March 22, 2023
Volume XIII, Number 81
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Sterne, Kessler, Goldstein & Fox is a leading specialty IP law firm, based in Washington, DC and distinguished by the strong technical experience and knowledge of its team. Sterne Kessler has more than 35 years’ experience helping companies to strategize, build and enforce worldwide IP portfolios, including inter partes matters (lawsuits, appeals, oppositions, and post-grant proceedings like inter partes review and covered business method patent review), preparing and prosecuting patent and trademark applications before the US and foreign patent offices and advising on portfolio strategies (valuation, acquisition and due diligence).
Sterne Kessler attorneys and agents are carefully recruited for their technical expertise and industry experience. Most have earned an advanced technical degree (more than 60 hold a Ph.D.) and have significant industry or academic experience across a wide spectrum of technical areas, including electronics, software, biotechnology, clean technology, pharmaceuticals, grid resiliency, chemical products and processes and consumer products. Many of our patent prosecution attorneys have previously worked as patent examiners and have unique insights into the inner workings of the US Patent and Trademark Office (USPTO).
Sterne Kessler’s client base includes emerging and established companies, venture capital firms, individual entrepreneurs, and universities – from technology fields such as carbon footprint technologies, pharmacogenomics, nanomedicine, biofuels, next-generation electronics and other consumer products. While the firm provides a full range of services, it is organized internally around four main practice groups in the Washington DC office: the biotechnology/chemical group, the electrical group, the mechanical/consumer products group and the litigation group. In total, more than 350 people are employed at the firm.
Sterne Kessler announced its patent office litigation service as a response to the implementation of the America Invents Act beginning in 2012. The law has ushered in a variety of ways either to challenge or to strengthen patents at the USPTO, including inter partes review, post-grant review, covered business method patent review, derivations, interferences, and reexamination. The service relies on extensive knowledge of the USPTO to assist clients in navigating these new litigation proceedings at the patent office.
The firm’s main areas of service include: business methods filings; design patents; due diligence; Hatch-Waxman: generic and proprietary; IP valuation; interferences; inventorship dispute resolutions; ITC Section 337 investigations; licensing; litigation and appeals; patent forensics; patent prosecution; patent re-examination; product lifecycle management; opinions; oppositions; strategic IP advice; trademarks; and trade secrets/unfair competition.
Key industries serviced by the firm include biosimilars, biotechnology, chemistry, clean technology, consumer products, electronics, food science and packaging, industrial products, internet, infectious diseases, medical devices, nanotechnology, software, pharmaceuticals and the grid.
Contributing authors from Sterne, Kessler, Goldstein & Fox P.L.L.C.:
Sterne Kessler has been selected for a 2018 NLR Go-To Thought Leadership award for their coverage of the Patent Trial and Appeal Board (PTAB), which decides issues of patentability. Sterne Kessler has shown a dedication to writing on Patent litigation including Inter Partes Review, Post Grant Review in front of the PTAB, providing insightful analysis of decisions, and actionable takeaways for NLR readers.