Main Services

Effective legal representation in all areas and phases of Intellectual Property (IP) law include three distinct but related skill sets.

Careful, accurate and thorough drafting of documents is the necessary foundation for the protection and use of intellectual property. The skill and care exercised in drafting documents often determines the ultimate outcome of intellectual property matters. This is particularly true with respect to licenses and patents.

Effective representation before various government agencies is essential to securing Intellectual Property rights. Patent, trademark, service mark, and copyright rights all involve some interaction with government agencies during their procurement phases.

IP law is too complex to completely describe on this web site. The following tabs describe the main services we provide.

First we conduct a preliminary interview with client. From this the invention disclosure is obtained and the client is counseled as to what the requirements are, what the process is, etc.

Usually, second, we commission a preliminary prior art search and provide a written opinion about whether the invention can be patented.

Then we prepare an application and drawings for the invention. The application and drawings are sent to the inventor for review and comment. Pertinent comments are included and the application and drawings finalized. We prepare the required and e-paperwork, and file the application, drawings, fee and e-paperwork with the USPTO electronically.

In the first Office Action (OA), the USPTO usually rejects some or all of the claims. We receive and review OA and advise the client of the options for responding, the time limits for responding and the risks involved in not responding.

Upon approval from the client we conduct preliminary discussions with the Examiner and draft an official response. The response usually includes amendments to the original claims and arguments. It may also include amendments of the specification and drawings. The response is electronically filed with USPTO and the client is informed.

Sometimes this OA and response cycle must be repeated several times. There are times we need to appeal the Examiner's final rejection to the Appeal Board.

Usually, eventually, we achieve allowance for the client. At this point the issue fee is paid and, if required, formal drawings are prepared and filed. After the patent issues a maintenance fee must be paid every 4 years. The following chart summarized summarizes US Patent Prosecution.

US Utility Patent Prosecution

Trademark Search

If desired by the client, we either commission a full search from a vendor with databases of Federal, State, foreign and common law marks or do an interactive on-line search. The on-line search does not include common law marks and so is frequently used for purposes of preliminary elimination of marks.

In either case, we analyze all the marks found and provide the client with a detailed, written opinion about whether we believe they can register their mark(s) and whether we foresee other problems such as Opposition or infringement litigation.

Trademark Filing

We file U.S. Federal trademark applications on-line using the USPTO TEAS facility. We file use-based and intent-to-use applications depending on whether the client has already used the mark on the date of filing.

We use various associates to file foreign trademark applications. The foreign associates consult us for direction about the prosecution of each mark if needed

Trademark Prosecution

We take care of any needed prosecution of the applications, including responding as appropriate if the USPTO issues any Office Actions.

We also handle Oppositions and Cancellation Actions. In the past, we have done such actions on paper, but now file electronically, using the on-line facility provided by the TTAB.

The charts on the following pages summarize US Trademark Prosecution.

US Trademark Prosecution

We conduct a preliminary interview with client. From this the invention disclosure is obtained and the client is counseled as to what the requirements are, what the process is, etc.

Usually, first, we commission a preliminary prior art search and provide a written opinion about whether the invention can be patented. Then we prepare an application and drawings for the invention. The application and drawings are sent to the inventor for review and comment. Pertinent comments are included and the application and drawings finalized.

We then prepare the required e-paperwork and file the application, drawings, fee and e-paperwork with the USPTO electronically. The client is electronically notified.

In about 16 months, we receive and review the International Search Report. If necessary we advise the client of the options for responding, the time limits for responding and the risks involved in not responding. We also counsel the client on best method for responding.

If a response is necessary, upon approval from the client we prepare and file an Article 19 Amendment and/or make a Demand for International Preliminary Examination under Chapter II of the treaty. The response typically includes amendments to the original claims and arguments. Under Chapter II, it may also include amendments of the specification and drawings. The response is electronically filed with International Bureau and the client is informed.

Well before the end of the PCT process we advise the client on entering the National Stages. The following chart summarizes US Patent Prosecution.

Developing and patenting an invention is only half the battle on the road to financial success. Someone must also profitably make and sell the invention. For the individual inventor without significant experience in manufacturing, importing, distribution and marketing these tasks can be daunting and expensive. A more reasonable path is to license the invention to a company with the experience and infrastructure to handle these tasks.

We have significant experience with the development and negotiation of licensing arrangements and can help you to handle this complex and difficult process. In a license agreement the inventor authorizes a person or company to make and sell the invention for a portion of monies (royalty) received from the sale of products.

We understand of all the factors to be considered and can write and negotiate a licensing agreement that will have value. The drafting of a successful license agreement involves: whether it is to be exclusive or non-exclusive, how and when the licensee will pay, how to determine payment for all sales, and the appropriate royalty rate.