United States - Washington Shook Hardy & Bacon LLP

Shook Hardy & Bacon LLP is an international law firm with 12 offices in the United States and the United Kingdom. The firm is dedicated to serving clients in the health, science, technology and consumer goods industries, in areas ranging from product liability defence and commercial litigation to IP litigation, counselling and prosecution.

Shook’s IP group works on behalf of clients to secure both domestic and foreign patent, trademark and copyright protection. Shook provides comprehensive IP services, including IP and technology litigation, patent portfolio development and management, patent landscaping and risk mitigation, strategic counselling and licensing.

IP litigation

Patent litigation is notorious for its high cost potential, which is why Shook works to maximise efficiency. While we are adept at using budgets, early case assessments and other value practices, our most significant differentiator is our firm’s corps of more than 100 scientific analysts, which includes professionals with master’s and doctorate degrees in a host of technologies. We deploy them where many firms would use junior associates or outside consultants – reviewing technical documents, assessing prior art and more. By pairing them with our bench of experienced patent litigators, we provide teams that are practical, deft and immersed in our clients’ technology.

Patent filing and prosecution

From start-ups to Fortune 50 companies, Shook has deep experience filing and prosecuting patents in a broad range of industries and technologies. Our patent attorneys and agents understand the necessity of focusing patent protection on the differentiating aspects of inventions that deliver real business value. Our team members have advanced degrees in, among other subjects, biochemistry, immunochemistry, engineering, pharmacology, toxicology and computer software. The firm has obtained thousands of patents in myriad industries.

Patent portfolio strategy and management

A patent’s value is not found in its certificate, but in its effective deployment. We perform due diligence to ensure comprehensive knowledge of a client’s IP assets, as well as its marketplace. We scout potential infringing products and services, identify gaps in coverage and search for strategic acquisitions and licensing opportunities.

Patent risk analysis and NPE response

Shook helps to shield clients from patent assertion entities and non-practising entities by developing strategies to minimise risk of engagement. When demand letters are received, we conduct swift non-infringement and invalidity analysis to develop positions aimed at the disposing of patent assertions before litigation commences, saving our clients time and resources.

Post-grant strategy

A blend of prosecution and litigation practitioners at Shook leverage patent post-grant options to strategically and effectively manage patent risks independently or in conjunction with co-pending litigation. With extensive experience successfully instituting inter partes reviews for our clients, Shook has been able to efficiently alter the trajectory of interactions between our clients and third parties. Shook also leverages experience in ex parte re-examination and post-grant reviews to challenge the resulting claims of third-party patents. As part of a comprehensive prosecution, litigation and post-grant strategy, Shook approaches our clients’ needs with a balanced, effective and innovative mindset that is backed by proven success.

Strategic counselling and licensing

Shook IP attorneys guide clients through all categories of transaction and scenario, including product development agreements, patent, trademark and copyright licences, open source usage, contributions and licensing, industry standards usage, participation and contributions, strategic alliances, joint development agreements, due diligence involving IP asset evaluation and settlement agreements.

Trade secrets

We assist clients in maintaining, protecting and exploiting proprietary trade secrets, including formulas, processes, methods, techniques or compilations such as customer lists − some of the most valuable corporate assets. We address ownership rights between employers and employees, as well as between businesses and independent contractors.

Trademarks and copyrights

We provide a full range of trademark, trade dress and domain name services. We procure, monitor and enforce trademark rights, both domestic and foreign. In the copyright arena, we represent clients that create, own and manage all forms of content, including computer software, music, film, literary and online works; we ensure they can maximise their value.

Main address

Columbia Centre
701 Fifth Avenue
Suite 6800
Seattle WA 98104
United States

Contact details

E: beppenauer@shb.com
T: +1 206 344 7600
F: +1 206 344 3113
W: www.shb.com

Professional contacts

Bart Eppenauer, Partner
E: beppenauer@shb.com

Bill Harmon, Partner
E: wharmon@shb.com

Other offices

Chicago, Denver, Houston, Kansas City, London, Miami, Orange County, Philadephia, San Francisco, Tampa, Washington DC

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Issue 87