Volpe and Koenig, P.C.
Managing Partner: Gerald “Jay” B Halt, Jr.
Languages: Italian, Spanish, Korean, Mandarin, French, German, Japanese
Main Areas of Practice:
Volpe and Koenig works with clients to understand their overall strategies, business goals, and constraints, before reviewing, ranking and classifying intellectual property portfolios and implementing prosecution protocols. Volpe and Koenig actively manage complete intellectual property portfolios for clients with client goals in mind.
The firm drafts, files and prosecutes utility, provisional, and design patents. Volpe and Koenig utilizes its broad and deep technical proficiency in evaluating the novel features of an invention, drafting effective patent applications, determining contributors and conducting searches in a comprehensive, efficient way. The firm’s attorneys work closely with inventors to clarify inventive concepts, navigate through prior art, and craft meaningful patent claims. Volpe and Koenig’s attorneys and technical advisors, who include former patent examiners with the United States Patent and Trademark Office, are seasoned practitioners with an in-depth working knowledge of the numerous and complicated laws and rules of the patent prosecution process. In some cases, the firm creates working claim charts to focus prosecution, resulting in valuable issued patents. In the past 10 years, the firm has successfully prosecuted nearly 8,800 U.S. and more than 10,000 foreign patents on behalf of clients.
Patent Opinions and Studies
Volpe and Koenig offer guidance and professional opinions on issues such as patentability, validity, enforceability, infringement and freedom to operate. Volpe and Koenig attorneys evaluate an innovation’s novelty, utility and non-obviousness as compared to the relevant field’s prior art, taking into account a client’s business model and its industry.
Volpe and Koenig provides counsel on achieving goals for licensors and licensees, guiding clients through each phase of the licensing process, beginning with the evaluation of the key patent assets in a portfolio, through license negotiations and crafting license agreements. To date, the firm has helped clients realize more than $2 billion in licensing revenue.
Patent Monetization—Strategic Counsel
The firm’s attorneys are experienced in identifying, developing and realizing value in clients’ patent portfolios, including due diligence and mining patent portfolios to identify valuable assets relating to particular products, companies, and industry standards. The firm assists in periodic patent portfolio review meetings with clients, establishing and implementing strategic prosecution and enforcement protocols based on asset ranking systems. Volpe and Koenig prepare patent claim charts to support validity and infringement positions and assists in licensing negotiations and litigation.
Post Grant Proceedings
Volpe and Koenig attorneys understand the highly technical rules that govern the reissue and reexamination processes and excel at keeping issued patents viable during these processes. Volpe and Koenig has successfully represented patent owners and third party requesters in inter partes review (IPRs) and post grant review (PGRs) proceedings, focusing on the optimal use of such proceedings as part of an overall dispute resolution strategy.
The firm’s attorneys frequently assist clients in all types of domestic and international transactions involving intellectual property, including mergers, acquisitions, licensing, and dispositions. Volpe and Koenig attorneys provide strategic portfolio and competitor landscape reviews, and draft and negotiate intellectual property contracts and agreements.