Intellectual Property Prosecution
LeaderDavid J. Marr
DirectorJohn D. Ermanni
Clark Hill intellectual property attorneys offer comprehensive legal services in the area of patent, trademark, and copyright. Our attorneys are experienced in both the prosecution and litigation of intellectual property matters.
Typically, technology which includes functional products or methods of manufacture is best protected by one or more patents. Depending on the client’s strategy, provisional or traditional utility patent applications will be prepared. These patent applications are filed with the United States Patent and Trademark Office (USPTO) to maximize protection in the United States and internationally.
Once filed, we monitor the status of the patent application. When correspondence is received from the USPTO, we communicate with the client and determine what action is appropriate. When responding to USPTO correspondence, our goal is to ensure that the client receives the broadest protection available for the invention claimed in the patent application. During the period in which the patent application is being prosecuted, we focus on the client’s continued development of the technology to optimize the value of the patent application.
Trademarks and Service Marks
When clients sell a product or service, our attorneys will work with them to protect their trademark or service mark in a manner commensurate with their needs. We search public and proprietary databases of registered marks, both federal and state databases, and common law marks (those that are used, but not registered) to determine the viability of obtaining protection for a chosen mark. Based on similar trademarks and service marks currently being used, we analyze how strong the chosen mark may be in the context of the goods or services with which the mark will be associated.
Applications for registration are then prepared and filed with the USPTO and trademark offices abroad to preserve rights in the chosen mark based on the clients’ marketing plans. The requirements of each country’s trademark office are different, and we provide details as to what is required to maintain a registered status in each country.
In the information age, copyright protection has become a strong ally of the creator of technology. Whether clients’ interest is in software, music, literature, or other media, our attorneys work with them to determine what protection is available, what agreements need to be in place to create an ownership interest in the copyrighted material, with or without transfer back rights, and how to proceed with their publication without infringing the copyrights of others.
Registrations for copyrights are applied via the Copyright Office, which is a part of the Library of Congress. We are experienced in preparing the appropriate application for copyright, and we communicate regularly with our clients to obtain the proper specimens to be filed with the copyright application.
Our attorneys are experienced in all aspects of intellectual property litigation in the federal and state court systems, as well as within the USPTO. Our attorneys will work with you to evaluate the strengths and weaknesses of the clients’ intellectual property assets concerning both enforcement of, and defense against assertions of infringement by third parties.
Based on our clients’ business objectives and goals, we provide valuable consultation on whether, where, and to what extent intellectual property should be pursued to best achieve those goals and objectives.