Preparation and Prosecution
We have considerable experience and expertise in preparing and prosecuting patent applications in a wide variety of fields and technologies. We take pride in our ability to quickly educate ourselves about your invention. We will take the time to work with you to make sure we understand your invention and are able to identify the novel features. Our attorneys have diverse technical backgrounds and experience in preparing and prosecuting patent applications in the following fields:
- Mechanical Arts
- Electrical Arts
- Chemical/Chemical Engineering
- Computer Technology
- Business Methods
We take a determined but pragmatic approach to prosecuting patent applications in an effort to get you the broadest patent protection you are entitled to.
Searches and Freedom to Operate Opinions
We are proponents of conducting relatively thorough but focused and efficient patent searches to assist our clients in deciding whether to proceed with the development of their idea or pursue patent protection. We encourage clients to utilize online patent databases to conduct preliminary searches in an effort to identify patent references which may anticipate their invention. However, in most cases a professional search and report addressing patentability and infringement concerns is generally warranted. Online databases which are helpful include:
Google Patents (which is easier to use for beginners to search US Patents)
Espacenet – European Patent Office Database
We try to bring a litigator’s perspective in counseling our clients as to the scope of a competitor’s patents and options for designing around such patents. Most of our patent practitioners have experience handling patent infringement litigation. We believe this experience assists in our ability to provide well reasoned and pragmatic opinions to avoid claims of patent infringement.
Other Patent Services Provided Include:
- Patent Infringement Litigation
- Patent Licenses and Assignments
- Recording Documents Affecting Title to Patents and Applications
- Due Diligence Reviews of Patent Portfolios to be Acquired
- Non-Disclosure Agreements
- Monitoring Your Competitors’ Patent Applications
- Reexamination of Competitors’ Patents
- Paying Patent Maintenance Fees and Annuities
- Coordinating Patent Application Filings in other Countries
- US Filing Associate for Foreign Law Firms
Actively protecting your trademarks is becoming increasingly important as continued expansion of the internet and globalization increase the risk that another company already has or will adopt a confusingly similar mark. Registering your trademark provides numerous advantages including providing prima facie evidence of the validity of your claim of rights in the mark. Such evidence can be critical to convincing infringers to cease infringing activity, to establish a claim of prior rights in a domain name over a squatter, obtaining the assistance of website operators to remove listings for infringing goods or enlisting the services of US Customs to prevent the importation of counterfeit goods.
Registering a trademark may seem relatively straight forward, but there are pitfalls for the unwary. Issues including correctly identifying the applicant, how to describe the goods or services, whether to register the words alone or a logo version of a mark and what constitutes use in commerce may seem simple but when approached incorrectly can add to the cost of registering a mark or increase the likelihood that registration will be refused. Relying on our considerable experience in searching, registering and litigating trademarks in a wide variety of industries we can assist you in effectively and efficiently registering and managing your trademark portfolio.
We encourage conducting a trademark search before adopting or applying to register a trademark. You can conduct a preliminary search of the US Patent and Trademark Office registration records on the USPTO Trademark Electronic Search System to eliminate from consideration any marks currently registered for similar goods or services. We can then provide a more thorough search of not only federal registration records but state registration records, common law uses through the internet and international registration records.
Other Trademark Services Provided Include:
- Trademark Infringement Litigation
- Trademark Licenses and Assignments
- Recording Documents Affecting Title to Trademark Registrations
- Due Diligence Reviews of Trademark Portfolios to be Acquired
- Monitoring Your Competitors’ Trademark Registrations and Applications
- Opposition, Cancelation and Concurrent Use Proceedings
- International Filings through the Madrid Protocol
- Coordinating Trademark Searches and Applications for Registration in other countries
- US Filing Associate for Foreign Law Firms
Registering your claim of copyright promptly after publication can be critical to your ability to enforce your claim of rights. Failure to register within three months of first publication or prior to an act of infringement will likely prevent you from recovering attorney fees expended in pursuing a claim of infringement. If your income is derived from the sale or licensing of works of authorship including: software, photographs, artwork, printed publications, architectural drawings, audio visual works or music or sound recordings we encourage you to develop a program for registering your claim of copyright in these works. You can prepare an application for registration through the Copyright Office website.
We will gladly assist you with completing an application for registration. We encourage software developers to register each new version of their software to avoid any issues as to whether all of the source code has been covered by a registration.
Other Copyright Services Provided Include:
- Copyright Infringement Litigation
- Copyright Licenses, Assignments and Work Made for Hire Agreements
- Recording Documents Affecting Title to Copyright Registrations
- Due Diligence Reviews of Copyright Portfolios to be Acquired
We have a broad range of experience in negotiating and drafting agreements related to intellectual property including in the fields of:
- Licensing including Software Licensing
- Intellectual Property Provisions in Distributorship Agreements
- Intellectual Property Provisions in Employment Agreements
- Intellectual Property Provisions in Asset Purchase Agreements
- Confidentiality Agreements
We often work with corporate counsel from other firms to review intellectual property provisions in Asset Purchase Agreements, Employment Agreements or Distributorship Agreements. We also assist corporate counsel in conducting due diligence reviews of IP assets to be acquired in a transaction, including searches of the assignment records of the United States Patent and Trademark Office and the Copyright Office to confirm clear title in the assigning party, review of the status of patents and trademark registrations to ensure they remain active and all required maintenance fees or renewals have been paid and to provide advice on the scope of rights in any patents, trademarks or copyrights to be acquired.
INTELLECTUAL PROPERTY LITIGATION
We have broad experience in handling the following types of intellectual property litigation or adversarial proceedings:
- Federal Court litigation – Patent, Trademark & Copyright Infringement
- State Court litigation – Trademark and trade secret cases and contract disputes involving intellectual property issues
- ITC Proceedings
- Trademark Opposition and Cancellation Proceedings
- Domain Name Dispute Proceedings
We represent rights holders and accused infringers. We have served as lead counsel and as co-counsel for commercial litigation firms seeking our expertise in intellectual property matters and serve as local counsel for matters filed in the United States District Court for the Western District of Missouri or the District of Kansas or in any state courts in Kansas or Missouri.
Our Foreign Filing Network
We have established a network of law firms in other countries through which we can coordinate the filing of corresponding patent and trademark applications in most, if not all, foreign countries. Through these foreign associates we can also assist our clients in finding counsel for handling patent or trademark litigation and other legal matters related to intellectual property law in many foreign countries.
US Filing Associate for Foreign Firms
We handle U.S. filings for patent and trademark matters on behalf of several foreign law firms. We are seeking additional opportunities to serve as U.S. filing associate for foreign firms. Our hourly rates tend to be considerably lower than rates charged in larger cities and on either coast of the United States. A copy of our schedule of charges in English or Spanish will be provided upon request.