OUR SERVICES
PATENT
Inventions can only bring about business advantage through a solid protection strategy, coupled with processes that reduce the risk of liability by infringement of others’ patents. Planning that strategy, as a part of intellectual property asset management, requires expertise in the patent application process, patent licensing, and patent infringement litigation.
Our Firm’s extensive patent experience spans a broad variety of technologies and includes extensive domestic and international work in the US, Asia, and Europe.
LITIGATION
Litigation in intellectual property can be complex. Special considerations must be taken on such matters as where a case can be filed, what other claims must be filed at the same time, pre-suit investigation requirements, special pleading requirements – just to name a few. There are special burdens of proof and trial issues that do not come up in other kinds of litigation. Even settlement can require complex licensing issues to be addressed; the wrong settlement agreement can license an industry, not just a particular defendant.
Our Firm’s extensive litigation experience spans a broad variety of technologies and jurisdictions. We put together special teams for each litigation case, because each case is unique.
APPEALS
Appeals are used to get a second chance to review a trial judge or PTAB decision. Appeals can be used to determine venue of a case, invalidity due to an IPR, or review key decisions in a case.
Our lawyers have successful first chair experience representing clients on appeal to the Federal Circuit both as the appellant and appellee. Our appeal expertise includes appeals from the PTAB and trial court.
INTER PARTIES REVIEW (IPR
Early in litigation a defendant can challenge the validity of a patent before the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office. This is a process that occurs outside of the trial court and can often result in a pause during litigation to wait for a decision from the PTAB.
Our lawyers have invalidated entire patents and succeeded on appeal to maintain the invalidity finding. Every IPR our lawyers have filed have had a beneficial effect on litigation, whether it was narrowing issues for trial, bringing the parties to a successful settlement, invalidating claim sets, or forcing the plaintiff to amend the claims to a point where the client could no longer infringe.
TRADEMARK
Building a brand takes a great deal of time and money. Logos, slogans, images and product names are all things that consumers identify with particular products and services, and they play a significant role in driving buying behavior.
It is vital to select brands that carry a strong marketing message and give a unique identity of the goods and/or services of a business. It is also important to have a strategy to reduce the risk of a conflict with a competitor’s brand. Our Firm understands that robust legal work, done early in the brand-building process, will minimize potential problems with others, as well as result in a strong trademark.
TRADE SECRET
Keeping valuable information secret can be complicated, especially in an economic environment in which there is a great deal of workforce movement. Patents and copyrights are significant tools in protecting intellectual assets, but the protection of trade secrets can be critical, too.
Our Firm utilizes a comprehensive intellectual property approach by identifying what can legally be maintained as a trade secret, and then designing a program that will facilitate the protection of those secrets.
COPYRIGHT
Copyrights protect creative works such as music, photographs, literature, artwork, architectural works, jewelry, and even software. Actually, a work is automatically “copyrighted” when it is recorded in a way that it can be reproduced. The copyright can be bought, sold, licensed, etc., without further work. Nevertheless, it cannot be enforced if it has not been registered, and failure to register results in a substantial loss of rights in the United States.
On the other hand, artists are often inspired by other’s previous works, and they question how much of another’s work they can use without a copyright infringement. In other words, how much use is “fair use”?
Our firm understands that a comprehensive legal strategy for avoiding problems with others, while protecting an author’s creation, is vital to obtaining and maximizing the value in any work of authorship.
CEASE & DESIST
A cease and desist letter is just one part of infringement litigation. The process can be complex, regardless of whether it is a patent, trademark, copyright, or trade secret case. Whether you are a plaintiff or a defendant, you should work early to develop a strategy.
Before sending a demand letter to an infringer, plaintiffs should carefully consider what the recipient might do. They might do nothing. They might answer the letter by asking for more information, or they might bring an invalidity case in an unfavorable jurisdiction. That may happen even with a letter that makes no cease and desist threat and is merely an offer to license. What could have been a commercial advantage can become a liability.
Those receiving demand letters need to take care, too. Many times, we have seen them ignored. The reaction may be: “that can’t be patented” or “we’ve been doing that for years.” The problem is that the evidence may be old, and proving those facts can be tougher than the defendant thinks. Also, a failure to respond can appear to be evidence that the allegations in the letter are accurate. Therefore, ignoring a cease and desist letter can multiply the cost of defense.
Early preparation — and long-term strategic planning — leads to better results. Experience in applying the complex laws of validity, infringement, damages, injunctions, claim interpretation, and the myriad of other defenses is essential. This is true whether the case involves a patent, trademark, copyright, or trade secrets.
CORPORATE STRATEGY
It is critical for companies to have a concrete strategy in place for the organization, management, and optimization of their intellectual property.
LICENSING
Licensing offers many advantages to both sides in a transaction. One of the best ways to acquire an intellectual asset is to “license in” the technology or “know-how” from its owner. Significant royalties or other value can come from “licensing out” or cross-licensing. Many joint ventures and start-up organizations successfully employ this strategy. Certain licensing strategies can result in tax advantages. Sometimes, the settlement of litigation is accomplished with licenses. Other times, litigation is needed when a property owner is willing to license, but a user has failed to pay.
Our Firm’s extensive domestic and international licensing experience gives us a robust understanding of the strategic positions on both sides of a license agreement and the complexities that go well beyond its initial grant.
HOW WE DIFFER
Saunders McKeon PLLC differentiates itself by providing strategies using intellectual property to help clients reach their business goals, whether it’s to create or protect value, to mitigate risk, or provide pure business advantage.