RESEARCH · PATENTS · TECHNOLOGY TRANSFER
Universities
& Research
Institutions
Patent strategy aligned with research and technology transfer.
Divergent Patent Law helps universities and research institutions protect technical innovation through U.S. patent drafting, prosecution, and portfolio strategy. We work with technology-transfer teams, researchers, and existing advisers to connect the substance of an invention with the institution’s research, licensing, and commercialization priorities.
Start with the decisions that matter
01 / Plan around research and publication
Research and patent work need coordinated planning. We help institutional teams identify the information needed for an application and discuss filing priorities alongside planned publications, presentations, continuing experiments, and other research activities.
02 / Identify the people and obligations
Within the agreed engagement, we consider relevant inventorship, ownership, funding, and collaboration questions. We coordinate with institutional teams and existing advisers to identify matters requiring review and understand how they affect the proposed patent work.
03 / Build a prosecution strategy
We examine the technical contribution, supporting information, and alternative implementations when preparing an application. During prosecution, we help evaluate claim scope, responses to the patent office, and options for related applications in light of the institution’s goals.
04 / Keep commercialization in view
Patent decisions should reflect the technology’s development and intended use. We help align patent strategy with licensing priorities, prospective partnerships, further research, and the broader portfolio, while coordinating with the institution’s existing advisers.
Patent support for institutional innovation
Depending on the agreed scope, our work may include:
-
Reviewing invention disclosures and planning applications.
-
Preparing and filing U.S. patent applications.
-
Responding to Office Actions and conducting examiner interviews.
-
Handling appeals and continuation applications.
-
Coordinating patent portfolios and related work with existing counsel.
-
Advising on patent strategy in support of licensing and commercialization.
Define the work and budget in advance
Work directly with the practitioner responsible for your matter. Before work begins, we explain the agreed services and professional fees. Government charges and anticipated third-party expenses are identified separately. Additional work is discussed and approved before it begins.
Tell us about your research and patent priorities
Share a general description of the technology, your institution’s goals, relevant publication plans, and the support you are seeking.
Please do not include confidential information in your initial inquiry. An attorney-client relationship is formed only through a written engagement agreement.
Research & Technology Transfer Insights
Relevant Team
The professionals below bring complementary experience in application drafting, USPTO examination, examiner interviews, appeals, and portfolio development across electrical, software, mechanical, materials, chemical, and life-sciences technologies.
Brandon R. Theiss
Partner · Registered Patent Attorney · Licensed Professional Engineer
A licensed professional engineer and former industrial-control and medical-device engineer, Brandon advises on patent prosecution, § 101 strategy, portfolio development, and post-grant proceedings involving AI, software, cloud systems, medical devices, and automation.
Tom J. Filarski
Senior Counsel · Registered Patent Attorney · Chemist & Chemical Engineer
A chemist and chemical engineer with four decades of experience, Tom develops and coordinates patent strategies for medical devices, pharmaceuticals, chemicals, polymers, semiconductors, energy technologies, and manufacturing systems.
Scott D. Paul
Partner · Registered Patent Attorney · Materials & Mechanical Engineering
A materials and mechanical engineer, Scott has prosecuted more than 2,000 U.S. applications, drafted more than 600 applications, and filed more than 1,000 PTAB appeal briefs involving AI, semiconductors, cloud systems, medical devices, and advanced manufacturing.
Janet Pioli
Senior Counsel · Registered Patent Attorney · Molecular Biology & Biotechnology Background
A registered patent attorney with more than 30 years of experience and a molecular-biology and biotechnology background, Janet advises on portfolio development, clearance, due diligence, prosecution, and appeals involving medical devices, diagnostics, biotechnology, industrial equipment, and consumer products.
Robert Hyun Chang
Of Counsel · Registered Patent Attorney · Materials Engineer
A registered patent attorney with more than 25 years of intellectual-property experience and degrees in metallurgical and materials science engineering and physics, Robert helps technology companies draft and prosecute U.S. patent applications, build and monetize portfolios, and develop claim and licensing strategies grounded in complex technology and commercial objectives.
Danielle Gross, Ph.D.
Registered Patent Agent · Ph.D. in Biochemistry · Life Sciences & Medical Devices
A registered patent agent with more than a decade of prosecution experience and a Ph.D. in Biochemistry, Danielle helps life-sciences and technology companies draft and prosecute U.S. patent applications, build portfolios, and develop claim strategies grounded in complex science.
Ganesh J. Prabu
Technical Advisor · Wireless Engineer · Patent Analysis and Licensing Support
Ganesh J. Prabu is a wireless engineer and technical advisor with more than two decades of experience, including roles at Motorola and BlackBerry. He supports patent prosecution, licensing, and litigation through technical analysis of 5G, LTE, and IoT technologies, claim-chart development, reverse engineering, and evidence-of-use analysis.
