www.juneaumitchell.com

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Enforcement, Patent Litigation

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Juneau Mitchell attorneys at law Home Services Juneau Mitchell attorneys at law provides clients with advice and professional services on patents trademarks licensing litigation transactions and corporate law. Our attorneys have filed hundreds of applications at the U.S. Patent Trademark Office drafted numerous agreements and incorporation documents and litigated IP rights for clients in Alexandria Virginia across the country and around the world. Our firm is located near the U.S. Patent Trademark Office and the Federal Court for the Eastern District of Virginia and we routinely schedule and attend meetings in person with appropriate staff in the course of representing our clients. Registering licensing and defending patents and trademarks requires the help of a USPTO licensed attorney who can walk you through the process and explain your options and the costs and benefits of various strategies. With patents and trademarks most people are aware that small oversights can lead to significant problems in the future. Accordingly working with attorneys who are experts at investigating these issues and providing advice can save time and save budgets. The attorneys at Juneau Mitchell law firm have been successfully helping inventors companies and universities in nearly every U.S. State numerous foreign countries and many of our local communities. To aid our search engine friends we include below a list of locations where we offer services including California Colorado Minnesota Maryland Pennsylvania New York North Carolina Florida Texas and Virginia Germany France Switzerland Japan South Korea China Canada Australia and Israel and Northern Virginia Tysons Corner Bethesda McLean Alexandria Arlington Rockville Washington D.C. College Park Charlottesville Newport News Germantown Gaithersburg Beltsville Baltimore Richmond Frederick Hagerstown Williamsburg Philadelphia and Harrisburg.

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Our Firm JUNEAU MITCHELL IP LAW FIRM is a law firm specializing in providing intellectual property advice and professional services to corporations institutions and individual clients in the U.S. and around the world. From our offices in Alexandria Virginia our clients enjoy our customer-focused approach where high quality is matched with predictable professional fees for their client projects. That nearly all of our clients are personally referred to us by existing clients is a testiment to the success of our approach: Trusted Advice Timely Analysis and Quality Work Product. Practice Areas As licensed attorneys we provide professional services for clients in most IP-related legal practice areas including acquiring patents trademarks conducting patent trademark validity proceedings at the USPTO in Alexandria Virginia defending or enforcing IP rights in Federal District Court and in 337 ITC proceedings providing due diligence analysis drafting licenses and settlement agreements starting or changing corporate entities helping clients with financing documents or helping to analyze and resolve business issues. Whether a client needs to establish a footing in their market by registering patents or trademarks needs a timely due diligence analysis needs to assert their IP rights or just needs help putting an agreement in writing our firm has the experience that enables our clients to turn to us with confidence for the help they need.

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Patents Trademarks Enforcement Patent Litigation Transactions Financing USPTO Proceedings Investigations and Valuation Corporate Licensing USPTO Corrective Proceedings Inter Partes Review Patent Post Grant Review Intellectual Property Services Patents Trademarks • Patent and trademark registration process • U.S. and internationally • Patent and Trademark Searches • Personally overseeing your patent and trademark filings at the U.S. Patent Trademark Office including personal interviews with USPTO employees. Enforcement Patent Litigation • Formulating coherent global IPR strategies for our clients to protect products and markets in the U.S. Europe and Asia • U.S. Federal District Court enforcement of or the defense against violations of their rights relating to patents trademarks trade dress and copyrights • ITC International Trade Commission in Section 337 patent litigation actions • USPTO Board of Patent Appeals Interferences BPAI the Trademark Trial Appeals Board TTAB and the European Patent Office in EPO Patent Opposition Proceedings. Investigations and Valuation • Investigating patent infringement involves an understanding of patent laws and technical information which necessarily requires a higher level of expertise than standard investigative services • Conducting these investigations and recognizing the due diligence necessary to make them successful

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• Investigating for potential patent infringement or for an acquisition or divestiture • Interviewing knowledgeable persons on-the-record or off-the-record Conducting site visits to see the product Making evidentiary purchases with suitable potential witnesses or Conducting database searches of U.S. and international patents literature or government documents • Negotiating for the purchase of a patent or rights for our clients whether they choose to remain anonymous or not. Third-party patent acquisitions can sometimes allow a purchase for a better price than if the true identity of the end user was known. When conducting such investigations we maintain the highest professional and ethical standards. Corporate Licensing Transactions Financing • Negotiating and drafting contracts and agreements • Assisting our clients with corporate formation drafting corporate agreements and drafting corporate policies • Drafting patent licenses evaluation agreements license agreements royalty agreements milestone terms non-disclosure agreements confidentiality agreements and software agreements. • Advising clients on general corporate matters financing and transactional matters • Advising on establishing corporate entities establishing IP Holding companies • Preparing corporate documents preparing corporate agreements licenses or contracts preparing company policies drafting web agreements and policies preparing various compliance documents assisting with private placement memorandums and so forth. USPTO Review Patent Reexamination Reissue The U.S. Patent Trademark Office provides a venue for correcting or challenging issued patents. This can be part of a strategy to re-validate a patent prior to licensing or litigation or can help a patent owner or defendant determine whether patent was granted in error. USPTO Corrective Proceedings Supplemental Examination Beginning September 16 2012 a patent owner may request at any time during the life of a patent a supplemental examination so that the Office can consider reconsider or correct information believed to be relevant to the patent.

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The patent owner may present any information believed to be relevant to the patent. The information is not limited to patents or printed publications but instead may include information concerning any ground of patentability i.e. patent eligible subject matter anticipation obviousness written description enablement best mode and indefiniteness. Inter Partes Review Inter partes review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103 and only on the basis of prior art consisting of patents or printed publications. For first-inventor-to-file patents inter partes review process begins with a third party a person who is not the owner of the patent filing a petition after the later of either: 1 9 months after the grant of the patent or issuance of a reissue patent or 2 if a post grant review is instituted the termination of the post grant review. These deadlines do not apply to first-to-invent patents. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed a final determination by the Board will be issued within 1 year extendable for good cause by 6 months. The procedure for conducting inter partes review took effect on September 16 2012 and applies to any patent issued before on or after September 16 2012. Reissue Patents • Used for correcting an error made without any deceptive intention during the patenting process that is deemed to render a patent wholly or partly inoperative or invalid by reason of a defective specification or drawing or by reason of the patent owner claiming more or less that the patent owner had a right to claim • Similar to original patent prosecution proceedings • Claim broadening is only available if initiated within two years of the date of the issuing of the original patent. Ex partes Patent Reexam • Used to reexamine an issued U.S. patent on the basis of prior art • The PTO first determines whether the submitted patents and/or printed publications raise a substantial new question SNQ of patentability compared to what was considered in the original examination of the patent • If the PTO makes that finding the PTO then reexamines the claims of the issued patent and results in the claims of the issued patent being confirmed amended or cancelled • A typical reexamination takes about two to three years and the initial determination as to whether a substantial new question of patentability exists is usually made within three months of filing • Reexamination can be requested at any time during a patent litigation • Reexaminations generally cost less than patent litigation • Reexamination can be used to strengthen a patents validity prior to litigation or to preempt an attack on a patent • Defensively reexamination presents an opportunity to defer litigation costs while challenging a patents validity or to gain leverage during licensing negotiations. Even if litigation commences a successful defensive reexamination request early in the case can result in a stay of the infringement litigation which facilitates settlement and licensing discussions while minimizing and/or deferring attorney’s fees and expenses.

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USPTO Adversarial Proceedings Inter Partes Review Inter partes review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103 and only on the basis of prior art consisting of patents or printed publications. For first-inventor-to-file patents inter partes review process begins with a third party a person who is not the owner of the patent filing a petition after the later of either: 1 9 months after the grant of the patent or issuance of a reissue patent or 2 if a post grant review is instituted the termination of the post grant review. These deadlines do not apply to first-to-invent patents. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed a final determination by the Board will be issued within 1 year extendable for good cause by 6 months. The procedure for conducting inter partes review took effect on September 16 2012 and applies to any patent issued before on or after September 16 2012. Patent Post Grant Review • Post Grant Review PGR of a Patent provides third parties with a mechanism for addressing a patent granted in error. • PGR is available to any patents having an effective filing date that is one or after March 16 2013 • PGR request must be made within nine months of the issuance of the patent • The grounds that may be raised include most grounds for invalidity of the patent except for failure to comply with the best mode requirement which is no longer part of U.S. law • The PTO first determines whether it is more likely than not that at least one of the claims challenged is un patentable or whether the request raises a novel or unsettled legal question that is important to other patents or applications • If the PTO makes the new finding the PTO then reexamines the claims of the issued patent • The reexamination procedure results in the claims of the issued patent being confirmed amended or cancelled • Discovery procedures are available on a limited basis to evidence directly related to factual assertions advanced by either party Admissions Production of Documents Interrogatories Depositions • Post Grant Review will generally cost less than patent litigation because a Post Grant Review proceeding does not consider any of the other issues relating to patent infringement or damages • Post Grant Review presents an opportunity to establish validity or invalidity of the patent without the expenses involved in considering infringement and damages • Using a Post Grant Review to obtain a litigation stay may still be available to those defending an allegation of infringement which facilitates settlement and licensing discussions while minimizing and/or deferring attorney’s fees and expenses.

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Contact Us Address Juneau Mitchell IP Law Firm 108 N. Columbus St. 2nd floor Alexandria VA 22314 Telephone 1 703 548-3569 For More Information Visit Our Site http://www.juneaumitchell.com/