Once a patent is filed, a first action is usually received within about 18-24 months. Many times the action includes objections and/or rejections of the Examiner which must be responded to within three months. Attorneys work with the inventor(s) to determine the best way to respond to the Examiner’ concerns, and an appropriate Response will be filed. This process may occur several times during the pendency of an application, depending upon the prior patents found by the Examiner, and the particular facts of the invention. Once the Examiner determines that there is allowable subject matter, a Notice of Allowance will be sent and the patent issue fee will be due within three months. About three or four months after payment of the issue fee, the patent will be issued and can thereafter be enforced against infringers. International prosecution proceeds in much the same manner, and we work closely with our foreign associates to shepherd your application through the process in the most efficient manner.
Maintenance of Protection
Protection of your valuable technological advances does not end with the assessment and procurement steps outlined above. For example, patents (and in many foreign cases, applications) must be maintained during their lifetime to avoid premature cancellation. Our computerized docketing system provides timely reminders and warnings of upcoming maintenance fee due dates and other deadlines for maintenance action required for various types of intellectual property protection. We can also help you establish proper follow up procedures for maintaining trade secret and other proprietary information in a most reliable manner for your particular situation.
Validity and Infringement
From time to time, clients may become aware of patents and/or third party products which may be of interest with respect to a client’s own current research or prospective projects and/or products. We can undertake studies of these situations and provide an opinion regarding the scope of an existing patent, the potential scope of a known "patent pending," suggest ways in which a client’s product may be distinguished from a patented product (either during development or for existing products), and provide opinions as to whether a third party’s product might infringe one of a client’s patents. We can also provide pre-market clearance opinions to determine the relative risk of infringement problems with newly developed technology or to help clients steer clear of competitors’ patents.
Enforcement and Litigation
Our Intellectual Property Group has extensive experience in enforcement of rights, from both the perspective of the property owner and of the accused party, handling cases all over the United States and worldwide. When our clients suspect competitors of unauthorized use of patented technology or other proprietary rights, we can help verify the activities, assess the legal and business options for enforcement, and provide the facts and understanding to help management determine the optimal course of action.
Our attorneys have handled all aspects of the vast array of enforcement proceedings, including litigation in state, federal and government agency courts and tribunals, investigations before the International Trade Commission, arbitrations, mediations, and formal and informal licensing programs. Because of our experience in the full spectrum of intellectual property practice, we can help clients to understand how each of the many opportunities and alternatives of intellectual property law might be used to assist clients in protecting their technology and maximizing the benefits from these legal tools.