Practice Areas

Patent and Trade Secret Litigation Consulting, Counseling, Strategizing and Support

Steve has assisted scores of clients in resolving hundreds of intellectual property disputes, including as an advisor and a negotiator. Steve’s experience as a first chair/co-chair litigator in over one hundred IP litigation matters, most of which have been “high stakes” or “bet the company” matters, provides a rich base from which he draws to counsel clients involved in IP disputes. When a dispute leads to litigation, Steve is available to assist in strategizing, and to provide litigation support.

Intellectual Property Portfolio Analysis, Consulting and Strategy

Companies build IP portfolios for many reasons, including: to protect their products from being copied by competitors; to block competitors in a certain field of use; to reduce the risk of being sued by competitors; to provide defensive opportunities in the event they are sued; to create royalty bearing licensing opportunities; to create cross licensing opportunities; to minimize the risk of valuable information being taken from them; to build a reputation as an innovator; to build brand; and more.

Steve counsels clients in both building their own portfolios and in mining their portfolios to identify licensing and other revenue generating opportunities. Steve also assists clients in their due diligence when they are considering either the purchase of IP, or the acquisition of another entity that owns, or has enforcement right under, IP, and in assessing potential liability that an acquisition target may have under third party IP.

Strategic Patent Procurement

A well-crafted patent can be a “make or break” for many companies. Accordingly, patents are frequently a company’s most valuable asset. They can provide a “barrier to entrance” and impede competition from making, using, selling for sale and importing the patented item or method. They may also present licensing opportunities and thus become a revenue generating opportunity for the company. Patents may also assist a company in positioning itself in the market as an innovator, and in providing opportunities to settle patent disputes through cross-licensing.

Over his lengthy career, Steve has procured patents for large entities, including Microsoft and others, medium and small cap companies, and start-ups. Steve’s forte’ in this area is thoughtful preparation and prosecution of patent applications, carefully tailored to the company’s business needs and goals. Steve’s patent procurement practice is not a “ patent mill” and he does not engage in so-called “commodity prosecution”.

As one of Steve’s clients noted, “Your guidance throughout the application process was responsive, timely and—as I’ve come to learn—on target. Your advocacy during administrative appeals was as zealous as it was artful.”

Patent and Trade Secret Related Opinions

There are many reasons that a company may wish to obtain an IP related legal opinion; the reasons are primarily for defensive, offensive and due diligence purposes.

Defensive. A company may wish to obtain a legal opinion as to whether its own product or service, or an anticipated product or service, is clear of a third party’s IP rights, or whether a third party’s alleged IP rights are valid and/or enforceable. For example a company may: have been threatened with suit by a third party, and the merits of the threat are to be evaluated; be considering entering into a new venture or introducing a new product, and it desires to evaluate the risks, if any, posed by third party IP to the venture or new product; wish to obtain a “clearance” opinion or “freedom to operate” opinion; wish to determine the strength of a third party’s IP to assist it on deciding whether to obtain a license and/or to aid in the license terms; and more.

Offensive. Similarly, a company may wish to obtain an opinion as to whether there is or has been activity by another entity that violates the company’s IP rights. An opinion may guide the company in both determining whether to take action, and how to proceed in the event it decides to take action.

Due Diligence. A company may be considering acquiring another entity, or its assets, and may wish to gain an understanding of the strength and/or weaknesses of that entity’s IP, and/or the risks associated with the acquisition, e.g., whether the entity has been threatened with infringement or misappropriation.

Steve has extensive experience in providing each type of opinion. In each case, Steve immerses himself in the technology, and, where appropriate, the terms of the deal, to assist his client in making an informed decision as to how to proceed.

Patent and Trade Secret Dispute Resolution

There are many different types of alternative dispute resolution, or ADR. They include arbitration and mediation, as well as other forms such as settling a dispute based on a mock proceeding. Steve has been involved in numerous such proceedings, assisting his client as its advocate. Steve had also been appointed to the American Arbitration Association’s panel of neutrals for disputes relating to intellectual property.

Patent and Trade Secret Expert Witness

Steve has worked with numerous expert witnesses in the areas of patent and trade secret litigation, and has also provided expert witness services in certain cases. Steve is also available to serve as an expert witness, court appointed expert, and advisor to the court, on matters pertaining to patent law and the law of trade secret misappropriation.

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No. 201
Wayne, PA 19087

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E srocci@sroccilaw.com