Intellectual property is an essential part of your business.

The first step in most cases is to determine if an invention or trademark is eligible for protection. If protection is deemed to be available, the appropriate filings with the USPTO are made to obtain the widest protection available.

Trademark

In the vernacular, we ask if a trademark is “available.” Trademarks don’t need to be new or novel words, but the mark must be available to be registered. A Trademark Search is conducted to gather relevant details and then an Opinion Letter is prepared to apply the law to the gathered facts and determine if the trademark is likely registrable. If success is expected, a trademark application can be prepared and filed with the USPTO. A trademark attorney can inform you about what to expect in the trademark registration process at the USPTO.

Patent

The availability of patent protection is more difficult to predict because of the novelty requirement of Section 102 and the non-obviousness requirement of Section 103 of the Lanham Act. Even if an invention is considered to be novel in the opinion of the inventor and of counsel, an application is almost always met with a refusal. The process of gaining patent protection requires significant back and forth with the Examiner. A patent search is usually conducted to determine if any prior patents or references anticipate the invention or render the invention obvious. This is a potentially time consuming effort, but is useful to determine the scope of patent protection that may be available. A Patentability Opinion is usually rendered. If no close references are found, an application can be prepared and filed with the USPTO. Only practitioners registered to practice before the USPTO can represent clients in patent matters.

Trademark registrations must be renewed between the 5th and 6th anniversary of the registration date. They must be renewed again prior to the 10th anniversary and every ten years thereafter. The USPTO provides information about trademark renewal here.

Issued patents must be maintained and require the payment of maintenance fees at the 3rd, 7th and 11th anniversary of the issue date. The USPTO provides information here.

For patents and trademarks, the USPTO allows a six month grace period for late filing with the payment of an additional fee.

Intellectual property rights are not self-enforcing. The owner of the rights must monitor for infringing activities. We can conduct periodic monitoring to discover infringing uses in the market, or pending applications of interest at the USPTO.

When infringing activity is discovered, the other party can be contacted and informed of your rights. If a Cease and Desist letter is successful further action may not be necessary. If filing suit is required, we can obtain local counsel and assist in litigation in the appropriate jurisdiction. This is typically the jurisdiction where the defendant is located or does business.