Intellectual Property Law

Services There are three distinct phases of intellectual property (IP): creation, maintenance, and enforcement/defense. Creation involves a mental step, though a filter must be applied to ensure value. Just because an idea is protectable does not mean that affirmative steps should be taken to secure rights. But, lack of objective present value should not always be a negative indicator. After creation, valuable IP must be managed and curated. This involves an investment, depending on the type of IP and its value. In various cases, the owner of IP does not itself commercialize the proprietary technology, and through the process of technology transfer, licenses others to exploit the rights. We assist clients in preparing IP for licensing or assignment, and negotiating and closing IP deals. Patents and trademarks may be administratively challenged after issuance, permitting the patent and trademark office a “second look” at the rights it granted. Given the frequency of revocations, error and mistake are built into the government system for granting rights, and there is no good way to administratively verify registration during initial examination and issuance. We have experience in these proceedings. In some cases, a question arises regarding a likely future outcome given a set of facts. The proposed answer is delivered in the form of an opinion, which can guide investment and busines conduct, and support a good faith opinion of counsel defense if the conduct is ultimately deemed improper. We can draft a variety of IP opinions, including patentability or trademark registrability, infringement, freedom to operate, etc. IP rights can be international in scope, but each country has different laws. We can assist in protecting rights internationally through international stage protection proceedings, and national stage protection through a network of foreign associates. When an unauthorized party uses protected IP, an infringement suit may arise. These are typically in courts, but administrative venues may also be available. We are available to assist both plaintiffs whose IP rights are infringed, and defendants who are accused of infringement, and also are available to serve as local counsel in the Southern District of New York, Manhattan and White Plains divisions. We are available to assist in each phase of the IP process, including patent at trademark acquisition (called “patent prosecution”), post grant review proceedings before the Patent Trial and Appeal Board, Trademark Trial and Appeal Board, Federal District Courts, Appeals Courts.