Intellectual Property

We have more than 65 patent lawyers, technical specialists, and patent agents spanning our nine offices who have industry training and/or advanced degrees in life sciences and engineering, as well as experience as former patent office examiners well versed in the intricacies of the US Patent Office.

An intelligent approach to the pursuit of our clients’ business objectives is a hallmark of our IP Litigation practice. We start with an assessment of your goals and design the strategy that will fit your particular situation. Our litigators have decades of experience litigating cases for some of the largest manufacturers in the world, and in some of the most complex cases in courts all over the country. Whether it is bet-the-company litigation or finding the most cost-effective way to respond to a nuisance action, McCarter’s litigation professionals bring the same experience to bear to fashion an approach to handle each case individually.

Our Hatch-Waxman/ANDA team has decades of experience litigating cases for some of the largest innovative pharmaceutical companies in the world, mid-sized pharmaceutical companies, and companies starting out with their first U.S. product. We have deep experience guiding our innovator clients through the intricacies of the Hatch-Waxman Act and federal court litigation. Our Hatch-Waxman litigation approach is founded on collaboration and team work with our clients. Our practice includes a substantial focus on assisting clients from other countries in navigating the very complex Hatch-Waxman litigation framework, including numerous successful Hatch-Waxman matters assisting clients where the research and key documents have been in a foreign language. Our lead trial lawyers have in-depth knowledge of the strategies and complexities of Hatch-Waxman/ANDA and patent infringement litigation, with a demonstrated track record of success. McCarter team members have been lead counsel in Hatch-Waxman cases in the District of New Jersey, the District of Delaware, the Southern District of New York, and the Northern District of West Virginia. McCarter also represents branded pharmaceutical companies in more than 80 active Hatch-Waxman litigations as local counsel or participating co-counsel.

Teamwork powers post-grant proceedings. Teamwork between patent attorneys and trial attorneys is essential in modern patent litigation. Many patent disputes today involve not just actual or threatened federal court litigation, the domain of trial attorneys, but also parallel administrative actions in the Patent Trial and Appeal Board (PTAB), which is a tribunal of the US Patent Office, the domain of patent attorneys. These PTAB proceedings are designed to provide faster and cheaper methods for testing the validity of patents and thus have become popular, and even essential, components of patent enforcement and defense strategy. Accordingly, at McCarter, our patent attorneys and trial attorneys work closely to provide coordinated strategy and execution between the PTAB and court proceedings.

A brand embodies the identity, reputation, and promise of a business, making it one of the most valuable assets. Over time, a company’s name and visual identity lends credibility to the quality of its products and services, captures loyal consumers, and contributes to steady revenue growth. Every dollar spent on product development, design, and promotion is ultimately an investment in the brand. Therefore, each unique identifier of the brand, whether name or symbol or color, needs protection. Strong IP rights deter competitors and others seeking to benefit from valuable brand identity and erode the hard earned trust of customers.

In addition to patent prosecution and patent litigation, members of the IP group at McCarter regularly counsel our venture capital, investor, and corporate clients on strategic patent issues in connection with mergers and acquisitions, initial public offerings, private equity, funding, and technology transfer transactions.

Our deep experience in the life sciences, medical devices, and high technologies enables us to provide thoughtful and accurate answers to clients’ questions, and to anticipate deal terms that properly allocate risks. We deliver comprehensive analyses of the IP assets at issue that can help drive an equitable deal.

Our experience is from both the buyer’s and the owner’s perspectives. From either position, obtaining a comprehensive evaluation of the intellectual property assets is a critical aspect of evaluating the value and risks presented by the transaction. The possible outcome of pending or potential litigation, the assignability of a company’s IP agreements, the scope and ownership of IP rights, and other aspects of accurate due diligence can result in serious changes in valuation.

We can evaluate the business and technology of the company and the U.S. and international IP to determine strengths and weaknesses within the portfolio, then provide advice to eliminate any vulnerabilities. We can also focus our evaluation on key aspects of the technology and business, providing strategic options for the client to make an informed decision.