Implementing sound IP strategy starts with a clear understanding of the landscape, which is why company leaders count on the intellectual property consulting expertise of Schmeiser, Olsen & Watts to help them navigate complex issues and make informed decisions. Our IP attorneys are equipped to advise our clients on various matters relating to intellectual property law, including Startup Counseling, IP Portfolio Management and Program Development, Opinions of Counsel, IP Due Diligence and IP Audits.
In addition to our notable patent procurement services, we partner with organizations to provide IP Portfolio Management, including advanced docketing system software, reporting and analysis.
In addition to our notable patent procurement services, our attorneys assist organizations with successful management of their IP portfolios. Our systems and review processes allow us to continue to issue the highest quality patents and trademarks.
DIGITAL PATENT FILING SYSTEMS
With the utilization of paperless digital patent filing systems by the US Patent and Trademark Office, it has become easier to provide direct client access to client-related matters, and to timely report on such matters. If desired, our attorneys can work with clients to establish client-specific Customer Numbers, and set up access to Private PAIR, so our clients can access and review the current status of pending matters in their IP portfolios.
ADVANCED DOCKETING SYSTEM
In addition, our firm uses a redundant docketing system through advanced software. Docketed matters are continuously backed-up between multiple in-house offices, and on a daily basis, software extracts customer-specific data from PAIR, thereby keeping the docketing system up-to-date. Our IP portfolio management attorneys adapt our docketing and reporting procedures to our client’s specific needs.
Our attorneys are accustomed to providing detailed reports for our clients. By utilizing sophisticated software with extensive reporting capabilities, we can cull data and generate reports in a variety of formats, on short notice. Our attorneys are equipped to analyze the data and draw conclusions that can be relied on to make executive level decisions on particular IP filing strategies.
Our IP attorneys provide legal review and counsel on IP matters related to mergers and acquisitions, joint ventures, product launches and other business and financial transactions.
Conducting legal due diligence is an essential step for any company prior to finalizing major financial and business transactions. IP Due Diligence includes legal review and counsel on intellectual property matters related to mergers and acquisitions, pre-suit investigations for infringement lawsuits, joint ventures, ownership transfer, validity analysis, product launches and IP Audits.
We provide legal opinions on various IP issues, including Trademark Clearance, Freedom-to-Operate, State-of-the-Art Search, and Patentability, Invalidity and Infringement Opinions.
Business decisions sometimes require a legal opinion from a trusted professional. Our attorneys provide reliable and accurate legal opinions on various intellectual property issues to assist in your decisions. Provided below are some common Opinions of Counsel we provide to our clients.
A determination on the patentability of your invention based on a careful and detailed review of prior art references returned in a global search of the invention. Our quality Patentability Opinions outline a potential claim scope so that you fully understand the breadth of the patentability of your invention.
An opinion on whether your proposed trademark is registerable with the USPTO, based on a review of existing marks. Our Trademark Clearance Opinions are relied on by businesses so that they can confidently invest marketing and advertising resources in promoting their proposed mark before it is registered by the USPTO.
An opinion on whether your company may proceed with selling a proposed good or practicing a method without infringing identified, relevant patents. With an FTO assessment, our IP attorneys examine the claims and prosecution history of the relevant patents.
An analysis of the current landscape of a particular technology or industry, based on results from a global search of prior art and publications. The State-of-the-Art Search can be helpful for businesses to determine whether they should expand into a new field, plan a design around, or help predict trends in a particular industry.
An opinion on whether a particular patent is invalid in view of prior art and other statutory bars. Our IP attorneys regularly prepare Invalidity Opinions for clients looking to determine the validity of a patent held by a competitor, and to help clients in making strategic product development decisions.
A detailed analysis and opinion whether an accused infringing device of method infringes your patent(s). To learn more about how our IP attorneys can evaluate infringement by a third party of your patent, read about ourIP Due Diligencepractice.
An investigation and report regarding the individuals who should be listed as inventors on a patent application. Our IP attorneys know the critical questions to ask when determining who is legally considered an inventor.
A legal analysis to determine ownership of a patent or patent application when filed with joint inventors or under a joint development agreement.
Our IP attorneys will examine factors including ownership, lapsed rights, validity of key patents, life expectancy of the IP, and licensing and/or contract duties and obligations.
A clear understanding of your company’s intellectual property assets is critical. Our IP attorneys provide that understanding through evaluation of the IP assets owned by your company. We help you understand how the intellectual property is being used and ensure that the best strategies are in place for managing and utilizing your intellectual property.
OUR ATTORNEYS WILL EXAMINE SEVERAL FACTORS:
- IP ownership
- Lapsed rights
- Utilization of IP assets
- Validity of key patents
- IP value and importance in the industry
- Life expectancy of the IP
- Licensing and/or contract duties and obligations
The factors listed here, and other factors to be examined, depend on the scope of the IP audit.
WE ENSURE YOUR IP ASSETS ARE PROPERLY MANAGED & UTILIZED
The skilled IP attorneys at Schmeiser, Olsen & Watts can assist with an IP audit of your company, providing legal insight specifically focused on IP strategy. Successful IP audits require a blend of your business professionals and our IP attorneys, whom have the legal and technical background to quickly familiarize themselves with your core technology, and provide valuable conclusions.
Implementing sound IP strategy starts with a clear understanding of the landscape. Learn more about our IP counseling services. Our attorneys are equipped to advise our clients on various matters relating to IP. Company leaders count on our expertise to help them navigate complex issues and make informed decisions.
Our patent & trademark attorneys understand that early stage startup companies and emerging businesses must carefully budget the amount spent on protecting their innovation. This often dictates patent and trademark filing strategies domestically and even abroad.
PATENT & TRADEMARK COUNSEL FOR STARTUPS
Our trademark & patent attorneys take pride in their ability to work with startup companies to develop filing strategies to best protect their brand and innovations on a limited budget. We have decades of experience successfully navigating startup companies during the early stages of IP protection. Please contact us to discuss economical ways to obtain a filing date prior to publicly disclosing your ideas.
Our IP program development may include educating your personnel, drafting invention disclosure forms for internal use, and developing a ratings system for evaluating inventions.
Every organization has its own intellectual property culture with varying IP portfolio sizes. While some companies have sophisticated invention practices and procedures, others seek to improve or implement a procedure for cultivating innovation to enlarge their IP portfolio. Our IP attorneys offer professional legal services and advice to help start or refine the process from conception to filing.
OUR IP PROGRAM DEVELOPMENT MAY INCLUDE THE FOLLOWING:
- Educating your personnel on intellectual property law issues
- Detailed remote or in-person presentations
- Drafting documents for internal use, such as invention disclosure forms
- Developing a ratings system for evaluating inventions and determining filing strategies
Each aspect of your IP program development is tailored to the specific needs and requirements of your company, to realize your company’s goals in starting or growing an IP culture.
In addition to drafting employment agreements to address trade secret protection, noncompetition and nondisclosure, we have experience representing businesses on both sides of trade secret disputes.
Protecting trade secrets can be challenging as they are not simply tangible assets, but also intangible assets. Trade secrets also exist in the form of information in employees’ minds, as well as data on computers and in the cloud. Unlike 50 years ago, information can be shared almost simultaneously through online and cellular communication, making misappropriation significantly easier today. Information, such as engineering drawings, that were once stored in locked vaults and cabinets, can now be stored on a single thumb drive, making it easier for a person to steal trade secrets and avoid detection.
DETERMINE IF YOUR TRADE SECRETS ARE SAFE
Here are several questions to consider when determining if your company’s trade secrets are safe.
- Who has access to the information? Are those with access likely to stay with the company? Are those with access bound by confidentiality obligations? Have they ever been employed by a competitor?
- Is the information inaccessible to temporary or contract employees? Where is the information located? Is it in a single spot, possibly a fireproof safe inaccessible to all but key employees?
- What efforts are required for a competitor to reverse engineer the information? Can the information be kept secret for at least 20 years, or is it unlikely that within the next 20 years someone will come up with identical information?
- Is the information a process that is performed within a restricted access and secure facility?
IMPLEMENT PROTECTIVE MEASURES
With the increase in digital assets, improvements in technology and lack of job loyalty, companies must make sure, now more than ever, to take appropriate protective measures to ensure their trade secrets don’t end up in the wrong hands.
- Implement employment agreements for employees and third parties (such as contractors) to read and sign. These policies should include the notice requirements of the 2016 Defend Trade Secrets Act. Depending on the jurisdiction, it is not wise for companies to rely solely on non-compete contracts, as they may not be enforceable within the state.
- Make sure that the trade secret information is clearly labeled as confidential trade secret information.
- Passwords, locked vaults, cabinets, and other safeguards should be put in place. Only employees who need the information to complete their job tasks should have access to it.
- Implement policies prohibiting employees from downloading certain information, such as formulas, onto portable devices and thumb drives without prior consent.
- When employees leave the company, it is important to make sure that trade secrets do not walk off with them. Conduct exit interviews where the policies discussed above are emphasized to the departing employee, and disable the departing employee’s accounts and/or other access to the information.
Learn more with Trade Secret FAQ’s