The vast majority of the market valuation of most companies
is not in tangible assets, but in intellectual property. The importance of having a sound strategy for
developing, protecting, and utilizing intellectual property cannot be
overstated. Intellectual Property is
generally protected via patents, trademarks, copyrights, and trade secrets. Patent Searching, portfolio management and
licensing are related services.
Patents
A U.S. Patent gives the patent holder the right to keep others from making, using, or selling the patented technology within the United States for the duration of the patent term. The patent holder can then enforce the patent against infringers, or license or sell the patent to others. A utility patent covers the function of the invention and is valid for a patent term of about 20 years from the date the application is filed. A design patent covers the appearance of an article. Patent protection can also be pursued in jurisdictions outside the United States to obtain protection abroad.
In order to obtain a U.S. Patent, a patent application must be filed in the United States Patent and Trademark Office (the USPTO). The patent application will typically include drawings, a description, and claims with precise language to indicate the scope of the invention. For a patent to be granted, the claims must adhere to certain formatting standards, and must recite subject matter distinct from knowledge available to the public before the application was filed ("prior art").
Once the patent application has been filed, it will be placed in queue for examination. An Examiner will review the patent application and issue an office action to allow or reject the application. Then, the applicant responds with arguments and/or amendments to the application. The process of negotiation with the USPTO is called “prosecution” and can include several rounds of correspondence with the USPTO.
The quality of the patent application and the efforts applied during prosecution have an enormous impact on (1) the likelihood of receiving a patent, (2) the breadth (and therefore value) of the patent that issues, (3) the time required to obtain the patent, and (4) the cost of obtaining the patent. For many technologies, multiple patents are desirable, particularly where competitors are developing similar technologies.
At Maywood IP Law, we have, collectively, drafted several hundred patent applications. We like to dive into the technology we are working with and develop a thorough understanding of why the invention is valuable and different from what has been done before. We work closely with Examiners at the USPTO, typically through interviews conducted throughout prosecution, to get patents issued. We have successfully obtained patents in a wide variety of technologies, including mechanical, medical device, software, and electrical technologies.
Trademarks
A trademark provides the trademark owner with the exclusive right to use the trademarked name, logo, or other identifier with their goods or services. In the U.S., some trademark rights are obtained under the common law by just using the mark in commerce. However, by far the strongest trademark protection is obtained with a federal registration, which is obtained from the United States Patent and Trademark Office (USPTO). A federal trademark registration applies nationwide, and lasts as long as the owner can prove to the USPTO that the mark is still in use in commerce in connection with the goods or services listed in connection with the mark.
In order to obtain a federal trademark registration, a trademark application must be filed in the USPTO. The trademark application must specify the mark and the goods and services for which it will be used. For a mark to be registered, it must be distinct enough, relative to other registered marks, that consumers of the corresponding goods and services are unlikely to be confused as to the origin of the goods or services.
We have helped many clients obtain trademark protection, from individual products to brands or product families.
Portfolio Management
In the context of patents, “portfolio management” is the strategic process used to determine which patent applications to file, and how to prosecute them, in order to provide the protection desired. If patent protection is building a structure, portfolio management is the work done by the architect to develop the right blueprints. The way in which a portfolio is managed will have a tremendous impact on the value, cost, and efficacy of the patent protection obtained.
Portfolio management is greatly dependent on the client’s goals. Some clients want to deter the activities of a close competitor, while others want to license or sell their technology. Many startups pursue patent protection with the intention of building enterprise value to bring about profitable divestiture. Some inventors simply want the notoriety and recognition that comes with a patent grant.
We have worked with all of the foregoing. We enjoy working with each client to help develop the best strategy to achieve their goals.
Patents
A U.S. Patent gives the patent holder the right to keep others from making, using, or selling the patented technology within the United States for the duration of the patent term. The patent holder can then enforce the patent against infringers, or license or sell the patent to others. A utility patent covers the function of the invention and is valid for a patent term of about 20 years from the date the application is filed. A design patent covers the appearance of an article. Patent protection can also be pursued in jurisdictions outside the United States to obtain protection abroad.
In order to obtain a U.S. Patent, a patent application must be filed in the United States Patent and Trademark Office (the USPTO). The patent application will typically include drawings, a description, and claims with precise language to indicate the scope of the invention. For a patent to be granted, the claims must adhere to certain formatting standards, and must recite subject matter distinct from knowledge available to the public before the application was filed ("prior art").
Once the patent application has been filed, it will be placed in queue for examination. An Examiner will review the patent application and issue an office action to allow or reject the application. Then, the applicant responds with arguments and/or amendments to the application. The process of negotiation with the USPTO is called “prosecution” and can include several rounds of correspondence with the USPTO.
The quality of the patent application and the efforts applied during prosecution have an enormous impact on (1) the likelihood of receiving a patent, (2) the breadth (and therefore value) of the patent that issues, (3) the time required to obtain the patent, and (4) the cost of obtaining the patent. For many technologies, multiple patents are desirable, particularly where competitors are developing similar technologies.
At Maywood IP Law, we have, collectively, drafted several hundred patent applications. We like to dive into the technology we are working with and develop a thorough understanding of why the invention is valuable and different from what has been done before. We work closely with Examiners at the USPTO, typically through interviews conducted throughout prosecution, to get patents issued. We have successfully obtained patents in a wide variety of technologies, including mechanical, medical device, software, and electrical technologies.
Trademarks
A trademark provides the trademark owner with the exclusive right to use the trademarked name, logo, or other identifier with their goods or services. In the U.S., some trademark rights are obtained under the common law by just using the mark in commerce. However, by far the strongest trademark protection is obtained with a federal registration, which is obtained from the United States Patent and Trademark Office (USPTO). A federal trademark registration applies nationwide, and lasts as long as the owner can prove to the USPTO that the mark is still in use in commerce in connection with the goods or services listed in connection with the mark.
In order to obtain a federal trademark registration, a trademark application must be filed in the USPTO. The trademark application must specify the mark and the goods and services for which it will be used. For a mark to be registered, it must be distinct enough, relative to other registered marks, that consumers of the corresponding goods and services are unlikely to be confused as to the origin of the goods or services.
We have helped many clients obtain trademark protection, from individual products to brands or product families.
Portfolio Management
In the context of patents, “portfolio management” is the strategic process used to determine which patent applications to file, and how to prosecute them, in order to provide the protection desired. If patent protection is building a structure, portfolio management is the work done by the architect to develop the right blueprints. The way in which a portfolio is managed will have a tremendous impact on the value, cost, and efficacy of the patent protection obtained.
Portfolio management is greatly dependent on the client’s goals. Some clients want to deter the activities of a close competitor, while others want to license or sell their technology. Many startups pursue patent protection with the intention of building enterprise value to bring about profitable divestiture. Some inventors simply want the notoriety and recognition that comes with a patent grant.
We have worked with all of the foregoing. We enjoy working with each client to help develop the best strategy to achieve their goals.