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Patent Prosecution

Thomas F. Bergert photo

The patent prosecution team at Williams Mullen includes highly-skilled attorneys with technical degrees and, in some instances, industry experience, all of whom are admitted to practice before the United States Patent and Trademark Office. We prosecute domestic and international patents related to a broad range of high-tech innovations all over the world. The patent group’s strength comes from the diverse skill set of its members. We routinely conduct novelty, validity and patentability assessments, design-around and product clearance analyses, invalidity and infringement investigations and intellectual property audits for due diligence and asset management programs.

As part of our approach to portfolio management, we routinely provide a number of services to our clients that help manage risk and optimize value. These services include targeted patent watch services, legal updates, portfolio reviews for patent term extensions based on changes in the law, reissue applications to ensure claim validity and filtering out patents that no longer meet the client’s business goals and value criteria.

Our intellectual property group also has a robust litigation and post-grant review practice. With experience as counsel to government agencies, businesses and universities, our patent attorneys offer clients a perspective focused on solving real-world business issues and legal challenges.

Technical Areas

  • Biotechnology
  • Business Information Processing
  • Chemistry and Chemical Compounds
  • Computer Software and Hardware
  • Electronics
  • Mechanical Devices, Electro-mechanical Devices, Power Generation
  • Medical Devices
  • Optical Devices, Photovoltaics
  • Veterinary Devices
  • Pharmaceuticals
  • Refrigeration/De-humidification
  • Sensors
  • Telecommunications
  • Information Networks
  • Wireless Infrastructure
  • Wireless Devices

Patent Services

  • Domestic and Foreign Patent Applications
  • Freedom-to Operate and Patentability Analyses
  • Confidentiality and Development Agreements
  • Government and Technology Transfer
  • Intellectual Property Audits
  • Invalidity and Infringement Investigations and Opinions
  • Litigation and Post-Grant Review Proceedings
  • Novelty, Validity and Patent Assessment Searches
  • Patent Licensing and Assignment
  • Research and Development Contracts


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  • National Supplier of stormwater management products 

Appeal of Patent Infringement Judgment in United States Court of Appeals for the Federal Circuit

Appeared before the U.S. Court of Appeals for the Federal Circuit to brief and argue an appeal of a judgment of non-infringement and partial invalidity of patent.


  • National Retailer of Discount Variety Goods 

Defended National Discount Retailer Against Claims of Copyright, Trade Dress, and Patent Infringement on Paper Punches

Defended national discount retailer against claims of copyright, trade dress, and patent infringement.


  • International Maufacturer of Furniture Products 

Defended International Maufacturer of Furniture Products In Patent License Arbitration

Represented outdoor patio furniture manufacturer in arbitration over client's alleged failure to pay royalties, pursuant to a patent license agreement between the parties.


  • National Wireless Carrier 

Defended National Wireless Carrier in Patent Infringement Case

Defended client in patent infringement case involving the same patents previously asserted against the manufacturer of the "Blackberry" device.


  • National Manufacturer of Food Products 

Defended National Manufacturer of Food Products Against Claims of Patent Infringement

Williams Mullen was lead counsel in patent case filed in New Jersey federal court in which client was accused of infringing a patent covering cholesterol-lowering use of palm-oil based chemical composition.


  • Defended National Retailer Against Patent Infringement Claims

Served as counsel in a patent infringement case brought in Los Angeles federal court. The accused product was manufactured in China and Williams Mullen litigated the case all the way through discovery, Markman claim construction proceedings, and summary judgment. Case settled immediately prior to trial.


  • Broadband Communications and Entertainment Company 

Defended Southeastern Communications Company Against Patent Infringement Claims

Served as local counsel for broadband communications company-client against allegations by competitor of patent infringement related to Voice Over Internet Protocol.


  • National Supplier of Stormwater Management Products 

Defended Validity of Patent in an Infringement Lawsuit

Represented client in litigation involving claims that competitor's product infringed client's patent. Representation included conducting Markman claim construction proceedings, expert discovery and fact witness depositions. Following re-examination of client's patent, which upheld validity of most claims of the patent, the competitor redesigned the accused product and the parties negotiated a settlement.


  • National Supplier of Stormwater Management Products 

Jury Trial of Patent Infringement Case

Williams Mullen was lead counsel in jury trial of patent infringement case.  Litigation occurred in the "Rocket Docket" in the Eastern District of Virginia. 


  • Individual Inventor 

Represented Former President of a Company in Claims for Back Pay, Ownership of Company and Patents and Inventions

Pursued back pay claims and claims for ownership of company and various patents and inventions on behalf of former President of company.


  • Manufacturer of Pool Toys and Aquatic Products 

Represented Manufacturer of Aquatic Toys in Design Patent Infringement Claims

Filed suit for design patent infringement and trade dress infringement of two aquatic toy products, including an underwater skateboard and a spring float.