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1. Does your firm have the technical expertise necessary to handle our intellectual property work?

All of our attorneys are handpicked for their degrees in engineering, chemistry, biology, physics, metallurgy, ceramics and other technical specialties in addition to their law degrees. Collectively we provide a breadth and depth of experience to serve clients in diverse industries with specialized needs. Our niche experience and broad experience base enables us to provide quick and efficient service without the need for costly time spent getting to know your industry.

Below is a list of the technical degrees held by the Firm’s attorneys:

  • Aeronautical Engineering
  • Automotive Engineering
  • Biochemistry
  • Biology
  • Ceramic Engineering
  • Chemical Engineering
  • Chemistry
  • Civil Engineering
  • Computer Science
  • Electrical Engineering
  • Mathematics
  • Mechanical Engineering
  • Metallurgical Engineering
  • Organic Chemistry
  • Physics

For a more complete list of technical specialties and expertise, please check our attorney profiles.

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2. Our company is expanding and selling our patented product internationally. Does our U.S. patent protect provide us any rights abroad?

No. A U.S. Patent only allows you to prevent other from selling, making, or importing your invention in the United States. You have one year from the time a U.S. patent application is filed to file for patent protection internationally.

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3. How do I obtain patent rights internationally?

You may file an individual patent application in each foreign country where you seek protection. The more efficient approach is to file a PCT application which would covers the foreign countries that are members of the World Intellectual Property Organization (“WIPO”). Once the PCT application is on file, you can delay the costs of seeking protecting in the individual countries by up to 30 months.

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4. When is the right time to apply for a patent?

It is never too early to consult with a patent attorney. The earliest time for filing a patent application would be just after your conception of the invention. Conversely, there are statutory bars that can prove fatal to patenting an invention if you wait too long. In the United States, there is an absolute bar to filing a patent application more than one year after the invention has been described in a printed publication or sold or used in this country. The situation is even more unforgiving abroad, as a patent application must be filed somewhere before any public disclosure of the invention is made in order to preserve your right to a patent.

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5. When is the right time to conduct a clearance search?

The timing of when to conduct a clearance search is influenced by many factors. On one side, if you do not yet have a reasonable idea as to the product specifications then performing a proper clearance search requires an extremely broad scope and can only identify patents of potential concern. Conversely, if focus has already shifted to manufacturing and brining the product to market, you may find any necessary design changes difficult to implement. As such, the optimal time to perform a clearance search is when the designers of the product have selected a design but not yet finalized it and shifted to production. This way, if patent clearance issues arise, the team may be able to revisit the design to avoid the problem.

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6. Someone else is making a product or offering a service that infringes my patent, how do I stop them?

If you believe that your patent is being infringed, we recommend that you contact a reputable patent attorney right away. The attorney will compare your patent to the product you allege is infringing to determine if it does in fact infringe. From there, several strategic options exist ranging from sending a cease and desist letter asking the infringer to stop selling the product to filing a lawsuit in Federal District Court. Whatever you do, don’t panic, as having someone infringe your patent can be one of the best things that ever happened to you.

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