Lempia Summerfield Katz (LSK) leverages significant experience in “large firm” practice in conjunction with the flexibility and value of a small firm structure to provide high quality work product and exceptional client service. We work with a wide range of clients, including Fortune 500 companies, start-ups, individual inventors, and universities. LSK attorneys and agents are dedicated to providing our clients with the best value for high quality intellectual property protection. We manage costs by aligning client needs with a team of highly qualified attorneys and agents with appropriate levels of experience and billing rates.
LSK specializes in patent application preparation and prosecution, both before the United States Patent and Trademark Office (USPTO) and outside of the United States.
LSK attorneys regularly work with clients to develop strategies for protecting intellectual property. We participate in reviews of our clients’ technology and conduct patent harvesting sessions with potential inventors to identify and develop subject matter for which patent protection may be appropriate. For clients who have just begun to develop IP portfolios, we provide guidance as to best practices for internal processes to manage their IP and efficiently work with outside counsel. For those clients with established and growing IP portfolios, we study and adapt to their internal processes. In all situations we work to efficiently draft and prosecute patent applications for our clients at a reasonable cost.
LSK also practices before the Patent Trial and Appeal Board (PTAB). Our attorneys and agents regularly appeal Examiner decisions to the PTAB. We also assist clients in patent interferences or priority contests and derivation proceedings.
Our attorneys strive to ensure a patent claims all to which it is entitled, that any potential defects or errors that would cause a patent to be partially or wholly inoperative are remedied, and that validity of an issued patent is properly challenged by leveraging our extensive experience in post-grant proceedings before the USPTO, including reissue, reexamination, and supplemental examination.
Opinions and Portfolio Analysis
Attorneys at LSK are experienced in analyzing and opining on the scope and enforceability of issued patents for making strategic business decisions and evaluating the risks of potential litigation claims. We provide freedom-to-operate, patentability, and invalidity opinions. We also offer strategies for designing around issued patents, as well as other defensive measures. Similarly, we provide analysis of the patent portfolios and product lines of our clients and the patent portfolios and product lines their competitors.
We assist a variety of LSK clients in the preparation, submission and prosecution of trademark applications. We also provide strategic counseling to our clients regarding searching and clearance of potential trademarks and analysis of industry landscape for trademark selection in the United States and other countries.
We have experience preparing, evaluating and negotiating IP license agreements, including patent, trademark, copyright, and trade secret agreements. We also assist in conducting due diligence and investigation of IP assets for acquisitions and other types of technology transfers.
LSK provides both offensive and defensive analysis, counseling and strategic advice with respect to the protection and enforcement of IP rights. We monitor and break down competitive enforcement activities, analyze claims and provide risk assessments, prepare or respond to enforcement letters, prepare and/or negotiate settlement and license agreements, and counsel clients through the initial stages of litigation. Our attorneys also provide analysis and strategic counseling to patent holders and patent challengers for post-grant procedures including reexamination, post-grant review, inter partes review, and the transitional covered business methods review.
Automation and Monitoring
LSK is committed to green initiatives and is a paperless firm. Wherever possible, we attempt to operate in a paperless fashion, including maintaining our patent and trademark files in an electronic form and utilizing electronic collaboration and communication tools to facilitate interaction between our practitioners and our clients. We electronically monitor the status of all client patent applications at the USPTO so that all of our patent application files are kept up to date without processing or mailing delays. We also employ an automated workflow system for efficiently managing the prosecution process within our firm and provide client portals where clients have access to track their patent and trademark applications in real time and without incurring additional costs.