidson Kappel’s attorneys advise and assist our clients in their acquisition, 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.We also counsel corporate law firms concerning intellectual property aspects of technology licenses.
Davidson Kappel’s attorneys represent 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.