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Barcelo, Harrison & Walker, LLP

  • Our Team
    • Reynaldo C. Barceló
    • Joshua C. Harrison
    • David B. Walker
    • Guadalupe M. Garcia
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    • IP Disputes & Litigation
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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.

Barceló, Harrison & Walker LLP handles a wide variety of licensing and transactional matters involving all forms of intellectual property in a diverse range of businesses. Our experience includes licensing, assignments, patent pool evaluations, technology transfer, consulting contracts, determinations of claim essentiality to standards, and confidentiality agreements.

In Mergers and Acquisitions, the subject matter and geographic coverage and enforceability of intellectual property may be a key factor in determining the value of the assets to be merged or acquired. Barceló, Harrison & Walker LLP is experienced in assisting clients in evaluating patent portfolios to facilitate their business strategies, for example by assessing the enforceability and industrial relevance of patents and patent applications assigned to a company that is a target for merger or acquisition.

Effective portfolio development and analysis can be used to maximize the market value of patent portfolios to support core businesses, to generate licensing revenue streams, or to increase portfolio value for potential mergers or acquisitions. Dormant patent portfolios, or patent portfolios that are poorly understood, poorly organized, or poorly categorized, can represent a large but underutilized investment. Barceló, Harrison & Walker LLP applies a strategic approach to intellectual property development and exploitation and works closely with our clients to leverage their intellectual property assets effectively and efficiently. We can creatively and efficiently analyze and evaluate patent portfolios to maximize their value while tailoring the approach to the particular client’s needs. For example, while a client developing its patent portfolio may benefit from an invention mining process, a client in need of a counter-claim in litigation may require enforceability screening of patents in their existing portfolio. We have developed and refined detailed process flows designed to reveal trustworthy indications of patent or portfolio value in a variety of settings. Our analysis brings value because it can help a client realize a previously untapped return on investment from the subject patent portfolio and determine focus areas for further investment to balance the patent portfolio to meet strategic goals.

Please contact us with any inquiries regarding our transactional services and how we can tailor them to meet your business objectives.

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 Expand

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 Expand

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 Expand

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.

 

Read more...

Patent Pools & Standards Expand

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 Expand

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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Frequently Asked Questions

To resolve disputes are there alternatives to litigation? Expand

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How do competent attorneys prepare an expert witness for testifying in patent litigation or post-grant proceedings? Expand

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How is appellate litigation different from trial? Expand

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How do USPTO Inter-Partes Review (IPR) proceedings differ from asserting patent invalidity in a federal district court? Expand

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Why do so many patent litigation defendants opt to initiate an Inter-Partes Review (IPR) of the asserted patent(s)? Expand

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What is the difference between litigation, arbitration, and mediation? Expand

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Is there such a thing as a global patent? Expand

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Can I enforce my intellectual property rights outside of the United States? Expand

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Should I apply for a foreign patent? Expand

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What is an invention disclosure and why is it important? Expand

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How do patent attorneys draft a patent application? Expand

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What is the difference between patent drafting versus patent prosecution? Expand

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How do I obtain business value from a patent portfolio? Expand

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How does a patent assignment differ from a license? Expand

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Can patent rights be used to prevent me from using a standardized technology or selling a product that conforms to an industry standard? Expand

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What are patent pools and what purposes do they serve? Expand

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About Us

We provide premier legal services to technology companies facing
tough legal challenges.
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Barcelo, Harrison & Walker, LLC

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Newport Beach, CA

2901 West Coast Hwy
Suite 200
Newport Beach, CA 92663

Phone: (949) 340-9736
Fax: (949) 258-5752
rbarcelo@patentlaw.us
jharrison@patentlaw.us

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2225 E. Bayshore Road
Suite 200
Palo Alto, CA 94303

Phone: (650) 585-2933
Fax: (650) 331-0184
gmgarcia@patentlaw.us

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1629 K Street NW
Suite 300
Washington D.C. 20006

Phone: (202) 567-6778
Fax: (949) 258-5752
dwalker@patentlaw.us

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