Patent


Practice Areas

13483157_mProsecution

Osha Liang was founded on a belief that quality, cost-effective patent prosecution is critically important to the long-term needs of companies. As such, the firm takes special pride in our patent prosecution group. Members of the firm have experience with all aspects of prosecution, from drafting to oral arguments at the PTAB. Our core philosophy is that prosecution is a skill acquired through training and mentorship.

The firm is particularly proud of the broad range of technical skills possessed by our firm’s professionals. One of the many unique and forward-looking aspects of the firm’s prosecution practice is the firm’s patent agent program, which is designed to enhance the technical skill level while providing first-rate legal services. On an on-going basis, we actively recruit science and engineering graduates from the top technical universities. These individuals are then apprenticed in the field of patent law with practical training and weekly lectures, and eventually sit for the Patent Agent Exam. Under a Partner’s supervision, these patent engineers and patent agents can and do provide exceptional value to clients. Members of our program gain experience with application and response work before moving on to litigation. As a result, our attorneys have years of experience in the area of prosecution and are able to deliver a better product to our clients.

Osha Liang is recognized as one of the top 50 patent firms in the United States, based on the number of patents issued. We are the largest boutique IP firm in the Houston area.

Most of Osha Liang’s clients are either U.S. companies with significant operations overseas or overseas companies. Thus, the firm places strong emphasis on experience in other jurisdictions and on foreign language abilities. In addition to U.S. attorneys and agents, the firm employs licensed European, French, Japanese, and Chinese patent attorneys. All of the U.S. attorneys and agents are trained on the fundamental rules of application drafting and response work in the major foreign jurisdictions. Furthermore, the firm’s members collectively speak more than 20 languages, including all of the major Asian and European languages.

The firm maintains an office in Paris to handle its European Patent Office filings, and members of the firm are rotated through this office to gain hands-on experience with European patent law.

Licensing

Osha Liang has experience in negotiating, drafting, reviewing, and enforcing license agreements covering all aspects of IP, and in all technical disciplines. Specifically, we are involved in working with companies to generate standard license agreements, as well as custom agreements.

Litigation

Osha Liang takes a European approach to litigation. For large litigations, the firm partners with a commercial / IP litigation boutique firm to maximize value and efficiency to the client. We maintain affiliations with a number of renowned litigation boutiques and work together to get the most effective result for our clients. When working on a large litigation matter, the firm handles the patent-centric matters, while the litigation boutique firm handles the litigation-centric matters.  By using a two-firm approach, each can focus on their specialty leading to higher quality results for our clients.

Alternative Dispute Resolution (ADR)
Osha Liang investigates all disputes as thoroughly as possible at the outset, analyzes the litigation risks with the client, and, where appropriate, seeks early resolution of the dispute through ADR. Our thoroughness fosters the continuation of business relations between the parties to the dispute.  The forms of mediation most commonly used by Osha Liang attorneys are mediation and arbitration. Our attorneys have mediated and arbitrated a large number of intellectual property and commercial disputes, and we are able to pair a particular kind of dispute with a well qualified mediator or arbitrator to assist in resolving the dispute.

Open and Regular Communication with Clients
One of the keys to our success in litigation is maintaining open and regular communication between our trial team and clients. It is imperative the client understand the status of the case at any given point in time, and we accomplish this through constant communication.

We believe it is important for our clients’ legal department to be involved at an appropriate level in litigation matters. Osha Liang looks to the client for assistance in identifying people with knowledge of relevant facts, identifying in-house and outside experts, and identifying and producing relevant documents. Our attorneys work closely with clients on these issues and bear primary responsibility before the court for these matters.

Model Pleadings & Contracts
Osha Liang has handled a wide variety of commercial disputes and maintains model pleadings based upon this experience. Often these model pleadings are client specific due to those clients’ recurring issues. The firm maintains a library of litigation-related contracts that it may use in any new dispute including settlement and release agreements and license agreements for patents and trademarks.

Vendors and Contractors
Osha Liang works with a variety of litigation-support vendors or contractors, including document production and management companies, jury research consultants, and computer forensic experts. The firm maintains state-of-the-art litigation support tools and strives to perform as much of the litigation support work as possible without the need of more costly outside companies. We routinely involve our clients in the selection of each litigation support vendor.

Osha Liang’s litigators have gained substantial experience in the handling of intellectual property or complex technology-related commercial disputes. Our representative matters include:

  • Axalto S.A. v. Toshiba America Electronic Components, Inc., et al., E.D. Tex.
  • Swift Computers, Inc. v. Dictaphone Corporation, et al., S.D. Tex.
  • Weatherford International, Inc. et al. v. Casetech International, Inc., S.D. Tex.
  • Rainin Instrument LLC v. Molecular BioProducts Inc., E.D. Tex.
  • National Oilwell Varco v. Hydril, SD Tex.
  • Halliburton Energy Services, Inc. v. Smith International, Inc., E.D. Tex.
  • Smith International, Inc. v. Halliburton Energy Services, Inc., E.D. Tex.
  • Schlumberger Tech v. OSCA Inc, S.D. Tex.
  • MPR Services Inc v. ECO-TEC Limited, et al, S.D. Tex.

Searching

Another forward-looking aspect of Osha Liang’s practice is our in-house searching capabilities. In order to provide quality searching, the firm has hired several former Patent Examiners, who can provide the client with quick determinations as to the likelihood of obtaining a patent, which avoids companies using unnecessary resources on inventions of questionable patentability. In addition, “knockout” validity searches can be performed to assess the quality of competitors’ patents, providing our clients with the ability to make informed business decisions.

Landscaping

As advocates of innovation, Osha Liang is constantly on the cutting edge and our 3D topographical patent landscaping tool truly speaks to this aspect of the firm. By leveraging our IP expertise, we are uniquely suited to provide our clients with a landscape terrain; information on what is out there, advice on where to focus research and development efforts, and a competitor’s analysis.

Our landscaping search is a deeper analysis of patent and non patent references after completion of the state of our patent searching. The landscaping categorizes patents into fundamental discoveries versus incremental improvements, and creates a visual display of patenting over time periods and even the history of development of a technology.

We use this tool to determine whether to enter a specific research area. It gives a broad overview of a technology area or industry over time, and both expired and un-expired patents are included as references.

The tools and techniques present a set of actionable intelligence by illustrating patent activity in the market relative to a corporation’s patent portfolio and research and development activities. Patents are “clustered” on the basis of similarities derived from predetermined patent metrics. Our specialized analysis software coupled with our many years of experience in the IP space allows us to provide our clients with the highest quality results.

Patent landscaping uncovers:

  • Market opportunities for licensing
  • Competitive technology trends
  • Gaps in corporate patent portfolios
  • Opportunities for entry into new markets
  • Targets/risks for patent infringement litigation
  • Opportunities for redirecting research and development efforts