Established Businesses

We help our established business clients create procedures to identify and document new ideas and innovations – an exciting process. The next step is helping them protect their inventions by guiding them through the tricky process of obtaining domestic and foreign patent coverage. We also advise our clients on whether the cost to pursue a particular patent application is justified or not—in view of the prior art and market and in consideration of the likely enforceable scope and other legal factors and risks. We tell them if there is a better way to protect or leverage their idea in their situation.

BHW handles a wide variety of licensing and transactional matters involving all forms of intellectual property in a diverse range of businesses in the Fortune 500 space. Our capabilities include licensing, assignments, patent pool evaluations, technology transfer, consulting contracts, determinations of claim essentiality to standards, and confidentiality agreements.

Why Choose Us

We have extensive experience in a wide range of legal and business issues related to intellectual property.
Each of our partners holds both advanced engineering and legal degrees from the best universities,
and has supplemented his academic credentials with years of technical experience. We combine
top-tier big law firm and Fortune 500 in-house expertise and experience with the attitude
and responsiveness that is only available from a smaller boutique law firm.

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Patent Applications

Patents convey the right to exclude others from making, using or selling the inventions claimed in the patents in the country or countries that issued the patents. To enjoy the benefits of these patent rights, your business should own its patents. However, under U.S. law, only an inventor or an assignee can own a patent and businesses cannot be listed as an inventor. Patent assignment is the legal mechanism to transfer ownership from inventors to your business or from one business to another.

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IP Disputes & Litigation

A patent application includes certain important sections that include, for example, the abstract, the specification, the drawings, and the claims. Each of these sections can be important in understanding an invention, but it is the claims that describe the legal metes and bounds of a particular invention. Accordingly, it is important that each section is well-drafted to provide the best support for the claims; it will be the claims that will be most scrutinized by the USPTO during examination of the patent application.

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Patent Licensing & Portfolios

Patents convey the right to exclude others from making, using or selling the inventions claimed in the patents in the country or countries that issued the patents. A patent owner may choose to retain those rights to prevent others from practicing the inventions, particularly when those inventions are embodied in products produced or services provided by the patent owner. Alternately or additionally, the patent owner may instead choose to license some or all of those rights to other entities to generate licensing revenues. Depending on the licensing strategy, license agreements may convey exclusive rights to a single licensee or non-exclusive rights to multiple licensees.

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Patent Pools & Standards

Development of a wide range of technologies are based on technical standards adopted by industry organizations in coordination with the companies responsible for the development of the technology and the products that ultimately incorporate and apply the industry standard. Early adoption and consistent application of industry standards for a technology allows consumers to have confidence that products incorporating the standard will be interoperable with each other and any content conforming to the standard and produced for use with those products.

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Post Grant Proceedings

Patents grant the exclusive right to make, use, and sell an invention. But such rights are limited to the jurisdictions that grant them. For example, United States patent rights do not extend beyond its borders. In order to obtain patent protection outside of the United States, patent applications must be filed outside of the US. Filing in the US and in foreign jurisdictions can be very expensive. Accordingly, inventors must decide on a the best investment strategy for protecting their invention, marketing and developing their product lines, and maintaining or increasing the valuation of their company short- or long-term.

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