Leason Ellis IP Diligence Brochure 2023

LEASON ELLIS IP Diligence Overview

Clients engage Leason Ellis to obtain outstanding legal counsel to protect and enforce their intellectual property rights.

Our specialized practice area excellence comes from a keen appreciation for inventiveness, creativity, and branding, a profound understanding of the law, and a powerful commitment to using IP to help our clients achieve their business objectives.

Between truth and uncertainty lies insight.

Leason Ellis’ collaborative and hands-on approach to IP law takes that insight from thought to practice. With a deep bench of professionals, who often tap on each other for differing viewpoints and to game-out scenarios, a lean and unvarnished approach to tackling thorny matters in practical and understandable ways, Leason Ellis puts our applied insights to work for our clients.

About Leason Ellis Applied Insight

Smarts, teamwork, and earned experience are essential, but they’re not enough.

Leason Ellis is home to attorneys and staff professionals who love intellectual property law. IP law is an art that comes with years of practice rooted in dedication, experience, and collaboration.

Business and the law are forever intertwined and evolving, often resulting in an uncertain landscape. At Leason Ellis, we thrive in that uncertainty and relish our ability to recognize patterns and distill different data points into an actionable game plan.

Whether it is strategic IP advice, patent, trademark and copyright acquisition, or litigation services, Leason Ellis is your true partner for the insights you need.

• Enhanced Portfolio Analysis

• FTO

• Competitive IP Landscape

• Litigation Review

• In/Out Licensing Evaluation

Patent Services

• Preparation

• Drafting

• Filing

• Licensing

• Joint Development

• Joint Ventures

• Partnership

Patent Prosecution

Technology Transfer

IP Due Diligence

Patent Portfolio

• Invention Mining

• Portfolio Creation

• Portfolio Development

• Management/ Maintenance

Litigation

Patent Services

Counseling

Patent Watch Services

Opinions

• Patent Infringement

• PTAB Proceedings

• Post-Grant Review

• Derivation

• Re-examination

• Freedom to Operate

• Patentability

• Invalidity

• Infringement

• ANDA/PIV

IP Diligence

IP risks often drive deal terms in life science company technology transactions.

Our deep technical expertise in securing and litigating IP assets allows our attorneys to provide strategic advice on complex life science deals where intellectual property is a critical consideration. With a patent prosecutor’s eye, we analyze IP assets and technologies underlying the transaction. With a litigator’s perspective, we quantify uncertainty and counsel our clients with creative strategies to mitigate risk.

As a result of our diligence, our clients can understand the IP risks in a given proposed deal and avoid making ill‑advised investments. We assess the likelihood that the target company will have to defend against patent litigation claims and the likelihood of prevailing. We also analyze entire patent portfolios to locate gaps in patent coverage and determine whether the patent portfolio acts as an effective barrier to entry into the target company’s market.

Patent Prosecution

Leason Ellis has obtained thousands of issued patents.

We understand how to frame a patent application to enhance the chances of approval by the Patent Office. We work closely with inventors, technical personnel, and management to ensure that all aspects, features, and details of the invention are faithfully captured and represented in the patent applications we prepare and file.

After filing, we advocate for our clients throughout the patent prosecution process. We maintain ongoing communication with patent examiners through formal correspondence, as well as telephone and in-person communications. Our knowledge of the process and the people involved enables us to ensure that our clients obtain the patent rights to which they are entitled.

With foreign patent applications, we take an active role in managing the prosecution conducted by our worldwide network of associates. In doing so, we can better manage prosecution costs by avoiding unnecessary duplication of effort while ensuring that our clients’ patent portfolios remain consistent across various jurisdictions.

Our Attorneys

Why do such broad range of scientific, commercial, and educational clients seek our counsel and applied insight?

It’s our all-star and highly credentialed team.

Our attorneys hold a range of advanced degrees, including: JDs, MDs, PhDs, MSEEs, MSCEs, EEs, MEs, and CEs in subjects that include Civil and Architectural Engineering, Computer Engineering, Consumer Products, Genetics, Microbiology, Immunology, Biology, Molecular Biology, Biochemistry, Chemistry, Materials Science, Pharmacology, and Physics.

Susie S. Cheng, Ph.D.

Joel Felber

Ralph J. Crispino

Matthew L. Frisbee

Michael A. Davitz, M.D.

Henry A. Gabathuler

Edward Ellis

Jordan G. Garner

Lauren B. Emerson

Melvin C. Garner

Robert M. Isackson

Karin Segall

Tatsuya Adachi

Stefanie M. Garibyan

Jia Li, Ph.D.

David Leason

Peter S. Sloane

Tommas F. Balducci

Howard I. Grossman

Kristin J. Breen, Ph.D.

Yuval H. Marcus

Elizabeth M. Barnhard

Dexter Chang

Anthony J. Natoli

Mitsu Haraguchi

Cameron S. Reuber

Bonnie Kramer Carney

Lori L. Cooper

Bruce A. Wagar, Ph.D.

Sara E. Gruber

Martin Schwimmer

Michelle J. Levin

Nicholas E. Forgione

Jarryd R. Werts

Yael Webb, Ph.D.

A Sample of Our Clients

Leason Ellis clients can be found across the U.S. and around the world. The following are just a handful of the many we proudly serve.

• CardioFocus, Inc.

• Champalimaud Foundation

• Columbia University

• Cornell University

• Honeywell

• Hospital For Special Surgery

• Hyso Hygienic Solutions

• Mastercard

• Milteny Biotec

• New York University

• News Corp

• ShedRain

• Surgical Design

• The University of Hong Kong

• The University of Tokyo

• Veridium

Life Science & Medical Technology Industry Areas

Leason Ellis applies legal insight to a broad range of innovation-driven industries from Aerospace, Artificial Intelligence, and Biotechnology to Robotics, Security, and Semiconductors.

Our distinguished roster of client companies and institutions seek Leason Ellis’ knowledge of applied science and medical technology, and our deep expertise in life science technologies, including the following specialty sub-industries.

• Bioinformatic Systems

• CRISPRa

• Diagnostic Platforms

• Genetics

• Genomic Testing

• Implantable Neurostimulators

• Nanomedicine

• Nebulizers

• Proteomic Profiling

• Proton Therapy

• Tissue Profiling

• Transcranial Magnetic Stimulators

• Vein Visualization Devices

Harnessing deep technical expertise and excellent business judgment, Leason Ellis... [provides] world - class prosecution and counseling services. One of the jewels in its crown is the Life Sciences practice.”

— IAM

Leason Ellis is a trustworthy alternative to the usual New York City Players. Boasting an all-star team of ex-Big law practitioners, it provides the same services as its rivals, but at a competitive price point facilitated by high-tech document management and lower local billing rates.”

— WTR

By bringing the latest technology into the practice, Leason Ellis is constantly finding efficiencies; this resonates with in-house counsel, who are increasingly being asked to do more with less. The firm also invests in state-of-the-art security, which brings comfort.”

— WTR

The [Trademark and Copyright] group’s modus operandi is not to fight everything but to resolve matters using creative strategies. However, if the conditions for litigation are right, the team strikes hard and fast to get satisfying results.”

— WTR