info@patentlaw.us
(949) 340-9736Intellectual Property
We represent our clients in a wide variety of intellectual property matters before the U.S. Patent and Trademark Office (USPTO), federal courts, and the International Trade Commission (ITC). We advise and represent our clients in patent disputes and litigation, patent drafting & prosecution, post-grant procedures such as inter-partes review, licensing procedures, portfolio evaluation and due diligence, and evaluations of patent essentiality to standards for patent pools. We also advise our clients with regards to trade secrets, trademark applications and disputes, and copyright ownership and related disputes.
Patent Applications
Our firm drafts quality and enforceable U.S. patents, and we competently prosecute them through allowance. We also maintain relationships with foreign counsel, who we manage to obtain foreign patent coverage for our clients, as needed.
Preparation & Filing: We pride ourselves in our excellence and experience in preparing and prosecuting high-enforceability patent applications in the United States Patent and Trademark Office, and to manage filing in foreign jurisdictions.
Domestic & Foreign Prosecution: We are experts in helping clients, ranging from large public corporations to cutting-edge start-ups, to make the foreign and domestic filing decisions that best support their particular goals and business situation.
Invention Disclosures: We have helped our client’s organizations establish procedures to reliably capture, document and protect the inventive activity of their employees, and screen which inventions to patent, publish, or keep secret.
Prior Art Searches, IDS: Well-written patent claims maximize coverage of the invention while avoiding the prior art. Comparison to a thorough prior art search ensures that patent claims are drafted with appropriate scope. We prepare information disclosure statements (IDS) to help patent applicants meet their duties of candor and disclosure to the Patent Office.
Utility and Design Patents: When most people think of a patent, they’re really thinking of a patent on an invention’s utility. There’s another popular kind in the United States: a design patent, which are cheaper and don’t last as long, and they don’t cover utility but rather the aesthetic appearance of an invention. We can help our clients obtain patent coverage for the functional and the aesthetic aspects of their inventions.
Patent Disputes & Litigation
The practice of each of our lawyers includes both patent disputes & litigation and patent drafting & prosecution. That practice mix maintains our expertise in attacking and defending patents in litigation, and also helps us improve the enforceability of the patents that we write.
Patent Disputes: We provide support for all aspects of patent litigation, including analyzing patent infringement, validity, and enforceability issues, handling all aspects of discovery and patent claim construction, and more. These matters may involve raising or defending against accusations of direct infringement or indirect infringement (i.e. inducement or contributory infringement).
Plaintiffs & Defendants: Clients turn to us for our experience, knowledge, and technical expertise. We have been on both sides of a patent dispute. In each case, we first listen carefully to our client, and then apply our deep technical and legal experience within the scope of our lead or supporting role, to help our client meet its objectives.
Tech Expert Declarations and Depositions: All of our partners have more than one engineering degree, engineering industry experience prior to the practice of law, and patent litigation experience. Hence, we are very effective deposing and cross-examining our opponent’s technical experts to ensure that their opinions don’t deviate from the truth.
Settlement Negotiations and ADR: Settlement negotiations and alternative dispute resolution (ADR) proceedings are often the first or best opportunity to ensure that the opposing party learns about the weaknesses in their case, without reframing or filtering from their own counsel. An effective presentation may soften the opposing party’s settlement position.
Appellate Litigation: We prepare and file appellate briefs on behalf of our clients (if necessary), particularly in cases before the U.S. Court of Appeals for the Federal Circuit, and we prepare for all aspects of oral argument as well.
Clearance Searches & Opinions: We have the credentials and experience to provide our clients with clearance opinions and right-to-use investigations that they can reasonably rely upon to manage business and litigation risk.
Patent Invalidity Searches: Often the USPTO does not find the closest prior art before granting a patent. We can conduct or commission a more thorough search, for example during or in anticipation of litigation, which may identify invalidating prior art that can be used to motivate favorable settlement.
Pre-litigation Negotiations and Litigation Avoidance: In many cases, litigation can be avoided altogether in the pre-litigation phase of a dispute, if an adversary is guided to make a realistic assessment of the case-specific risks, costs, and potential benefits.
Pre-Trial Case Prep & Motion Practice: In patent litigation, cases can include drafting and filing complaints or answers, document discovery, etc. In every patent litigation matter, we are careful, experienced, and competent to develop the most favorable pre-trial record for our client.
Trade Secret Disputes & Counter-claims: Trade secret disputes can arise when a business competitor or former employee is accused of actually or inevitably misappropriating a trade secret. We have substantial experience in trade secret disputes, and in advising our clients on the best way to legally protect product and process innovations.
Patentability Opinions: Before filing an application for a patent, we can work with an inventor to search and review the related prior art. This can help businesses and individuals determine whether the scope of patent coverage is likely to justify the costs to obtain patent rights.
Trademarks
Trademark and Service Mark Registration: Registering a trademark or service mark can help you protect against another business trading on the reputation and good will that you’ve built with your customers, which they associate with the names and logos that your company uses, for example via your advertising investments. We can help our clients decide between alternative proposed company or product names or logos, for example, based on searches of existing trademarks, to avoid future confusion or trademark weakness.
Trademark Disputes: We advise our clients as they enforce their trademarks or navigate through trademark disputes brought against them. In such disputes, we can ensure that adversaries understand the weaknesses of the trademark(s) that they are asserting, or the strength of our client’s trademark(s).
Copyrights
Copyright Protection Online: The Digital Millennium Copyright Act (DMCA) is a structure that intellectual property owners can follow to protect their content online, but it can be hard to navigate without a dedicated copyright legal team.
Copyright Registration: Registering a claim is a matter of public record, so our team of experts will help you keep your work protected while the registration process is completed and approved. We can also guide you through the registration process in all countries where the work will be sold or used.
Trade Secrets & Names
Where a product or process improvement cannot be easily discovered or reverse engineered, a client may opt to protect and maintain the associated commercial value by maintaining the improvement as a trade secret. Whereas patents require public disclosure and have a finite term of 20 years after filing, a trade secret can be maintained for as long as the secret can be kept confidential. We help our clients decide when to opt for patent versus trade secret protection, and advise our clients on how to maintain, secure, or enforce their trade secrets despite the frequent need for confidential disclosure to employees, vendors, or business partners.
IP Strategy
Many business decisions affect or are affected by the potential for IP disputes, and IP rights acquired or lost during product development, co-development, purchasing, sales, manufacturing, or employee turnover, may substantially affect the future success or value of a business. We can help our clients prioritize the most important or cost-effective additions to a portfolio of intellectual property rights, and make strategically reasonable IP development, licensing, indemnity, or enforcement choices.
IP Transactions & Agreements
We have supported several corporate mergers with the due diligence necessary to properly assess the enforceability and value of an acquisition target’s intellectual property assets. We have also assisted companies to develop their patent and trademark portfolios in ways that can improve their value should they be later acquired.
Get Guidance from Intellectual Property Experts
If you are in need of advice or services related to intellectual property, please feel free to contact us.
Do not provide any information that you consider confidential, until we have confirmed that there are no conflicts of interest, and have formally agreed to establish an attorney-client relationship.
