Practice Areas

Patent Prosecution

We possess more than 30 years of experience with patent prosecution before the U.S. Patent and Trademark Office, with respect to the Patent Cooperation Treaty (“PCT”), and before various National Patent Offices worldwide. We provide a full range of services from the drafting of utility patent applications through to the issuance of patents. We also assist clients develop strategies for protecting product lines. In effect, we partner with clients to act as their in-house patent advisors.

We have considerable experience with the preparation and prosecution of design patent applications before the U.S. Patent Office and also before other patent offices worldwide. Design patent protection may be an invaluable tool to help companies protect their intellectual property.

International patent protection is a necessity for clients that operate in several countries. We have considerable experience with the prosecution of patents through the PCT as well as the protection of patents under the Paris Convention. Given the breadth of our clients, we routinely file applications in foreign countries and assist clients with obtaining patents in the United States based on foreign priority applications. We have strong relationships with many law firms outside of the United States with whom we have partnered to provide clients a seamless international operation.

 

Trademark Prosecution

We routinely assist clients to protect and maintain the protection of their valuable trademarks in the United States and, with assistance from foreign counsel, worldwide. We have considerable experience filing and prosecuting trademark applications in the United States and internationally. We routinely prosecute trademark applications and provide clients strategic advice concerning the trademark prosecution process. We also help clients with the selection and clearance of trademarks prior to filing with the United States Patent and Trademark Office. In many cases, we have partnered with our clients to act as their in-house trademark counsel.

We have assisted clients with targeted product and other kinds of clearances. We have prepared opinions that provide guidance to our clients developing new products.

Our experience with trademarks extends beyond the trademark registration process. We are often asked to file or defend Opposition and Cancellation Proceedings against trademarks in the United States. We also have considerable experience with defending trademarks should a third party oppose or seek to cancel a client’s registration. We also stand ready to investigate trademark use in the United States in the event of trademark impingement. We have close relationships with firms that specialize in investigating trademark use in the United States should circumstances warrant such an investigation.

 

Litigation

We are not strangers to litigation should it be necessary for clients to enforce their patent or trademark rights or defend against charges of infringement. In the context of patent and trademark litigation, we have appeared before many federal district courts on behalf of both patent and trademark owners and accused infringers. We also police intellectual property rights for clients to identify potential infringements and advise accordingly.

 

Opinions

As part of our broad spectrum of intellectual property services, we provide opinions concerning the validity, enforceability and infringement of the rights of others. Most often, this arises in both the patent and trademark contexts.

Product clearance opinions are sometimes desired or required, for example, when a client introduces a new product to the marketplace. In this context, the client typically seeks to understand the scope of patent rights obtained by others to avoid infringement. Often, this involves considering one or more potential product designs that the client is developing.

In other contexts, specific patents are the focus of a client’s concerns. These issues may surface, for example, when a client receives a licensing request or when a client receives a cease-and-desist letter.

Here, an evaluation of the validity, enforceability and infringement of the patent rights is more important, typically, because patent infringement litigation is (or may become) a real possibility. Opinions of this type may be desired, for example, to defend against a charge of willful infringement in patent litigation.

As noted, we are also familiar with and have prepared opinions in the context of other intellectual property rights, such as trademark rights and/or design patent rights.