Practice Areas

IP strategy & counseling goes beyond just filing applications. It is about developing a winning long-term plan to ultimately establish a comprehensive patent portfolio. For example, identifying patentable inventions, deciding on filing timelines and countries, and optimizing costs. And many other considerations like increasing the chances of receiving patent grants and positioning the portfolio to be more attractive to investors and acquirers.

Patent harvesting meetings involve exploring you and your team’s various ideas, and deciding which are best pursued. Then, during following invention disclosure meetings, we dive deep into each idea to gain a high level of understanding so that we may prepare a patent application that thoroughly captures and protects the subject matter. We may also decide to strategically combine or separate the ideas among patent applications.

Prior art searches serve to reveal what inventions might already exist in your tech area, whether in the patent system or the public domain at large. It can be helpful to discover prior art for many reasons- like adjusting the filing strategy up front to negotiate around the prior art, thereby saving time and money. Or, clearing more prior art such that it is less likely to be successfully used in proceedings against your patent. Meanwhile, there are competing considerations for why you may not always want to conduct prior art searches.

Freedom to Operate (FTO) opinions act like a green light for your business venture. By analyzing existing patents, FTO opinions assess the likelihood of your operations to infringe on someone else’s intellectual property rights, thereby reducing legal risk and expensive litigation. If any roadblocks are discovered, the FTO opinion affords you an opportunity to modify your operations for a smoother path to market.

Patentability opinions offer a sneak peek into your inventions’ chances of success at the patent office. For example, not all ideas are of the nature that the USPTO will grant patents for, even if they are a new idea. Or, certain tech areas are quite crowded, thereby making it difficult for an idea with too small of an incremental improvement to reach patent grant. Knowing to adjust the strategy upfront can save time, money, and success.

When your company is in the process of being purchased, acquisition due diligence of your IP portfolio will almost certainly be conducted. To avoid hurdles and keep the sale process moving along, your portfolio should be organized and in good health, with knowledgeable patent attorneys available to field all questions. In fact, your IP assets should work to maximize the valuation of your business.

Very often, we are able to qualify your patent filings for USPTO discounts based on your entity size. The discounts vary from 60% off for small entities up to 80% off for micro entities. Further, in most cases, these discounts apply not only to the initial filing fees, but to almost all other fees throughout the prosecution stage and the life of the granted patent. Many clients can qualify for the micro entity discounts, while even more can qualify for the small entity discounts. Either way, eventually thousands of dollars could be saved over the 20-year life of a patent.

Patent applications filed with accelerated examination requests dramatically speeds up the patent prosecution stage. Through the USPTO’s Track One program, the patent office guarantees fast-tracking examination to condense what typically takes many years into 12 months or even less. Further, such prioritized patent applications tend to have a higher allowance rate. Expediting in this way can arguably cut total patent costs, and more quickly recoup costs through earlier licensing or product launches.

By default, patent applications publish generally 18 months following their filing date. However, a nonpublication request can be used to keep your ideas in stealth mode, where they are only made public if a patent is eventually granted. Meanwhile, an early publication request can be used to apprise investors and buyers while putting competitors on notice. Each strategy comes with their own advantages and disadvantages.

Requests for Continued Examination (RCE) allow you to continue pursuing your patent application at the USPTO. For example, when a so-called “final” office action is issued, and RCE allows you to restart the clock, but continue from where you have reached in the process. An RCE provides other advantages too, like an opportunity to request Track One prioritized examination.

If we disagree with a USPTO patent examiner’s rejection, then an appeals process can be pursued, where initially two more examiners are brought in to review our arguments. If there is still disagreement, the question can be appealed to the Patent Trial & Appeal Board, which offers a chance to challenge the examiner’s position before a panel of neutral judges and get your patent application back on track.

Responding to Office Actions involves replying to the patent office’s “actions”. For example, with respect to your patent application, the patent office may issue an action that rejects the claims, objects to the drawings, or raises other issues that stand in the way patent allowance. Office Action responses argue against and/or make amendments to overcome the Office Action’s assertions, eventually leading to a granted patent.

Not only is software patentable, but patenting software continues to be evermore common and crucial. However, software patent applications are not without their unique challenges. So, firstly it is important to work with patent practitioners who can adeptly package and position your software patent application to afford it the best chance of success. Secondly, who have a strong grasp of responding to so-called “Alice”, which software patents frequently encounter.

We have been working on AI long before its popularity exploded in recent times. Accordingly, we know our way around both the technology and its unique legal hurdles. From machine learning models to deep learning neural networks, our work spans a wide range of applications such as computer vision, NLP, generative AI, autonomous vehicles + drones, and robotics. With applications in entertainment & media, finance & banking, healthcare, and transportation.

From digital currency to smart contracts, we work on blockchain patents. Just like artificial intelligence and software patents generally, blockchain/cryptocurrency patent applications not only deal in complex subject matter to begin with, but can face unique hurdles at the USPTO and patent offices worldwide. Therefore, it iss critical to work with patent practitioners who are well-versed in navigating such waters.

From the smaller scale of semiconductors and processor architectures, to the larger scale of completely manufactured electronic products, we work on electrical / computer hardware inventions. This includes everything in between, like RF, networking tech, integrated circuits, LiDAR, and GPS navigational devices.

As the technology for autonomous vehicles & platooning has grown, so too has our work on securing patent protection for the resulting inventions. Of course, automation is a multi-disciplinary field, so our work has extended across sensor technology, algorithmic control systems, localization methods, and vehicle-to-vehicle communication protocols. All with an eye on safety and trip cost optimization.

Given the rapid advancements in drone & UAV technology, we have pursued many patents in the space for our clients. This include swarm coordination, propulsion systems, airframe designs, payload delivery mechanisms, and sensor integration. Our tech areas are not limited to traditional drones, but also larger piloted aviation inventions as well.

While many of our clients operate in the high-tech arts, they and others still innovate in the mechanical domain. Sometimes these are simpler conventional inventions, like a locking mechanism. Other times they are couched in more advanced tech like in the field of robotics, which includes sensors, actuators, or algorithmic software / AI control systems for behavior or task performance.

We secure patents for traditional medical tools, like sharps or thermometers. Meanwhile, many medical devices include software or electronic innovations as well. As a result, our work also includes protecting general high-tech aspects of medical devices, like mobile apps, sensors, lasers, control units, scheduling systems, and cloud backend software.

Securing patents for data science inventions can be challenging due to the abstract nature of the tech area from the patent office’s perspective (thereby encountering so-called “Alice” rejections). However, it is certainly achievable and we continue to frequently secure many data science-rich patents across a wide variety of applications. The areas include user behavior analytics, wound healing patterns, and driving patterns to name a few.

The USPTO and patent offices in other countries require maintenance fees (aka renewals or annuities) to keep patents in force. We offer renewals services to track such maintenance fees due dates for the patents in your portfolio, calculate their fees due, and pay those maintenance fees to avoid penalties or a lapse of your patent rights.

Patent portfolios are like a garden- they need constant tending if they are to thrive. You could say we are great at gardening: Patent applications in the drafting stage, applications pending at the USPTO, and granted patents all have unique due date types and myriad corresponding deadlines. We pay consistent attention to meet all due dates, avoiding unnecessary costs, delays, or even lapse of patent rights.

We provide outside-paralegal services. And if a law firm is only as strong as its secretaries, then we are full of brawn, and brains. Our paralegals have extensive patent administration experience and know-how. From the conventional tasks like filing applications or docketing, to conducting analyses of portfolios or communicating with foreign patent office associates, our virtual paralegals have it covered.

Securing and maintaining patents in other countries requires careful planning, budgeting, and execution. Whether via a PCT application or direct filing, collaboration with foreign associates in each target jurisdiction and coordination across all those foreign associates will be ultimately needed. And in some jurisdictions, accurate translations of the patent application to particular languages are required. We provide these and more foreign filing services.

If a picture is worth a thousand words, patent drawings are invaluable. Not only are drawings/figures required, but they can make all the difference in representing an invention. Not only to the USPTO patent examiners, but also investors and acquirers alike. We work with expert draftspersons to produce high-quality technical illustrations. Not to mention, comply with the many USPTO drawing requirements.

Information Disclosure Statements (IDS) are documents required to be submitted to the USPTO usually during the pendency of a patent application (aka during patent prosecution). And IDS discloses potentially relevant prior art that you/we are aware of. But managing an IDS landscape can quickly become complicated, especially when multiple cases are involved. And IDS missteps can even result in patent invalidation. Therefore, a patent firm that takes meticulous care is critical.

Trademark applications should undergo careful preparation filing with the USPTO or appropriate foreign offices. For example, it is important to determine whether the mark (e.g., word, phrase, or logo) is distinctive to your business or has a likelihood of confusion with another. Further, determining appropriate trademark classes based on the covered goods or services is required, as is gathering & preparing necessary supporting documents (such as specimens of use).

Trademark searches and clearance opinions are important steps when pursuing trademarks to protect your brand. Searches involve conducting thorough investigations in relevant databases to identify existing trademarks that may conflict with your proposed mark (e.g., not being adequately distinctive thereby having a likelihood of confusion between the marks). Clearance opinions involve providing a detailed legal analysis of the search results and offering recommendations.

Careful identification of a trademark application’s specific products/services and their associated classes is crucial. For example, broad identification can affect not only the cost, but also the chances of reaching successful trademark registration. Meanwhile, the identification affects the coverage of your resulting trademark because broadening the scope of goods/services after the initial filing is prohibited- only deleting or clarifying certain goods/services is permitted.

Trademark applications typically receive at least one Office Action issued by a USPTO examining attorney. In order to successfully reach trademark registration status, care should be taken in properly responding to any Office Actions. Once registration is achieved, trademark infringement monitoring can be employed to prevent unauthorized use of the trademark and protect your brand identity. Monitoring involves vigilant surveillance of the marketplace, social media platforms, trademark databases, and other relevant channels.

Trademark portfolios are like a garden- they need constant tending if they are to thrive. You could say we are great at gardening: Trademark applications in the preparation stage, trademark applications pending at the USPTO, and registered trademarks all have unique due date types and myriad corresponding deadlines. We pay consistent attention to meet all due dates, avoiding unnecessary costs, delays, or even lapse of trademark rights.

Trademark declarations and renewals are essential to maintaining trademark protection. Specifically, in order to ensure the continued validity of a registered trademark, “Section 8” declarations (aka affidavits) of continued use or excusable nonuse must be filed around the 6-year anniversary. Subsequently, “Section 9” renewal applications must be filed around the 10-year anniversary, and every 10 years thereafter to maintain the mark indefinitely.