Patents

Counseling, Formal Opinions of Counsel

Chiacchio IP counsels clients regarding the full spectrum of patent-related issues, including patentability, freedom to operate, patent validity, patent infringement, and patent enforceability. Chiacchio IP also conducts patent landscaping analyses for the Firm’s clients.

Procurement, Licensing, and Due Diligence 

Once the client has a handle on the prospects of patentability, if the client elects to move forward with pursuing patent protection, Chiacchio IP handles the patent application preparation and prosecution process with the skill and knowledge that only many years of experience can confer. 

Chiacchio IP is well-versed in negotiating and preparing licenses of patent rights. Chiacchio IP is also experienced and adept at conducting due diligence investigations in advance of mergers, acquisitions, and other corporate transactions.

Proceedings Before the U.S. Patent and Trademark Office

Chiacchio IP handles third-party initiated reexaminations of issued U.S. patents, both on behalf of patent-holders defending against such challenges as well as on behalf of third-parties challenging issued U.S. patents. Chiacchio IP also handles post-grant proceedings including Inter Partes Reviews, Post Grant Reviews, and Covered Business Method Reviews on behalf of both patentees as well as third-party patent challengers.

Patent Litigation

Chiacchio IP enforces its clients’ patent rights and also defends clients against patent infringement claims in U.S. federal district courts throughout the country. Founder and Owner Theodore J. Chiacchio (“Ted”) has been integrally involved in the trials of five patent infringement cases on behalf of some of the world’s largest and most successful companies. Ted has spent, cumulatively, over two and a half months at trial. Ted has also has had direct involvement in numerous Markman hearings on claim construction. Ted has taken and defended the depositions of dozens of key fact and expert witnesses. Ted has also handled briefing before the U.S. Court of Appeals for the Federal Circuit and has had direct involvement in an oral argument before the Federal Circuit. Chiacchio IP’s litigation experience has also encompassed larger campaigns to monetize clients’ patents.

Publications

Chiacchio IP is an active contributor to industry literature. We also give frequent presentations on topics relating to business patents and other intellectual property.

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