We understand that the long term viability of a company is largely tied to its ability to profit from its own ideas. To protect the rights to those ideas, or to acquire permission to bring them to fruition, often requires a full-range of skills and experience that most boutique IP firms lack. Dilworth IP is different. Our professionals have been deliberately chosen because of the diversity of their strengths within the realm of intellectual property law. As a team, we collaborate to effectively provide a comprehensive strategy and complete package of services from sophisticated patent and trademark prosecution to precise agreement drafting to experienced post-grant proceeding services and all the various IP related services that fall between. Most small firms cannot offer such a wide-ranging perspective, and larger firms typically fail to provide the personal level of service that we enjoy with our clients.
To learn more about the practice areas we serve, click on “expand” next to each title below.
The framers of our Constitution were foresighted in their understanding that innovation and ingenuity are crucial to the growth and sustainability of our economy and that inventors need an incentive to innovate. To accomplish this, they gave to Congress the power to “promote the Progress of Science and the useful Arts” by securing for inventors, for a limited time, the “exclusive Right to their . . . Discoveries.” This social contract requires a full disclosure of the invention in exchange for the limited patent right. The patentee gets the reward of a head start over its competition; in exchange, the public receives the benefit of later being able to practice something previously unknown — the invention. Technological progress is the result.
We, at Dilworth IP, help our clients procure high-quality patents, maintain and grow portfolios through effective prosecution, and identify opportunities for cost savings through selective pruning of assets that have lost value or no longer fit the current business strategy of our clients. Our attorneys and agents have drafted and prosecuted hundreds of patent applications that span a wide range of technologies. We focus on getting patents that not only meet patentability standards, but can withstand, if necessary, a post-grant challenge.
Trademarks, trade names, service marks, and trade dress help consumers select goods and services by identifying the source of those goods or services and by providing quality assurance. Trademarks (and service marks) promote fair competition by enabling providers of goods and services to build goodwill with the general public and to connect, in the mind of the consumer, particular goods or services with the provider’s brand. Trademarks can be words, names, slogans, symbols, sounds, designs, product shapes, or colors as long as they distinguish the owner’s product or service.
The process of searching for available marks and selecting ones which are distinctive and appropriate cannot be overvalued. It is our first step in the process of securing and promoting the proper brand image of our clients and a step we, at Dilworth IP, take great care in. We teach clients how to use their marks properly, we help them register their marks in the USPTO with effective prosecution, and we guide them in maintaining those marks by providing evidence of their use in commerce. We identify and resolve potential conflicts, and if necessary, we help clients enforce their trademark rights or defend themselves from competitive claims.
Within the context of intellectual property, a license provides permission to act in a manner that would otherwise infringe upon the rights of others. A patent owner may grant another party an exclusive or nonexclusive right to make, use, or sell a patented invention in exchange for a payment of royalties or other consideration. Sometimes, the consideration is permission to practice under patents owned by the other party, known as cross-licensing. A patent license is often accompanied by the right to utilize trade secrets or “know how” owned by the licensor. A trademark license enables the licensee, under suitable supervision, to market and sell products under a particular trademark. Copyright licenses provide permission to copy and/or distribute copyrighted writings, audio or video recordings, software, or other original works of art.
Licenses are an important (sometimes the most important) component of an intellectual property agreement. Whether it relates to patents, trademarks, trade secrets, or copyrights, Dilworth IP’s attorneys are highly skilled in drafting various types of intellectual property agreements. Our approach to licenses is from a business-minded perspective. We work hard to ensure that our clients get full value for licenses they grant to others, and that our clients who receive licenses are granted, on fair terms, all of the rights they need to fully utilize the licensed product for their business.
Like patents, the provision for legislation to protect an author’s Works is expressly set forth in the United States Constitution, and specifically “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors … the exclusive Right to their respective Writings ….;” United States Constitution, Art. 1, Sec. 8, Cl. 8.
Congress has done so in the Copyright Act, Title 17, Sec. 1, et seq.
Dilworth IP assists its clients at every step in securing these copyright rights. The process starts with an evaluation of the subject matter to determine whether it qualifies for copyright coverage. Although the threshold standard is not rigorous, certain items do not qualify, such as: pre-existing materials; facts, ideas, principles and concepts; procedures, processes, systems, or methods of operation; and materials in the public domain.
Next, a specimen of the Work is submitted to the Copyright Office together with the appropriate Form of the Application. The date(s) of publication and any derivation from earlier works are carefully noted.
Copyright enforcement proceedings, although similar to patent and trademark lawsuits in federal court, have some unique features and provisions that can be fraught with hazard for the unwary. In particular, the copyright law provides the unusual features of a grant of attorney fees to the prevailing party, and the possibility to elect statutory damages where actual damages or profits would be difficult or impossible to assess. However, timely registration of the Work is required to be eligible for these monetary recoveries.
As such, copyright law can be tricky. But whatever the facts surrounding a client’s copyright needs, the attorneys at Dilworth IP have multiple decades of experience in protecting authorship rights.
To qualify as a trade secret, the more strict patent standards of novelty, non-obviousness and utility are not required. But rather, the product, process or other information constituting the trade secret must provide a competitive advantage comprising present or future economic value to the owner. Additionally, trade secret owners must take such precautions to maintain secrecy that are appropriate under the facts and circumstances.
Traditionally, trade secrets were enforced at common law. Since 1979, nearly every state has codified these common law remedies by enacting trade secret statutes under the Uniform Trade Secrets Act. Nonetheless, many, if not most trade secret cases, are litigated in the federal courts, under diversity of citizenship or as pendent to federal subject matter, such as a patent, trademark or copyright.
Like other intellectual property disciplines, trade secret law contains its own set of unique features. For example, and similar to trademark and copyright law, a combination of actual damages and/or the misappropriating party’s unjust enrichment or profits are recoverable in an appropriate case. Moreover, attorney fees may be granted to the prevailing party.
Trade secrets and know-how are important elements of intellectual property portfolios that may in fact be even more significant than patent coverage. Indeed, and given the expense and uncertainties that may surround the acquisition and maintenance of a substantial patent portfolio, businesses may opt to protect commercially valuable information through reliance upon trade secrets. These can be difficult choices, and the lawyers at Dilworth IP have many years of experience in assisting clients to select the vehicle of protection that is most appropriate to their fact situation.
Intellectual Property Agreements are used to define the rights and obligations of parties engaged in the development, pursuit or use of technology. Such agreements can include Non-disclosure/Confidentiality Agreements, Joint Development Agreements, Assignments, License Agreements, Technology Transfer Agreements and Joint Venture/Collaboration Agreements. Carefully preparing the terms of such agreements at the front end of a business relationship can yield significant benefits in the future, should rights ever need to be enforced.
The legal professionals at Dilworth IP ensure that our clients completely understand the vast legal implications of such agreements. We have considerable experience in crafting and negotiating agreements that meet the particular requirements of a client’s circumstances. Whether the need is a Confidentiality Agreement to protect disclosures in a preliminary negotiation or a Joint Development Agreement covering a critical business area, Dilworth IP has the people, knowledge and experience to bring deals to a successful conclusion.
Whether in Europe in the form of a patent opposition, or in the United States in an ex parte or inter partes re-examination proceeding or a patent re-issue, post-grant proceedings have been valuable and cost-effective tools.
Like many areas on the intellectual property landscape, these elements of the patent law are in a state of flux. Under the America Invents Act, provision has been made for fazing-in the new patent review techniques of (a) pre-issuance submissions of prior art by third party challengers (PIS), (b) post-grant review (PGR), and (c) inter partes review (IPR).
As a supplement to litigation in the federal courts, these new procedures serve to check, correct, and validate the traditional patent examination process, and will be conducted before the newly formed Patent Trial and Appeal Board, with appeal to the Federal Circuit. Accordingly, the express intent of the new statute is to provide a forum for ventilation of relevant issues of patentability before resort to expensive litigation.
The ultimate effectiveness of these new procedures remains largely unknown. Some observers believe that post-grant proceedings will provide a less expensive alternative to costly patent litigation. Others opine that innovations will become yet more difficult to protect.
The details of these new procedures can be complex, and are yet to have been fully determined. Much has been written about the details. But it is clear that the substantial experience of the lawyers at Dilworth IP in carrying out the traditional techniques of patent oppositions, re-examinations and re-issues will serve our clients well in achieving the projected benefits to our clients via these newer PIS, PGR, and IPR procedures.
Legal Opinions are required in the course of business to provide a reasoned analysis of the risks and potential gains of seeking or exploiting intellectual property rights, or preventing others from exercising them. Such opinions can include evaluating the patentability of a researcher’s discovery or the freedom-to-operate in a given technology area. Where particular patent rights are of concern, it may be necessary to determine whether a research/manufacturing endeavor is possible through a non-infringement opinion, or whether the patent is enforceable through a validity opinion. Alternately, a design-around opinion can be obtained to lay out the safe path around the patent’s claims.
At Dilworth IP, we assist clients in the wise allocation of their research and manufacturing resources through the preparation of legal opinions to meet their needs. When drafting opinions, our procedure involves evaluating the discoveries of inventors for their patentability, canvassing patent landscapes to provide guidance on freedom-to-operate, and analyzing particular patents to determine the risk of infringement. Our manner of careful consideration of all these matters allows clients to focus on what they do best: creating new products or improving existing ones, and proceeding with their manufacture.