Patent Counseling
Patent Availability Search/Opinion
Once an invention has been conceptually developed, the first
step of the process is to conduct a patent availability
search. We have access to a patent search database
that encompasses both issued patents and published patents
applications from the United States, and around the world. We
will review your invention in light of the existing technology,
which enables us to render an opinion on whether or not your
invention is patentable. While a patent availability search is
not a required step, we believe it is a valuable one, and highly
recommend it.
Product Clearance Search/Opinion
A product clearance search is similar to a patent availability
search, except that, instead of attempting to determine the
patentability of an invention, we conduct a search of the
relevant patent references to determine if a particular
product or service might infringe an existing patent. A
product clearance search is recommended prior to the launch of a
new product.
Infringement/Non-infringement Opinion
Patent infringement occurs whenever someone makes, uses, sells,
offers for sale, or imports in the United States and product
or service that is covered by an in force, issued U.S. patent.
An infringement/non-infringement opinion is a formal opinion on
whether or not a particular product or service infringes an
issued patent. We review the entire
communication ("prosecution history") between the inventor and
the U.S. Patent and Trademark Office, the issued claims, along
with the relevant case law to determine the scope of the claims. We
will then analyze the product or service to determine if it is
covered by the claims.
Validity/Invalidity Search/Opinion
A patent validity/invalidity search and opinion is conducted in
order to determine whether or not an issued U.S. patent is
valid. We review the patent in question, then conduct a search
of the relevant issued patents and published patent applications
from the United States, and around the world, and then provide
an opinion on the strength of the patent in question.
Provisional Patent Application
A provisional patent application allows filing without some of
the formalities of a utility or "regular" patent application.
It enables an inventor to quickly establish a filing, or
priority, date for their application. It also allows the term
"Patent Pending" to be applied. Provisional patent
applications are never examined by the United States Patent and
Trademark Office, and expire twelve (12) months from the
filing date.
Utility Patent Application
A utility, or "regular," patent application is the application
that may issue into a United States patent. A patent gives you
the right to exclude others from making, using, offering
for sale, or selling your invention in the United States or
importing your invention into the United States. A utility
patent application can be filed on a useful process, a machine, an
article of manufacture, or a composition of matter. Once
filed, the patent application is examined by an Examiner at
the U.S. Patent and Trademark Office, usually between twelve (12)
and thirty-six (36) months after filing. For most
applications, the Examiner will reject all of the claims in
a first Office Action. The patent attorney will then provide
arguments and/or amendments to the claims to attempt to
convince the Examiner to issue a patent. Once a U.S. patent issues,
it is in force for twenty years from the earliest filing date,
subject to the payment of three maintenance fees.
Design Patent Application
Design patent applications are filed to protect new, original,
and ornamental designs for an article of manufacture. An
example would be a tread design on a shoe. Design
patent applications consist almost entirely of drawings, with
very little description. Design patent applications are
examined relatively quickly, and are frequently granted within one
year of filing. A design patent is in force for fourteen (14)
years from the issue date, with no maintenance fees
required.
Plant Patents
Plant patent applications are filed to protect new, distinct, a
sexually reproduced variety of plant. Once a plant patent
issues, it is in force for twenty years from the earliest filing
date, subject to the payment of three maintenance fees.
PCT Patent Application
The PCT (Patent Cooperation Treaty) is a treaty between most of
the developed nations of the world. The treaty is designed to
harmonize patent laws between member countries and to make it
easier for an inventor to obtain worldwide patent coverage. At the
present time, over 140 countries have joined the PCT. It
provides a unified procedure for filing patent applications to
protect inventions in each of its contracting states. A single
filing is made with a Receiving Office (RO) in one language.
It then results in a search performed by an International
Searching Authority (ISA), accompanied by a written opinion
regarding the patentability of the invention. A PCT
application does not itself result in the grant of a patent, since
there is no such thing as an international patent. In other
words, a PCT application, which establishes a filing date in
all contracting states, must be followed up with the step of
entering into national or regional phases in order to proceed
towards grant of one or more patents.
International (Foreign) Patent
A patent issued in the United States only gives the owner the
right to exclude others from making, using, offering for sale,
or selling your invention in the United States or
importing your invention into the United States. If you want
to protect your invention in other countries, you must file
patent applications in those countries. One route is to file a PCT
patent application, as noted above. The other route is to file
directly in the foreign countries. We have connections with
colleagues in most countries around the world in order to aid in
the filing of foreign patent applications.
U.S. filing from outside the U.S.
Our firm is well situated to aid non-U.S. counsel in filing
applications in the U.S., either directly from non-U.S.
applications, or through the national phase of a PCT patent
application. We are interested in establishing reciprocal
relationships with non-U.S. firms.
Litigation
Our litigation practice focuses on the protection of our
client's intellectual property rights, and includes patents,
trademarks, trade secrets, unfair competition, copyrights,
and Internet and domain name disputes. We represent both
companies and individuals, and both plaintiffs and
defendants.
Licensing
Our firm has experience in licensing the intellectual property
rights of our clients, including patents, trademarks, trade
secrets, and copyrights. We have experience in both draft and
enforcing license agreements.