Patent Prosecution & Licensing

Brownstein has a dedicated team of patent professionals with deep technical expertise across a wide range of technologies. Drawing from a technically diverse group of scientists and engineers, with backgrounds in software development, electrical engineering, mechanical engineering, material science, medical devices and biochemistry, Brownstein is able to apply the right technical expertise to our clients’ products and specialized industries.

Brownstein’s patent team builds patent assets that protect investments in critical innovation to help to secure our clients’ positions in the marketplace. Our team has a proven track record of developing and curating patent portfolios that are both technically relevant and legally enforceable for some of the world’s largest and most innovative companies.

Our team is also experienced in assessing patent threats and defending patent legal challenges, whether it involves inter partes reviews (IPRs) or working with our patent litigators to defend clients accused of patent infringement. We help clients understand patent landscapes through targeted patent diligence and freedom-to-operate counseling, and regularly use our patent licensing experience to work with clients and their partners in securing the rights needed for their business.

Working collaboratively with the firm’s Corporate, Natural Resources and Government Relations teams, our patent group is able to capitalize on the insight of our colleagues to help clients stay informed and adapt to the latest developments in the law and remain meaningfully involved in the legislative process when needed.

Representative Matters
  • Served as IP licensing counsel for financial industry client, assisting client in licensing IP assets and entering new markets.

  • Represented a Fortune 250 company for patent protection related to networking, data transmission, content delivery and related hardware. Prepared opinions of counsel for noninfringement, invalidity and freedom to operate.

  • Represented a Fortune 50 company to protect and grow its consumer goods-related intellectual property across a broad range of technologies, including sensors, input mechanisms, imaging, mechanical structures, manufacturing processes and more, spanning thousands of assets worldwide.

  • Performed IP due diligence for clients relating to purchases of company, including establishing chain of ownership, evaluating coverage of applications, providing analysis of strength of acquired portfolio with respect to competitors and strategies for expansion of IP.

  • Represented medical device manufacturer for protection of stents, valves, and catheters.

  • Represents transaction technologies supplier Japan Cash Machine in all aspects of its IP portfolio procurement, management, licensing, and assertion.

Recognition

IAM Patent 1000, 2017
“This ‘politically astute and connected firm’ is ‘really thoughtful in the way it grows and moves into new areas’, and is ‘an up-and-coming name’ which is ‘making serious inroads with leading technology companies’. What started out not too long ago as a prosecution and licensing practice has since evolved into an all-round patent service which also includes litigation; by listing members of the group in all tables, the IAM Patent 1000 underscores its impressive versatility.”

Meet The Team

S. Craig Hemenway Shareholder T 303.223.1104 chemenway@bhfs.com
Paul J. Prendergast, Ph.D. Shareholder T 303.223.1194 pprendergast@bhfs.com
Benno M. Guggenheimer Shareholder T 303.223.1202 bguggenheimer@bhfs.com
David S. Atkinson Of Counsel T 303.223.1105 datkinson@bhfs.com
Elissa A. Asaro Patent Agent T 303.223.1333 easaro@bhfs.com
Andrew J. Freyer Associate T 303.223.1148 afreyer@bhfs.com
Peter M. Jarvis Patent Agent T 303.223.1302 pjarvis@bhfs.com
Tamala Jonas Patent Agent T 303.223.1483 tjonas@bhfs.com
Randolph E. Treece, Ph.D. Patent Agent T 303.223.1362 rtreece@bhfs.com
Gregory W. Osterloth Of Counsel T 303.223.1273 gosterloth@bhfs.com
Peter J. Nagle Associate T 303.223.1180 pnagle@bhfs.com
Benjamin W. Ryan Associate T 303.223.1262 bryan@bhfs.com
Timothy R. Schulte Of Counsel T 303.223.1240 tschulte@bhfs.com