INTELLECTUAL PROPERTY

Copyrights
Licenses / Assignments
Market / Financial Evaluations—Quantitative Analyses
Patents:  Utility, Design, etc.
Patent & Trademark Searches
Trademark / Service mark / Trade Dress
Trade Secrets

Copyright

Once a work is fixed in a tangible medium, a common law copyright may apply.  However, Title 17 of the U.S. Code allows authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works to obtain a statutory copyright.  This protection for any work—published and unpublished—allows the copyright owner the exclusive right to, among other things, reproduce, prepare derivatives, distribute, and perform the work publicly.  Due to the ease with registering a copyright (and the related presumption of validity), we advise many—but certainly not all—of our clients to prosecute their own copyright applications.  Should you need help with copyright prosecution or infringement, our team can help you in the process.

Licenses / Assignments

Typically, an entity will own intellectual property rights (“IPRs”) from any number of intellectual property (“IP”) protections or instruments (e.g., copyrights, trade secrets, patents, trademarks, etc.).  Sometimes, it is beneficial (e.g., maximize revenue on a time-valued asset) or mandatory (e.g., cross-license, settlement) to allow another the right to use an IPR (under any number of conditions) or to sell it outright through a complete transfer.  The latter is an assignment while the former is a license.  Mr. Newman has extensive experience in these types of IP contracts, and their drafting is critical for ensuring that a client is thoroughly protected by, for example, securing and implementing a fiscally lucrative exit strategy

Market / Financial Evaluations—Quantitative Analyses

We employ quantitative analysis to help you make more informed decisions.  We have extensive experience in evaluating many types of assets, from Intellectual Property Rights ("IPRs") to actual cases and controversies, i.e., what is a lawsuit potentially worth.  We can help you decide, for example, whether it is worth initiating, maintaining or settling litigation or whether a potential IPR license or assignment generates maximum value.  We believe that the wisest business decisions come from combining robust legal and business training, broad experience, and sophisticated quantitative analysis.

Patents:  Utility, Design, etc.

A patent provides for a government-sanctioned, time-limited monopoly that allows an owner to exclude others from making, selling, or using the patented invention.  As Mr. Newman has written in a white paper concerning Trade Related Aspects in Intellectual Property Rights (TRIPs): 

“Since people will work for economic gain, patents act as a powerful economic incentive.   Incentives to create, to invent, to publish, and to innovate fundamentally define the intellectual property regime.   The US Constitution adopted this incentive-based approach by using patents (and copyrights) as a means of promoting ‘the Progress of Science and the useful Arts.’”​

There are multiple types of patents:  utility, design, and plant.  As a registered patent attorney, Mr. Newman has experience both in prosecuting patents and their enforcement, i.e., where there has been a potential infringement.  Moreover, with its extensive network of IP attorneys, this Firm can help you in the U.S. or with any Patent Cooperation Treaty (PCT) application (misnamed as an international application) in obtaining intellectual property rights via a patent.

Patent & Trademark Searches

Just like insurance or a financial instrument known as a ‘put,’ intellectual property (“IP”) searches allow a potential IP applicant to identify with some quanta of certainty whether the investment in prosecuting an IP application is worth the return on the investment (ROI).  Of course, that analysis should be more robust (e.g., discounting the present value of the investment, etc.) but that simple formula basically reveals the importance for IP searches (as opposed to a mere market search).  We always advise our clients to do, if possible, their own initial search as the ease with which a pedestrian search can be conducted is great.  However, just looking at patents, with over ten million U.S. issued patents and pending patent applications with approximately 400,000 new patent applications filed each year, a professional search is usually warranted.  We can help with any IP search.

Trademark / Service mark /  Trade Dress

 A trademark or service mark is any recognizable sign, design, or expression which identifies the maker of products or the provider of services.  A common law mark applies as soon as a maker or provider puts a mark into the stream of commerce.  A statutory mark is acquired once a government authority issues to the maker or provider, or any assignee, a registration.  As always, only entities should own intellectual property.  Trade dress is defined as a product's overall appearance or total image and typically includes features such as size, shape, color or color combinations, texture, graphics or even certain sales techniques.  Like unregistered trademarks, an unregistered trade dress is entitled to protection if it is distinctive, either inherently or through an acquired distinctiveness (or secondary meaning).  Registered trademarks and service marks can make use of statutory provisions.  Our team can help you secure your intellectual property. 

Trade Secrets

A trade secret, broadly speaking, is any confidential business information or classified information which provides an ongoing concern a competitive edge.  A trade secret can be a formula, practice, process, design, instrument, pattern, commercial method, or compilation of information not generally known or reasonably ascertainable by others where its owners takes steps reasonable under the circumstances to protect the trade secret.  One of the most famous trade secrets might be the recipe for Coca-Cola.  On May 11, 2016, the U.S. created federal jurisdiction for trade secret theft via “The Defend Trade Secrets Act,” an act which largely tracks the Uniform Trade Secrets Act, which has been adopted by 48 states (with New York and Massachusetts the lone holdouts).  Our team can help you identify your trade secrets and take the necessary steps to protect this intellectual property that may, under certain circumstances, never expire.

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