Patents - Lucas & Mercanti, LLP


Patents are the foundation of Lucas & Mercanti, LLP and remain the crown jewel of our firm’s practice today. We are considered one of the upper tier intellectual property firms, buttressing our deep understanding of the law with our ever-developing business, scientific and technological acumen. As our clients’ needs have grown, Lucas & Mercanti has evolved to meet each and every new challenge.

We have the multi-disciplinary technical expertise that clients need. Lucas & Mercanti’s professionals hold degrees, including Ph.D. degrees, in variety of technical fields, including: biochemistry, molecular biology, cellular biology, microbiology, molecular genetics, neurobiology, pharmacy, life sciences, chemistry, chemical engineering, electrical engineering, mechanical engineering, and physics. Moreover, we have real-world technical experience, many of us coming from prior careers as scientists, engineers, entrepreneurs, and doctoral-level professionals.

This diversity in experience and technical expertise is crucial. The increasing number of disruptive innovations, or “disruptors”, is the result of a creative combination of sciences and technologies, rarely fitting neatly into one clearly defined discipline. Our patent attorneys therefore often collaborate across multiple technical disciplines. We perform patent work in nearly every industry and technology, including:

  • Pharmaceuticals and life sciences
  • ANDA and 505(b)(2) applications and litigation
  • Biotechnology and genetics
  • Biologics and biosimilars
  • Chemistry and chemical sciences
  • Medical devices
  • Nanotechnology
  • Digital health
  • Oil, gas and renewable energy
  • Electrical, computer, wireless and internet technologies
  • Manufacturing
  • Automotive
  • Aeronautics
  • Food
  • Agriculture
  • Construction
  • Power Generation

Patent Preparation and Prosecution

Sometimes, multiple scientific and technical disciplines collide. In one recent example, our neurobiologist, chemical and electrical engineering attorneys collaborated to draft a patent application that involved analyzing biological and chemical materials for use within a mechanical device.

Lucas & Mercanti has been ranked among the top patent law firms in the U.S. by annual publications. Our services cover every aspect of preparing and prosecuting utility and design patent applications. When desirable, our deep experience allows us to determine the best strategy to expedite the application process leading to more quickly issued patents. Our patent prosecutors work with litigators to provide depth and substance in applications that few other firms can provide. Our services include:

  • Drafting and prosecuting patent applications, utilizing the expedited examination procedures offered by the USPTO
  • Managing patent portfolios
  • Providing formal or informal legal opinions on issues of patentability, invalidity, infringement, freedom-to-operate and state-of-the art
  • Conducting prior art searches and analyses to develop patenting, freedom-to-operate, and business strategies
  • Counseling clients to minimize exposure to patent infringement actions, including designing around patents of competitors
  • Advising on issues concerning post-grant proceedings, IPRs and reexamination


Our litigation group is second to none, advocating for our clients’ patent rights worldwide. We protect our clients’ valuable patent rights through skilled litigation, careful strategy and conclusive negotiations. We also defend our clients’ rights and freedom to operate against wrongful charges of patent infringement and related claims. Our experience includes:

  • Representing clients in state and federal court actions, and before the United States Supreme Court
  • Representing clients before the Patent Trial and Appeal Board in IPRs, patent interferences, ex parte reexaminations, and derivation proceedings
  • Assisting pharmaceutical companies with ANDA filings and filings made under section 505(b)(2) of the Federal Food, Drug and Cosmetic Act
  • Defending pharmaceutical companies in Paragraph IV patent infringement actions
  • Representing clients before the International Trade Commission

Transaction-Related Services

We assist clients that seek strategic alliances, joint ventures and other valuable transactions. We work in concert with venture capitalists, industry experts, and counsel to negotiate terms for our clients that can be more favorable than industry standards. We are particularly skilled with the legal aspects of project financing – from seed capital angel investment to mezzanine financing – and understand what investors look for in patent portfolios. We optimize the value of our clients’ intellectual property assets to make them as attractive as possible to potential investors. Our expertise includes:

  • Conducting pre-merger due diligence investigations and evaluations
  • Conducting intellectual property audits of target companies and joint venture candidates
  • Maximizing the potential value of our clients’ intellectual property, products and other business assets
  • Expediting pending patents and determining how to have them promptly issue
  • Drafting and negotiating licensing and cross-licensing agreements
  • Drafting and negotiating intellectual property sales and assignment agreements
  • Drafting and negotiating investor term sheets, contracts, and agreements

As Our Clients Grow and Evolve, Lucas & Mercanti is There to Help

Our firm is never static. We think outside the box and always seek to deliver improved and more comprehensive services.
We are more than your attorneys – we are your partners. Clients often engage us to consult on new business and product concepts that relate to our regular patent services. Some of our corporate clients hire us to actively engage employees to create patent awareness programs, and even establish employee invention compensation programs. These type of crossover services require highly skilled legal, business and scientific expertise that few other firms can offer.

We represent clients of all sizes with varying needs and help them grow every step of the way. Many of our clients are emerging and mid-size companies without legal departments or patent counsel. They instead rely on us to act as their in-house patent counsel. We are very comfortable with this role, especially since many our lawyers have worked in-house. We are also the preferred patent firm for many multi-national conglomerates given our efficiency and our readiness to coordinate with counsel in other countries.