Capitalizing on your ingenuity ...
At the core of the patent practice we write patent applications for both U.S. and international filing. This entails working with the inventor to ascertain the necessary details of the invention, and preparing a thorough description of the invention and how it is made and used. We will also prepare a set of patent claims, which are the legal definitions of the invention and a very important part of the application.
As we approach filing, we ensure that any change in ownership from the inventor is appropriately documented and any information required to be submitted to the USPTO is prepared. Once the application is finalized, we submit it and all related documents to the USPTO, at which time the invention is “patent pending.”
Once filed, we monitor the application and respond to any actions issued by the USPTO, which generally entails preparing legal arguments for granting a patent. During this process we may ask the inventor or owner for a sworn statement or declaration of facts supporting our arguments. If necessary we will appeal an examiner’s final decision to the USPTO’s Patent Trial and Appeal Board, and if need be we are able to appeal the Board’s decision in a federal appeals court in Washington, D.C.
If we also have an international patent application filed with the World Intellectual Property Organization (WIPO), we will have the same interactions with the WIPO examiner. There is no appeal of a WIPO examiner’s determination, but no final decision is made during this examination.
We also coordinate with a network of foreign patent attorneys and agents as they prosecute corresponding applications in their own countries. To prevent one proceeding conflicting with another we guide our foreign counsel as they interact with their national patent offices.
Contact Us now to discuss filing a patent application with a registered patent attorney.
In addition to preparation, filing and prosecution of U.S. and international patent applications, our patent practice includes developing strategies for protecting potentially patentable subject matter from conception of the idea to filing of the application. For business clients this aspect of the practice will often involve establishing intellectual property policies enforced through employee agreements regarding ownership of inventions.
Where IP policies include timelines or procedures for disclosing inventions we can prepare invention disclosure forms for the use of employees, thereby ensuring critical information is well documented. In cases where patent rights are to be owned by a company or a person who is not the inventor we will prepare an assignment of rights and other documents to secure ownership and ensure that the inventor is unable to improperly interfere with the prosecution of the patent application.
Contact Us now to discuss pre-filing protection of inventions with a registered patent attorney.
A typical patent license is a multifaceted agreement containing highly tailored terms reflecting the specific estimations of the parties regarding the present and future market for the licensed product. Consequently, the typical patent license is also a generally unique document.
A properly prepared patent license includes many terms that work together to ensure both the performance and the success of each party. It also includes provisions that make clear what is to happen if a party falls short of expectations, and if or under what circumstances the agreement may be terminated. We are available to help clients negotiate favorable terms, and to then prepare a patent license agreement that ensures client expectations are met.
A patent purchase agreement is much more straightforward than a patent license. That said, there are steps we can take to help ensure that the seller has clear title to the patent and that the buyer’s rightful ownership of the patent is protected.
Contact Us now to discuss patent licenses or patent assignments with a registered patent attorney.
In the event of a patent dispute, we are prepared to take action to settle the matter. If it cannot be settled amicably, however, we are also prepared to litigate the matter in a federal court. If appropriate, we may also pursue relief through USPTO administrative proceedings.
These proceedings may include filing a petition for an “inter partes review” or for a “post grant review,” each of which is a proceeding that challenges the validity of a newly granted patent. Where a “substantial new question of patentability” exists a request for reexamination of a patent can be filed up to six years after the patent expires. Where the same invention is claimed by different parties, it may be possible to challenge an earlier filing through a “derivation proceeding.”
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A novelty search can be carried out prior to preparing a patent application for filing, which can include an opinion based on the search as to whether the searched for invention is likely to be patentable. In-depth searches can also be carried out as the basis for evaluating the validity and scope of a patent in the context of litigation, sale or license of a patent, or prospective manufacture of a patented product. In preparing an infringement opinion, the in-depth search and validity opinion is important to ensuring the scope of each patent claim is correctly assessed. We can conduct any level of search and render a corresponding opinion as requested by a client.
Contact Us now to discuss patent searches, patentability opinions, or patent validity opinions with a registered patent attorney.
If you have a different patent issue Contact Us now to discuss it with a registered patent attorney. It is very likely that we can help you.