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Patent Application Preparation and Prosecution

Grasso PLLC’s attorneys draft and prosecute utility and design patent applications within and outside of the United States. Our attorneys also provide advice and guidance on the maintenance of U.S. and foreign patents. Grasso PLLC’s attorneys have meaningful experience drafting and prosecuting patents in medical device, electrical, pharmaceutical, and chemical technologies. Specific examples include: respiratory monitoring systems, hydrophilic and hydrophobic therapeutic delivery systems, remote catheter control devices, vascular stent design, percutaneous myocardial revascularization procedures and devices, spinal column stabilization, cranial fiducial markers, semiconductor processing, optical lens systems, software, Internet commerce and communications, digital security certificates, telecommunication systems and devices, VoIP, wireless telephony, pharmaceutical compounds, chemical compositions and methods, metallurgical and polymer materials, food products, cosmetics, organic light emitting devices, waste management systems, photo film, and aircraft control systems.

Reexamination, Reissue, and Interferences
Grasso PLLC’s attorneys are skilled at representing clients during reexamination, reissue, and interference proceedings before The United States Patent and Trademark Office.

Trademark Application Preparation and Prosecution
Grasso PLLC provides trademark advice and counseling services, including the prosecution and registration of trade and service marks. The firm’s attorneys also conduct and advise on trademark and trade name searches and provide clearance opinions regarding proposed marks.

Strategic Business Counseling
Grasso PLLC provides strategic counseling to clients seeking advice regarding the identification, development, management, and exploitation of intellectual property. These services can include reviewing existing invention disclosure procedures, employee agreements, licensing valuation procedures, and obtaining affirmative patent insurance.

Verbal and Written Opinions
Grasso PLLC’s attorneys have significant experience providing advice and rendering opinions regarding invention validity, prior to filing, and on patent infringement and enforceability after grant.

Patent Analysis and Licensing
Grasso PLLC provides patent analysis, valuation, and licensing services. Our attorneys have decades of experience performing offensive and defensive patent analysis. This includes providing strength of portfolio analysis prior to and during licensing negotiations. Our attorneys also have experience drafting and negotiating technology transfer agreements in a broad range of technologies including: global positioning, optics, manufacturing, and medical devices.

Affirmative Third Party Licensing
The attorneys at Grasso PLLC have meaningful experience addressing and resolving patent assertions from third parties. This has included developing strategies for response, reviewing and analyzing the patents being asserted, and formulating negotiation strategies within and outside of litigation.

Due Diligence
The firm provides strategic counseling in support of investment evaluation, corporate acquisitions, and other business transactions.

Patentability Searches
Grasso PLLC provides patentability searches in a broad range of technologies including medical devices, telecommunications, and manufacturing systems.

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