Intellectual Property Portfolio Management

Whether your business is large or small, and no matter what industry you are in, a well-considered intellectual property strategy is a 21st century business necessity.  The strategy must be supportive of the overall goals of the business, both domestic and global, and must be implemented with a realistic budget, and managed with executive-level authority and accountability.

Successful implementation of a company’s IP strategy depends heavily on skilled monitoring, managing, and event reporting for each national and international IP asset in the portfolio.  Even if there are only a few intellectual property assets to be managed, a clear understanding of the legal deadlines and procedures for each case is required, as well as the ability to balance the costs, risks, and benefits associated with each management decision.  And there must be an ability to update and execute the IP strategy in harmony with ever-evolving business plans and goals.  Outsourcing the management of an IP docket to the skilled staff at Maine Cernota & Curran, and drawing upon the experience of its registered patent attorneys to interpret, advise, and execute the substantive requirements of applications and registrations, can significantly improve the quality, value, and sustainability of your IP portfolio, both domestically and abroad.

Many clients find it important to promote a company-wide awareness of the importance of its intellectual property assets, and of every employee’s duty to protect it. Maine Cernota & Curran is often called upon to provide presentations to employee groups that are central to the creation, exploitation, and protection of its intellectual property. In addition, our attorneys often provide services and/or support for in-house counsel regarding such matters as IP strategic planning, docket management, trade secret protection, escrow agreements, valuation of IP assets, IP-derived revenue streams, employment agreements affecting IP rights, IP purchase and sale agreements, due diligence reviews, licensing, acquisitions and divestitures, pre-litigation support to in-house and third party counsel, and conflict resolution.

Maine Cernota & Curran is staffed with expert paralegals, and employs contemporary business systems and specialized software applications for reliable docket and data management. Applications for patents and trademarks are filed electronically with the U. S. Patent and Trademark Office whenever possible. Clients are kept up to date on every substantive change in each of their cases. Specialized monitoring services can also be provided, along with comprehensive docket reports when required.  Through our extensive network of international patent firms, we are able to provide a full range of global as well as domestic IP services.

The selection of an intellectual property law firm is an important business decision.  The chosen firm should be “right-sized,” such that it is sufficiently large, well-organized, and experienced to provide a full range of high-quality services that can grow and expand with your IP needs, while at the same time remaining cost-efficient, without the bloat and waste of very large firms that maintain multiple legal divisions in high rise offices located in multiple urban centers.  Maine, Cernota, & Curran has been focused exclusively on IP law for more than 20 years, and has a well-proven ability to meet the needs of its clients.  We serve clients throughout the country and throughout the world from our single location in Nashua, and we are large enough to provide a full range of high quality services, while remaining small enough to be cost efficient and adaptable to individual client needs.

Of course, a strong IP portfolio is of little value if it cannot be enforced.  Maine, Cernota, and Curran has developed an effective process for identifying patents that are likely to be infringed, finding potential infringers, and working with third parties and inside counsel to obtain litigation financing and successfully enforce and monetize IP assets, often with only minimal cost and modest time investments required from our clients.

Factors that are important to a successful client-firm relationship include the law firm’s understanding of the client’s technology and business objectives; the level of the client’s commitment to an IP strategy; the ease with which the attorney/client interface occurs; the level of trust required on both sides; the quality of attorney work product and the timeliness of reports; the manner of billing and reporting and the perceived value in the work billed; the willingness of both parties to discuss their respective concerns and objectives; and the flexibility of the firm to adapt and respond. These are all valid issues that should be discussed at the interview stage. The “fit” must feel right from the start.

For a more detailed description of MCC’s capabilities and the manner in which we conduct our practice, or to arrange an opportunity to meet with one of our attorneys for an initial consultation with no obligation, please feel free to contact us by email or phone at any time.

Options for Obtaining International Patent Protection Outside the U.S.

Options for Obtaining Patent Protection Outside the U.S. In deciding whether to obtain patent protection outside the U.S., there are a number of factors a company should consider. As a preliminary consideration, it is important to understand that most foreign filed applications will be published eighteen months after their priority date. As such, if a company files an application outside the U.S., they will eventually forfeit any trade secret protection for the subject matter disclosed in that application. If, however, the company files only in the U.S., they have the option of maintaining the secrecy of that subject matter until the application issues as a patent, assuming proper steps are taken. Thus, a company must decide if publication of the invention before any patent is granted is an acceptable consequence of filing for patent protection outside the U.S.

Caution, most but not all countries have patent treaties with the U.S. Of those that do, not all subscribe to the same treaties; as for example the People’s Republic of China (PRC) and the Republic of China (ROC). And some countries are excluded by law for U.S. applicants. Check first!

The next step is to determine in which countries would patent protection likely provide value. Questions to ask here include: In what countries will products embodying the subject invention likely be sold or manufactured? In what countries will other companies likely manufacture or sell competing products? In what countries will enforcement of patent rights be effective, both from cost and legal standpoints? Although this determination will vary from company to company, conventional wisdom suggests that foreign patent protection is most commonly sought in Australia, Canada, China, Japan, Korea, and various f European countries. A related issue to consider here is cost, which can be significant depending on factors such as the selected country and translation costs. Thus, a cost benefit analysis should be performed to determine what and where patent filings are justified.

A provisional or utility application is normal first filed in the U.S. patent office as a priority document, which provides a priority date and normally results in obtaining a foreign filing license. Alternatively, the invention disclosure can be submitted to the patent office on an expedited basis solely for the purpose of obtaining the foreign filing license.

Once it is determined that foreign patent protection is desired, a number of filing options are available. One option is to timely file a patent application directly in the patent office of a selected country. A company should consider filing patent applications directly in national patent offices if the company: (1) is absolutely certain in which countries patent protection is desired; (2) does not desire to reserve the right to seek protection in other countries at a later date; and (3) is prepared to pay the associated filing and translation costs. Typical costs for directly filing a patent application in a national patent office range from about $4,000 to $12,000 per country, including attorney fees and translation costs. Canada tends to be at the lower end of the range, while Japan tends to be at the higher end. The costs associated with directly filing patent applications in other countries are generally somewhere between the costs for these two countries. Note that these estimates only reflect the costs for filing a patent application, and not for obtaining or maintaining a patent, each of which is associated with additional cost. For example, in Japan the maintenance fees range from several hundred dollars in the first year of the patent term to several thousand dollars in the last year.

Another foreign filing option is to take advantage of one of the regional treaties available in some sections of the world. For example, a qualified applicant may timely file an application for patent directly in the European Patent Office (EPO). Filing in the EPO allows the applicant to file one application designating up to forty European countries, http://www.epo.org/about-us/organisation/member-states.html, instead of filing a separate application in each of the desired national patent offices. The EPO conducts an examination of the application and “grants” the patent. The applicant must then “perfect” that grant in the various individual countries of the European Patent Convention (EPC) in which protection is desired. Perfecting the patent grant usually entails paying various administrative fees and translating the patent into the appropriate language. Interestingly, some countries require only the claims be translated, while others require translation of the entire patent. Translation costs average about $100 per page of the U.S. application.

From a strategic standpoint, if the applicant intends to file in at least three of the available EPC member countries, then they should generally file an EPO application preserving the option for some or all member countries, rather than filing individual national applications. This allows the applicant to avoid multiple examination fees, and to defer the final selection of countries and payment of translation fees for later in the process. The cost of obtaining a patent grant in the EPO and perfecting it in five countries, for example, may be in the range of $30,000, depending upon the particular countries chosen, the length of the application, and the duration and extent of the prosecution. Note that the above estimate only applies to the cost of obtaining and perfecting the patent, not to the annual fees required to keep it in force.

A third foreign filing option might be called a “global” or “international” option, and is a very common strategy for many applicants. A qualified applicant may file a single application in the United States Receiving Office (USRO) under the Patent Cooperation Treaty (PCT) and thereby preserve later national stage filing rights in more than 130 countries (including the U.S.) http://www.uspto.gov/web/offices/pac/dapp/pctstate.html for up to 30 months or more in some cases. The PCT process can not itself result in a grant of patent anywhere. It must be followed by national stage or regional filings in the contracting countries before the PCT case expires. (Note again, the application must have received a foreign filing license, normally granted by the U.S. Patent Office as a matter of course, before it can be foreign filed.) The primary advantage associated with filing a PCT application is the delay in having to make a decision on where to file the application nationally, and to defer payment of the associated regional or national filing and translation fees. The PCT process includes an examiner search and review and issuance of a preliminary international search report and written opinion. While not binding on individual countries, this process gives important initial feedback about patentability to help the applicant with further decision making. Another variation on the PCT option is to file a U.S. utility application concurrently, and hope for some progress on the U.S. prosecution, a first office action with search results and examiner comments, before the PCT 30 month deadline, in order to better asses the scope of patentability likely to be obtained in other countries.

As with most foreign applications, the PCT application will be published approximately 18 months after it’s priority date. Once published, this application can be used as prior art to later filed applications.

Including government and legal fees, the cost of filing a PCT application may range from $4,000-$5,000 over and above the cost of preparing the utility application, depending upon which searching authority is chosen and the number of pages in the application.

Thus, an applicant has various options for pursuing patent protection outside the U.S. These options should always be discussed with the applicant’s patent counsel in the context of the applicant’s business plan to ensure that strategic and timely filings are obtained. The provided estimates are approximate, and actual costs will depend on many factors, such as the fees charged by foreign authorities and agents, the length of the application, the number of claims, the particulars of the prosecution, and translation costs.

Trademark Lawyer- When do you need one?

Certain famous trademarks represent some of the most valuable intellectual property assets in the commercial world. According to a 1993 study, the value of the Coca-Cola trademark was over $70 Billion! Microsoft, IBM, Ford, NBC, Maytag, Barnes & Noble, and Walmart, are well-known trademarks and valuable assets of their respective companies. And, there are trademark lawyers involved in protecting these trademarks every step of the way. Every company engaged in a public enterprise has a keen interest in acquiring and protecting effective trademarks that will clearly distinguish its goods and services from those of others.

A trademark lawyer can help develop and protect your corporate identity, brand identity, and related intellectual property. At the patent and trademark law firm of Maine Cernota & Curran, the trademark lawyers counsel clients on the selection, availability, use, registration, and maintenance of trademarks, as well as related issues such as trademark monitoring, trademark licensing, infringement conflicts and negotiations, consent agreements, and customs recordation.

Counseling on trademarks, service marks, trade dress and certification marks, as well as trademark clearing searches, infringement analysis, formal legal opinions, and filing and prosecution of state, national, and foreign trademark applications, and general trademark portfolio management are among the array of trademark services provided by the firm.

The best way to protect a trademark, corporate image, brand identity, and all intellectual property assets is to partner early with a competent intellectual property firm with experienced trademark attorneys on staff. At Maine Cernota & Curran, trademark law and protection is an everyday part of our practice. Contact this office anytime.

Trademarks & Trademark Protection

A trademark is a word or phrase of plain or stylized text or a symbol or graphic design or other easily distinguished constant characteristic of a product or service that performs as an identifier of a particular source of those goods or services. Trademarks are employed by anyone or any group seeking to set themselves apart from other persons or groups that may be sources of similar goods and services. Trademark users include commercial enterprises, government or private agencies or entities engaged in public discourse or conduct, or anyone that desires recognition over anonymity relating to its goods or services. “Trade dress” is a related phenomenon that functions similarly to identify the source of a product, but this term refers to the overall visual impression or appearance of the design of an article of manufacture or its packaging.

In the U.S., state and federal trademark rights are established based on earliest and continuous commercial use of a trademark in U.S. commerce, even with no registration. U.S. common-law, consistent with international trademark principles, requires that later entrants to the same market use marks dissimilar to those of earlier entrants to avoid a likelihood of confusion as between the later entrant and the earlier entrants. However, although state and federal trademark registration is not required in the U.S., it does offer significant benefits for geographical scope and enforcement.

For companies seeking to establish new trademarks, a clearing search reduces the risk that a selected mark will not conflict with an existing mark. In addition, a lack of distinctiveness associated with a mark may prohibit or limit the protection afforded by the mark. Generic or descriptive terms may be unenforceable as trademarks. There are also certain legal formalities associated with the registration process and maintenance of trademarks, for which one should consult a trademark attorney.

The intellectual property attorneys and staff at Maine Cernota & Curran are highly experienced and skilled at helping you to identify which candidate trademarks are best suited to registration and legal enforcement, and which competing marks are best given a wide berth to avoid trademark infringement issues.

Copyright Law & Copyright Protection

U.S. copyright law protects the ‘expression’ of an original work of authorship or art and is predominately federal law. There is some state law regarding intellectual property that may extend to copyright enforcement. Copyright protection is limited in scope to the expression of a work, and does not extend to the underlying idea. It is one of the least expensive forms of intellectual property protection available, lasting far longer than a patent, up to 125 years, and does not require “continuous use” or periodic supplemental filings as does a trademark registration. In general, U.S. copyright lasts for the life of the author plus 70 years and for works of corporate authorship to 120 years after creation or 95 years after publication, whichever endpoint is earlier. Copyright law and term varies in other countries.

Under U.S. law, copyrightable subject matter includes, for example, books, periodicals, phono records, film, tapes, software, musical works (including accompanying words), dramatic works (including accompanying music), pantomimes, choreographic works, pictorial, graphic, and sculptural works, motion pictures and other audio-visual works, sound recordings, and architectural works to name a few. For a work to be considered “original,” it need not be novel as in the patent sense, but it cannot be substantially copied from another work; it must contain at least a ‘modicum of creativity’.

Copyright dates, notice, publication, and federal registration are critical elements of copyright enforcement. The patent lawyers at Maine Cernota & Curran are ready to help you sort out what materials qualify, what specimens are needed, how to provide notice of copyright, and where to file, as well as counseling on related matters including copyright infringement and avoidance, licensing and conveyances.

When is the right time to look for a Patent Lawyer?

In today’s fast-paced cost-sensitive business environment, it is not unusual for a business or organization to wait until it is absolutely necessary before calling for outside help. However, in the case of a patent lawyer, the necessary moment may not be obvious – and may be too late. You might suppose that you need to call a patent lawyer only when you have finalized the invention and need help to protect your intellectual property. However, as in most other professional relationships, there is a significant advantage in having an established working relationship before the need becomes urgent and before valuable rights may be unknowingly foreclosed.

The process for selecting a patent lawyer should seek to match the overall characteristics and needs of the client and it’s business goals and activities to the character and capabilities of the patent law firm. A joint review of the client objectives, business plans, nature of the attorney/client interface, anticipated scope of legal work, and the billing practices of the attorney should all be part of the discussion. Here, in addition, we match each client with and attorney and a paralegal as a legal team who will normally manage all aspects of the client’s intellectual property cases.

The attorney will meet and be in communication from time to time with the client’s management and technical staff as well as it’s inventors to identify patentable technology and assist in the development and implementation of a strategic patent program that is harmonized with the company’s business objectives. A carefully executed patent program reduces a company’s risk of losing control over its core technology, and allows the company to operate from a position of strength in licensing and settlement negotiations. The lawyer, consulting when appropriate with other lawyers in the firm, also provides early or late stage counseling on infringement, validity, product clearance, and design around analysis, and can render informal or formal legal opinions on patentability, patent validity and patent infringement when necessary.

The paralegal facilitates case management, docket control, routine client correspondence, and is often able to answer client questions directly.

The registered patent lawyers at Maine Cernota & Curran have substantial experience in the preparation and prosecution of U.S. patent applications and international protection through a network of skilled agents. They counsel clients in all aspects of patent law, ranging from invention harvesting to patent acquisition, portfolio maintenance, and patent licensing. Their mode of operation is to gain an understanding of the invention, its commercial implications, and the client’s business objectives – and to then offer legal and business advice and appropriate legal services in each case. The firm is further staffed and equipped to support its lawyers with the legal and procedural complexities of managing a domestic or international intellectual property portfolio.

Perhaps the very best time to look for a patent lawyer is now…

Patent Law & Patent Protection

A patent is a government grant of a right of exclusion, the right of a patent holder to exclude others from making, using or selling methods and products falling within the scope of the patent claims. While the principles are generally consistent, patent law and procedure is widely recognized as a highly complex body of law, the details of which vary considerably from one jurisdiction or country, to another. Clients are well advised to seek out the advice of licensed professionals such as Maine Cernota & Curran, to represent them in matters pertaining to the drafting, filing, and prosecution of patent applications in the United States and, through their global affiliate agents and firms, in other countries around the world.

In the United States, a design or utility patent may be available for an invention that is new, useful and non-obvious in accordance with U.S. patent law. Design patents are limited in scope to protecting only the ornamental and non-functional aspects of an article of manufacture, and are analogous in some respects to trademarks in that they rely on being distinguishable by users from other related or similar articles of manufacture. Utility patents, in contrast, are intended to define and protect the claimed structure or process of the invention. In exchange for these rights of exclusion granted to the patent holder, the invention is disclosed to the world by publication of the patent so that others may learn from the invention and build on that knowledge.

A U.S. utility patent begins with an invention. The invention is presumably a trade secret until the inventor or his or her employer elects to disclose the invention publicly and/or attempt to patent the invention and create an exclusive right under federal law to make, use, sell or import the invention. TheIPTeam.com at Maine Cernota & Curran is highly experienced with invention capture and initial evaluation, and with the drafting and prosecution of U.S. design and utility patents with the United States Patent Office. These services extend to the filing and prosecution of patent applications in other jurisdictions and countries using our global network of highly skilled patent practitioners and firms.

The attorneys at Maine Cernota & Curran appreciate the sophistication of our clients’ technologies and the business challenges they face, and the diversity and complexity of their respective industries. Their different aptitudes, educational backgrounds, pre-law work history and personal skills and experiences enables them as a team to address a wide range of electrical, chemical, and mechanical arts. Representative technologies include communication systems and protocols, hybrid circuitry, power systems, integrated circuits, transducers, computer-implemented applications, quantum well devices, supercritical fluids, polymer compounds, textiles, large and small manual and computer based tools, medical devices and related gadgetry.