Patent Prosecution and Counseling
Patent “prosecution” is the process of getting a patent on an invention. As described below in more detail, patent prosecution also includes the steps of determining whether it is likely that a patent may issue on the invention, and the preparation of the patent application itself.
Our patent prosecution and counseling services include:
- performance of patent searches and analysis of search results to determine whether an invention may be patentable;
- preparation and filing of patent applications;
- prosecution of patent applications in the U.S. Patent and Trademark Office (USPTO);
- working with law firms overseas to arrange for filing and prosecuting patent applications throughout the world;
- performance of patent clearance searches to determine whether our clients’ products or services might infringe patents held by competitors;
- providing technical and legal advice to help our clients design products and services that do not infringe patents held by competitors; and
- negotiating and preparing patent licenses.
We draw upon the legal and technical expertise of our patent attorneys to provide patent prosecution services that maximize the value of our clients’ patent portfolios. We are skilled at writing patents that provide strong protection for our clients’ inventions, and that can withstand litigation challenges.
Our patent attorneys have engineering degrees and industry experience. They know how to communicate with innovators. They understand the technical aspects of our clients’ technology and how to distinguish our clients’ inventions over prior art cited by the patent examiners at the USPTO.
We like to work closely with our clients through all stages of product development, offering advice about how to best protect their inventions and avoid infringement of competitors’ patents. We also advise clients on complex patent licensing issues and business strategies for handling adversarial matters.
We have many overseas clients who rely on us for advice about U.S. patent law and the prosecution of patents in the USPTO. Our overseas clients often turn to us when seeking opinions about whether an invention is patentable in the U.S. or whether a product may be found to infringe a U.S. patent.
We have developed relationships with a large network of overseas associates to help our clients seek international patent protection. Our overseas associates have extensive experience with the patent laws and procedures of their respective nations. With the help of our associates, we provide counseling for our clients regarding foreign intellectual property laws and assistance in obtaining patents overseas.
Our patent practice is directed to the following technology sectors:
- electronics and telecommunications
- microelectronics, semiconductors, and related equipment
- mobile resource management (MRM) and collateral management systems (CMS)
- vibration monitoring and machine health monitoring systems
- medical devices
- chemical compositions and processes
- fluid medical waste treatment systems
- material sciences
- mechanical systems
Still have questions regarding Patents?
- Learn more about Patents
- Learn more about Patent Applications
- Find out what to do before filing a Patent Application
Trademark Protection and Counseling
Our trademark practice involves multiple aspects of brand protection for our clients, including:
- trademark searches and analysis of search results to determine whether a trademark may be registrable and available for use;
- trademark registration (U.S. and international);
- trademark licenses and co-existence agreements;
- oppositions of trademark registrations pending in the U.S. Patent and Trademark Office (USPTO) and cancellations of registered trademarks;
- domain name matters related to trademarks;
- trademark usage in social media and Internet search engines; and
- trademark due diligence (assisting trademark buyers in confirming chain of title and value of subject trademarks).
Our trademark clients represent a broad range of industries, including universities, hospitals, computer software and hardware, entertainment services, restaurants, medical devices, foods and food services, turf products, telematics, boats and marine, financial services, retail services, clothing and footwear, hotels, athletic supplies, hearing assistance devices, mobile resource management, and municipal/governmental services.
We help our clients protect their trademarks and service marks by preparing, filing, and prosecuting trademark applications, and maintaining and renewing trademark registrations. We conduct trademark searches to determine whether our clients’ trademarks may be registrable and available for use. We represent clients in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board. We negotiate trademark co-existence agreements and licenses. We help manage our clients’ trademark portfolios and develop brand protection strategies. We help clients avoid potential trademark infringement by reviewing their marketing pieces and product labeling.
We have established relationships with a broad network of overseas counsel that handle trademark applications, maintenance of registrations, trademark opposition and cancellation proceedings, and litigation of trademark matters outside the U.S.
We represent clients in trademark and trade dress litigation in both federal and state courts in cases involving infringement, unfair competition, dilution, counterfeiting and false advertising. We also represent clients in disputes involving cybersquatting and Internet domain name infringement using the dispute resolution procedures of the Internet Corporation for Assigned Names and Numbers (ICANN).
Still have questions about Trademarks?
Copyright Protection and Counseling
We advise clients on a wide variety of copyright issues involving many types of copyrighted works, such as computer programs, musical recordings, books and other printed materials, motion pictures, sculptures and architectural works.
Our copyright services include:
- registering copyrights in the U.S. Copyright Office;
- preparing assignments of copyright ownership;
- preparing copyright license agreements; and
- resolving copyright disputes through litigation and using alternative dispute resolution techniques.
Still have questions about Copyright?
Intellectual Property Licensing and Transactions
We provide expertise in licensing of all types of intellectual property assets, including patents and technology, trademarks and corporate brands, and portfolios of copyrighted material. We employ a systematic, comprehensive approach to commercializing intellectual property for our clients. In licensing negotiations, we work to minimize client risk while maximizing intellectual property value over the long term.
We counsel clients regarding:
- Patent and technology licenses
- Software licenses
- Trademark licenses
- Development, commercialization, and manufacturing agreements
- Intellectual property divestments and acquisitions
- Strategic alliances and joint ventures
Our litigation team handles intellectual property litigation exclusively. Such litigation includes patent, trademark, copyright, unfair competition and trade secret lawsuits. Most of our cases are in federal courts, because the federal courts have exclusive jurisdiction over patent and copyright litigation. However, we also litigate in state courts in matters involving such things as trademarks, unfair competition, and license agreements involving intellectual property.
We use a team approach to patent litigation. Our litigators team with our patent prosecution attorneys – all having engineering backgrounds – to address the complex technological and scientific issues that often arise in patent cases.
Although most of our litigation services are provided for clients based in the U.S, we have also represented clients based in Asia, Europe and South America, including clients from China, Brazil, England, Germany, and the Netherlands. We are also active in alternative dispute resolution, including licensing negotiations, mediation and arbitration. In recent years, numerous disputes handled by the firm have been successfully resolved using these techniques.
We help clients avoid theft of their intellectual property by advising them about best practices in protection of trade secrets.
We advise clients regarding confidential information agreements and employee agreements, and the restrictive covenants usually included in such agreements, such as those directed to non-competition, non-solicitation, and non-disclosure of proprietary information.
We also help clients design and implement effective policies and procedures to prevent inadvertent loss or intentional disclosure of critical business information.
Need more information regarding the protection of Trade Secrets?
IP Due Diligence
Mergers, acquisitions, venture capital investments and other such important transactions often require an accurate and thorough evaluation of the intellectual property (IP) involved in the transaction.
Because our patent attorneys are also engineers, Luedeka Neely Group is uniquely positioned to help clients understand the technology behind the IP, the value of that technology, and how well the technology is protected by the patent portfolio.
We help companies, venture capitalists, and investment banks evaluate and protect IP and achieve their business goals through freedom to practice analyses and patent portfolio audits. Such IP due diligence activities help our clients identify opportunities to strengthen their patent portfolios, reduce their IP risks, and place a value on complex IP portfolios prior to a purchase, sale or investment.