We provide tailored services for securing, protecting, and monetizing your intellectual property assets. We provide our services on a pre-agreed-upon flat fee basis when possible. To explore our services in detail, click on the desired service on the left.
- Patent Filing and Prosecution*
- National Phase Entries*
- Patent Validity Challenges and Defense in the United States and Around the World
- Trade Secrets
- Intellectual Property Opinions
- Portfolio Management
- Litigation Management and Support
- The Economic Espionage Act
- Training Seminars*
- Specialized Due Diligence
- Acquisition and/or Divestiture of Intellectual Property Assets
- Intellectual Property Valuations
- Intellectual Property Audits
The Firm’s Patent Filing and Prosecution Process
Attorneys at the Firm draft, file, prosecute, defend, enforce, and license patents. The Firm’s attorneys typically travel to the customer’s location to create the necessary personal working relationship with inventors by interacting directly with them. The Firm’s attorneys enjoy being “hands on” by participating in meetings with the inventors, designing experiments, assisting in the lab, and analyzing experimental results with the inventors. Inventors do not hesitate to contact the Firm’s attorneys, because the inventors know there is no charge for each communication under our flat fee. The Firm sends attorneys to the customer’s location so that they can draft a better quality patent application by touching and feeling the invention. It is well known that, in addition to having significantly higher costs in the later stages*, poor quality patent applications are less likely to issue, more difficult to enforce, and are often invalidated.
Why File for a Patent?
Patents increase the value of a business in three ways:
- Patents offer business owners the ability to keep others from making, using, or selling their patented products or processes. This means a patent owner can use its patented product or process to gain market share or increase margins.
- Businesses can license or sell patents, generating residual income that would not otherwise flow to the business.
- Patents increase the investment value of a business. Many investors and lenders will not risk investing in a business that does not have some type of patent protection for its products and processes.
Businesses that fail to investigate and use a patent strategy potentially miss significant opportunities.
Do Not Delay
Do you have an invention that you wish to commercialize or show to others? If so, contact a patent attorney – any patent attorney – immediately.
Patent laws offer no forgiveness regarding disclosing the invention before filing the patent application. Failing to file a patent application before disclosing your invention to others will make it almost impossible to obtain a patent. The disclosure rules have few exceptions.
Types of disclosure include, but are not limited to:
- Showing or displaying your invention to potential investors, friends and family
- Applying for state or federal funding
- Applying for small business loans
- Using your invention in the presence of others
- Offering to sell your invented products or processes
If you have an invention and would like to speak with an attorney at the Firm about patenting your invention, please contact us as soon as possible.
*Patel, Sheetal, “Want to Cut Costs? Get Back to Basics,” IP Law and Business (October-November 2009), pages 31-32
The Firm’s National Phase Entry Process
Attorneys at the Firm enter and prosecute the United States national phase portion of Patent Cooperation Treaty (PCT) and Paris Convention patent applications. Before filing a United States national phase application, the Firm’s attorneys conduct a thorough review of the application and the business objectives. Attorneys at the Firm provide guidance and advice regarding claim strategy and the intricacies of United States law throughout prosecution. The Firm’s IT infrastructure allows us to efficiently manage this process so that most of the components of the Firm’s National Phase Entry and Prosecution services can be provided on a flat-fee basis.
The Firm’s Trademark Process
Attorneys at the Firm advise businesses as their brand images develop over time. This includes reviewing and searching the trademark records to determine if the business can freely use the desired trademark. Once a business decides upon a trademark, the Firm’s attorneys register the trademark with the United States Trademark Office, and coordinate trademark registrations in other jurisdictions (i.e. states and other countries). The Firm’s attorneys continue to advise the business on how to maintain the trademark or trade dress, and how to avoid the liability of improperly using the trademark.
Liability from Improper Trademark Use
Liability occurs, often unknowingly, when a business crosses into a new class of goods or services. For example, manufacturing businesses often place their trademarks on promotional items, such as clothing. The liability occurs because, while the manufacturing business can freely use its trademark on its own products, using the trademark on clothing may infringe upon the trademark rights of a clothing and apparel company that already uses that trademark. This scenario underscores the importance of engaging an attorney early on and using the attorney throughout the branding process to reduce liability risks, or avoid liability all together.
Why Businesses Should Register Their Trademarks
Businesses spend millions of dollars creating their brand image to set their products or services apart from their competitors’. Trademarks and trade dress are part of this brand image, and are protectable by trademark law. A required component to protecting the brand image is selecting legally enforceable logos, product names, service names, and trade dress. Failure to select legally enforceable trademarks or trade dress means that your competitor can associate their goods or services with yours and sell their goods or services using your trademark or trade dress. This results in a loss of sales and dilutes the value of your goods and services in the eyes of your current and potential customers and investors.
If you would like to speak with an attorney at the Firm about trademarks, please contact us for more information.
Challenging the Validity of a Competitor’s Patent
Businesses often find that a competitor’s patent blocks key business activities, making it necessary to challenge the validity of the competitor’s patent. Many businesses are not aware that the validity of a competitor’s patent can be challenged.
Defending the Validity of Your Patent
Many businesses find that defending the validity of their own patents is a time-consuming and frustrating process, your competitors may challenge the validity of your patent, making it necessary to defend the validity of your patent.
The Firm’s Validity Services
A successful validity challenge or validity defense requires:
- A significant amount of legal expertise, with the ability to effectively communicate to the tribunal
- An in-depth understanding of the technology
- In many cases, well-designed experimental evidence
The Firm’s attorneys have been involved in successful challenges and defenses of patents around the world, either as an attorney or technical expert, since 1999. In the United States, the Firm’s attorneys directly challenge the patent validity in front of the United States Patent Office. Recent challenges have involved patents that were the subject of litigation.
The Firm’s attorneys have also managed and coordinated multiple patent validity challenges and defenses outside of the United States through our international network. For instance, Ed Sisson has directly participated in approximately two patent opposition proceedings per year in the European Patent Office.
In addition to Ed Sisson’s participation in the European Patent Office hearings, attorneys at the Firm found the prior art, drafted the initial substantive arguments, reviewed the briefs, identified the technical experts, designed the experiments, wrote the technical reports, and worked directly with local counsel to effectively communicate with the tribunal.
If you would like to speak to an attorney at the Firm regarding patent validity challenges, please contact us for more information.
The Firm’s Trade Secret Services
Attorneys at the Firm work with businesses to identify information which constitutes a trade secret and to develop procedures to maintain that information as a trade secret.
Why Businesses Should Use an Attorney to Help Protect Their Trade Secrets
Trade secrets last forever. They are one of the most valuable types of intellectual property. There are very specific legal requirements to establishing and maintaining particular information as a trade secret, making trade secrets some of the most difficult intellectual property assets to identify and protect.
The law requires much more than simply referring to something as a trade secret. Failing to follow the specific legal requirements for establishing and maintaining information as a trade secret, prohibits the businesses from obtaining court relief (injunctions and/or damages) for someone else’s improper use of the trade secret.
If you would like to speak to an attorney at the Firm about trade secrets, please contact us for more information.
The Firm’s Copyright Services
Attorneys at the Firm work with businesses to secure the proper permissions for using the works of others (e.g. in website content, on blogs, and in sales and promotional literature) and to identify and register copyrights for their own works.
Liability for Improper Use of Others Copyrights
Many businesses significantly expose themselves by failing to properly secure the right to use a drawing or photograph. Failing to properly secure the right to use someone else’s work extends far beyond the unauthorized use of clip art. The Firm’s attorneys often find that the copyright to a company’s logo or trademark has never been assigned to the company. While the company has the right to use the logo or trademark as a trademark, without an assignment to the copyright, the business never had the right to reproduce the logo or trademark on business cards and promotional literature.
Why Businesses Should Register Their Copyrights
Businesses that register the copyright to their critical drawings, photographs, videos, and written works can to seek significant monetary compensation when someone else reproduces their critical works, such as copying a photograph or text from their website. Businesses that fail to register their copyright typically cannot attain compensation.
If you have would like to speak with an attorney at the Firm about copyrights, please contact us for more information.
The Firm’s Licensing Process
Attorneys at the Firm have significant global licensing experience. The process starts with our attorneys working with you to identify and develop your business’s objectives for the licensing strategy, and continues by negotiating the license(s) for you if you desire and, of course, drafting the licensing agreement(s).
Licensing: The Power of Leverage
Licensing provides a valuable way for your company to make money from your intellectual property. In our experience, many businesses become frustrated with the lack of financial return on their intellectual property protection investment. A successful licensing strategy provides one way to increase returns on intellectual property investment. Licensing also brings certainty to the market without initiating, or being the object of, litigation.
If you would like to speak to an attorney at the Firm about intellectual property licensing, contact us for more information.
The Firm’s Opinion Services
The Firm’s attorneys provide legal opinions answering the four most common questions:
- Patentability: Is my product or process patentable?
- Validity: Is a patent valid and enforceable?
- Infringement: Does my product or process lie within the claims of a patent?
- Freedom to Operate/Use: Are there any patents or trademarks which would prevent me from making and selling a particular product, practicing a process, or using a specific mark?
The Firm’s Stage-Gate Approach
The Freedom To Operate (FTO) opinion usually requires a professional search to uncover the granted patents or existing trademarks that may be pertinent to the business’s objectives, making it one of the most extensive opinions. Then the opinion evaluates the infringement question and the validity question. In many instances, the opinion need not be completed or formalized for the business to take appropriate action. The opinion process can be broken into stages, and the Firm conducts all its opinions using these stages, with the fee structure mutually agreed upon before beginning the work.
If you would like to speak to an attorney at the Firm about an intellectual property opinion, please contact us for more information.
Why Businesses Need IP Portfolio Management
Businesses with multiple patents and other intellectual property assets often need the skills of an intellectual property professional to help establish their strategies and objectives regarding intellectual property.
The Firm’s IP Portfolio Management Services
Attorneys at the Firm often take the lead responsibility to work with management to develop the proper strategies to meet the business’s objectives. This includes the filing strategy (countries in which to file), maintenance strategy (how long to maintain the intellectual property), and monetization strategy (licensing and enforcement).
After the strategy is set, the Firm’s attorneys coordinate their execution in the United States and throughout the world using an established network of foreign associates. The Firm’s investment in IT infrastructure allows its attorneys to efficiently manage your intellectual property portfolio.
If you would like to speak to an attorney at the Firm regarding intellectual property portfolio management, please contact us for more information.
The Firm’s Litigation Services
All businesses face the risk of litigation. The Firm’s attorneys have experience directly representing customers and serving in a general counsel capacity during many types of litigation, including breach of contract, trade secret, patent (assertion and defense), employment, and the Economic Espionage Act. Attorneys at the Firm also provide technical expertise to support litigation which include providing expert reports, designing experiments to prove infringement, non-infringement, and/or invalidity, and analyzing and advising on the research process.
If you would like to speak to an attorney at the Firm about a litigation matter, please contact us for more information.
What is the Economic Espionage Act?
The Economic Espionage Act (EEA) makes misappropriating or attempting to misappropriate someone’s confidential information a federal crime. The United States federal government enforces the Economic Espionage Act through the Department of Justice at the government’s expense. This makes the EEA a powerful tool for the business alleging misappropriation.
The Firm’s Economic Espionage Act Services
The Firm’s attorneys have experience navigating businesses through the complex criminal and civil issues involved in defending an EEA allegation. Attorneys at the Firm assist businesses in understanding the business and personal implications involved in an Economic Espionage Act complaint or allegation and the nearly inevitable follow-on civil lawsuit from the complaining party.
Attorneys at the Firm have experience assisting businesses in making a complaint to the federal government under the Economic Espionage Act.
The Firm’s attorneys also advise clients on how to conduct research on competitors without violating the Economic Espionage Act.
If you would like to speak to an attorney at the Firm regarding the Economic Espionage Act, please contact us for more information.
Why Businesses Need Intellectual Property Training
All businesses, develop proprietary intellectual property, such as brand images, secret processes, written, visual, or auditory artworks, and patents. After all, if a business doesn’t do at least one thing better than its competitors, it will not survive. Unfortunately, many businesses do not recognize these developments as intellectual property, and fail to protect the competitive advantage which comes from them.
The Firm’s Intellectual Property Training Seminars
The Firm’s attorneys conduct free training seminars designed to help businesses identify patentable ideas, identify and properly protect secret processes, protect their brand image, and identify and protect critical written, visual, or auditory artworks. Experience shows that the number of patent applications, trade secret protections, trademark applications, and copyrights significantly increases after employees attend our seminars. The mere filing of these applications raises the value of the business, making it easier to secure capital, borrow money, and compete in the marketplace. Successful application(s) raise the value of the business even more, as the intellectual property grant(s) are monetizable asset(s).
If you would like to speak to an attorney at the Firm regarding training seminars, please contact us for more information.
The Firm’s Specialized Due Diligence Services
Attorneys at the Firm have extensive experience complementing larger general practice law firms in due diligence transactions. This specialized experience in intellectual property matters adds value to the due diligence process. The Firm’s attorneys are usually engaged as part of the larger due diligence process to investigate and conduct the specialized due diligence regarding intellectual property assets. Attorneys at the Firm have conducted the intellectual property due diligence for IPOs, acquisitions, sales, and investments. This has ranged from conducting the IPO due diligence for a business with over 600 patents around the world to highly specialized investigations into pending patent infringement litigation for venture capital.
If you would like to speak to an attorney at the Firm regarding specialized intellectual property due diligence, please contact us for more information.
Intellectual assets are property and can be bought and sold just like a building or a car. Intellectual property assets can be bought or sold individually or as part of the purchase or sale of a business.
Acquiring Intellectual Property Assets
Special care is needed when buying an intellectual property asset. Businesses often find it difficult to identify the necessary assets, define the scope and validity of those assets, verify the ownership of the assets, and negotiate the terms for purchase of those assets. Attorneys at the Firm have been involved in this process from a leadership position to an advisory position and can help you as you seek to acquire someone else’s intellectual property assets.
Selling Intellectual Property Assets
Selling an intellectual property asset also requires special care, particularly when that asset is registered in multiple countries. Businesses often find it difficult to identify a buyer, define the scope of the assets being sold, and negotiate the terms of the sale. Again, attorneys at the Firm have been involved in this process from a leadership position to an advisory position and can help you as you seek to sell your intellectual property assets.
If you would like to speak to an attorney at the Firm regarding acquisition and/or divestiture of intellectual property assets, please contact us for more information.
The Firm’s Intellectual Property Valuation Services
Intellectual property assets (patents, trademarks, copyrights, and trade secrets) often represent a significant portion of a business’s value. Businesses often request a valuation of intellectual property assets for the purposes of accounting, taxation, investment, borrowing, licensing, internal transfer, or purchase/sale. A valuation is essential in determining whether an offer, asking price, or royalty rate is realistic. Businesses that do not obtain an intellectual property valuation risk overpaying for someone else’s intellectual property assets or leaving money on the table when selling or seeking an investment in their intellectual property assets.
The Firm has provided many valuations ranging from one domestic patent application to multinational patent and trademark portfolios.
If you would like to speak to an attorney at the Firm regarding intellectual property valuations, please contact us for more information.
Attorneys at the Firm provide several types of intellectual property audits to ensure that your intellectual property is being properly protected and that you are not improperly using someone else’s intellectual property. The Firm’s intellectual property audit services include:
Website and Blog Review and Training
Many copyright and trademark owners use automated software to search the web for the unauthorized use of their materials. These owners often send the unauthorized user a letter demanding compensation. Failure to pay may result in copyright or trademark infringement litigation. Attorneys at the Firm will review your website and blog and provide proper training to help reduce the risks associated with the unauthorized use of copyrighted and trademarked materials.
Trade Secret Review
Trade secrets last forever and are one of the most valuable types of intellectual property. There are very specific legal requirements to establishing and maintaining particular information as a trade secret, making trade secrets some of the most difficult intellectual property assets to identify and protect.
The law requires much more than simply referring to something as a trade secret. Failing to follow the specific legal requirements for establishing and maintaining information as a trade secret prohibits the businesses from obtaining court relief (injunctions and/or damages) for someone else’s improper use of the trade secret.
Attorneys at the Firm work with business owners to identify information that constitutes a trade secret and develop procedures to maintain the confidential information as a trade secret.
In addition to identifying and developing procedures around trade secrets, the Firm’s attorneys can audit your physical facilities to identify and close gaps in security that may result in your confidential information, including trade secrets, being leaked or otherwise misappropriated.
IT Licensing Review
Some of the largest monetary payments for copyright infringement have come from business’s unlicensed use of software. In fact, a software industry policing organization rewards individuals for reporting the use of unlicensed software. For example, many software companies provide their software to university students at a significantly reduced price. Businesses cannot use these student versions of software. Another example occurs when businesses improperly use of a free “home version” of particular software on a business computer. These improper uses often occur unknowingly by well-meaning employees. Attorneys at the Firm work with the business and its IT professionals to review the currently-installed systems for proper licenses, and establish procedures and education programs to help prevent unauthorized software use by individual employees.
If you would like to speak to an attorney at the Firm regarding intellectual property audits, please contact us for more information.
*Currently provided on a flat-fee basis.