Patents

A company's patent portfolio can be its most valuable asset.  We can:

• prepare and prosecute patent applications throughout a full spectrum of technologies including electrical, mechanical, computer software, chemical, and business method technologies
• perform patentability searches and write opinion letters
• help develop and maximize the value of patent portfolios
• perform patent clearance studies for new products
• prepare infringement and validity opinions
• coordinate foreign filings of domestic applications

Our firm prefers to provide clients with a fixed fee pricing structure for most patent work.  This provides certainty to the client and avoids discouraging clients from communicating with their attorneys for fear of being charged for every phone call and email.

Trademarks

Trademarks are terms, phrases, logos, colors and sounds whose purpose is to inform consumers of the source of particular goods or services. For example, the PEPSI® term and the red and blue circle logo are each trademarks that identify a brand of cola.  Trademark law has two important functions.  The first function is to protect consumers from being duped by the use of confusingly similar trademarks on related goods or services.  The second function is to protect the trademark owner by preventing others from passing their products off as those of the trademark owner. Federal trademark registration provides a convenient path for trademark owners to protect their rights. Federal registration of a trademark will allow the mark owner to place the ® next to the mark and provide notice to others that the mark is an existing registered trademark. We can:

• conduct trademark searches and prepare registrability opinions
• prepare and file trademark applications
• respond to office actions
• prepare trademark renewals
• monitor registered trademarks for unauthorized use
• file trademark oppositions and petitions to cancel

Copyrights

Copyright protection may provide protection and remedies where patent and trademark protection may fall short or may not be available. With regard to your copyright needs, we can:

• prepare, file, and prosecute copyright applications
• take steps to remove infringing material from the Internet
• prepare copyright infringement opinions
• enforce and defend copyright infringements
• provide counseling regarding the Digital Millennium Copyright Act and other copyright statutes
• prepare licenses of copyrighted material

Litigation

The enforcement of intellectual property rights often requires litigation. Litigation involving patents, trademarks and copyrights typically occurs in federal court. Trademark infringement and cases involving cyber-squatting are covered under the Lanham Act, which allows for the recovery of injunctive relief, damages, and attorney’s fees in some cases. The Copyright Act governs disputes involving copyright infringement and the Patent Act controls those regarding patent infringement. In addition to infringement issues, litigation in federal court can be required to determine the validity of a party’s intellectual property rights, the meaning of patent claims, and the ownership of such rights among other matters. We can:

• prepare and file pleadings
• conduct discovery
• prepare and file motions
• argue cases at trial
• file and litigate appeals
• negotiate settlements

Licensing

One common goal of developing intellectual property assets is so that they can eventually be licensed to a licensee. License agreements are very complex documents which should address all possible positive and negative scenarios. Both licensors and licensees commonly find themselves stuck in situations where they are not happy with the terms of their current license. Thus, it is important that an attorney experienced in licensing agreements prepare and negotiate any type of intellectual property license. We can:

• negotiate and prepare license agreements (licensor or licensee)
• review executed license agreements
• identify legal recourses available if you wish to terminate an existing license agreement

Domain Name Disputes

The Uniform Domain-Name Dispute-Resolution Proceeding (UDRP) is similar to an arbitration proceeding and was developed to resolve disputes involving domains that contain terms that may be owned by others. The domain will be transferred from a registrant if it contains a trademark, was not registered for a legitimate purpose, and was registered in bad faith. Bad faith is determined by the intentions of the registrant. We can:

• initiate UDRP proceedings
• represent either registrant’s or complainants before a UDRP administrative panel
• negotiate settlements of UDRP proceedings
• take disputes out of the UDRP and into federal court when necessary

Administrative Proceedings

The Trademark Trial & Appeal Board (TTAB) is a three judge administrative panel that hears cases wherein parties: oppose the registration of an applied for mark, petition for cancellation of a registered mark, or appeal the decisions of examiners. The TTAB follows procedures nearly identical to the federal rules of civil procedure followed by all federal courts.

• initiate TTAB proceedings
• represent parties in such proceedings
• conduct discovery, prepare and submit motions and briefs
• negotiate settlements of TTAB proceedings
• take disputes out of the TTAB and into federal court when necessary

Trade Secrets

Information that is not publicly known is protectable by the law of trade secrets. Trade secret protection is typically used when a technology is not protected by a patent. Non-disclosure agreements are commonly used by inventors to protect their trade secrets before they show their invention to outside parties.  Inventors commonly sign “boilerplate” non-disclosure agreements they find online. However, non-disclosure agreements can be subject to numerous pitfalls and an attorney should always prepare and review non-disclosure agreements signed by any party. We can:

• review and prepare non-disclosure agreements (NDAs)
• perform trade secret audits and help ensure your trade secrets maintain trade secret status
• pursue remedies if someone has misappropriated your trade secrets

IP Portfolio Audits

Whether you are purchasing an IP portfolio or investing in a startup, it is important to undertake an objective evaluation of the portfolio.  Startups typically claim that their technology is “patent pending” but this means nothing as anyone can file a patent application on anything.  Before investing any money, a careful review of all patent and trademark documents is essential.  We can:

• review issued patents to evaluate what the claims cover
• review issued patents to confirm validity in view of prior art
• review pending patents to determine likely outcomes at the USPTO
• review status of trademark applications and registrations, including the status of renewals
• confirm proper title of patents and trademarks
• generate a complete report exploring all issues regarding an IP portfolio

Copyright Troll Defense

In recent years, a spate of copyright owners (most notably pornography producers like Malibu Media) have begun to assert their intellectual property rights in a calculated campaign to initiate mass litigations.  Using off-shore “investigative” technology companies, "copyright trolls" target BitTorrent (and other file-sharing programs) users and bring copyright infringement suits against them.  In many cases, the trolls attach exhibits to the legal complaint citing a long list of embarrassing name titles, in the hopes of shaming an individual into settlement.  At first, these trolls must initiate a “John Doe” lawsuit, with only an individual’s internet protocol (IP) address as the identifier.  Through the power of the courts, these trolls subpoena internet service providers (ISPs) such as Comcast and Verizon into disclosing the identity of the subscriber assigned to the “infringing” IP address, with the intent to publicly identify the subscriber for the purposes of the suit.

While it is understandable that copyright owners seek compensation for infringements, the tactics in which some of these trolls operate can resemble an extortion scheme.  Unfortunately, because there have been no substantive rulings as to the trolls’ practices, these cases continue to be filed across the country at an excess of over 1000 cases per year.  If you or someone in your household has received a communication from your internet service provider that informs you that they have been ordered to provide information as to your identity, you should seek the advice of counsel immediately.  Our firm has dealt with these trolls in the past, and can assist and advise you in the proper course of action to take in a copyright infringement lawsuit.  Our firm can assist with the following services:

• Motions to quash
• Motions to dismiss
• Settlement negotiations
• Copyright litigation discovery and defense