1. What type of special capabilities does your firm have for handling our client’s intellectual property?

We have a number of specialized departments adapted for enabling us to offer the highest level of service as a U.S. associate. Our formalities department receives and processes all incoming and outgoing communications both nationally and internationally to ensure that all of the proper procedures are followed. We participate in electronic filing of all papers where possible to achieve the maximum benefit and cost savings to our clients.

Our docketing department utilizes the latest software tailored to our IP practice to ensure that every necessary action is properly docketed and fulfilled.

All of our legal assistants are specifically trained in IP law and understand specialized our practice area. We have a robust system of checklists which are designed to ensure the completeness and accuracy of each filing we undertake.

We have an internal drafting department to ensure that we can quickly, accurately, and efficiently generate drawings which meet the standards of various patent authorities around the world.

We have a technical librarian who maintains our subscriptions and access to a large and growing number of technical and industry databases.

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2. Does your firm have the technical expertise necessary to handle our client’s 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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3. Does your firm work with new foreign associates?

Yes. We are always open to establishing new relationships with foreign based law firms. We have a large number of clients who pursue intellectual property protection around the world. As such, we are continuously working to establish and maintain mutually beneficial relationships with high-quality firms who have an expertise in the field of intellectual property and can provide a high level of service and value to our clients.

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4. Can a U.S. Patent Application be filed in name of the assignee?

Yes, under the America Invents Act (AIA), a U.S. patent application can now be applied for by the assignee or a person who otherwise shows sufficient proprietary interest in the matter. The inventors are still required to sign an Oath or Declaration before the application can be allowed.

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5. Does U.S. Patent Law require absolute novelty?

No. However, 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 anywhere in the world or sold or used in the U.S.

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6. Does the U.S. follow a first-to-file system?

Yes.  For applications filed on or after March 16, 2013, priority is awarded to the first applicant to file a patent application claiming the particular invention.  Priority for applications filed prior to March 16, 2013 is still determined under the prior first-to-invent system.  This change from a first-to-invent to a first-to-file system was implemented in the United States as part of the 2011 America Invents Act.

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7. Can your firm help me in staying up to date on U.S. law?

Yes. We offer a quarterly newsletter which will provide highlights of recent developments in intellectual property law. Click here to sign-up. In addition, our blog (here) provides information on the latest developments as well as our own best practices. Additionally, we have three practice group meetings on a monthly basis which serve to keep our attorneys up to date on the law. You are more than welcome to join us for any of those meetings should you chose.

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8. Does your firm litigate intellectual property cases?

Yes. We have an extensive litigation practice in all areas of intellectual property. You can be assured that all of our attorneys handling the litigation will be registered to practice before the U.S. Patent & Trademark Office (USPTO). While many “full service” law firms claim to have intellectual property litigation departments, they are often staffed with general trial attorneys and one or two “consulting” patent attorneys. We offer a full range of litigation services, including representation at administrative proceedings before the USPTO, the International Trade Commission and other governmental agencies, litigation in state and federal trial courts and appellate courts, and the U.S. Supreme Court.

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9. How can I obtain tariff of charges?

Please contact us or any of our attorneys to obtain our most recent cost estimates.

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10. Does your firm consider alternate fee structures?

In the majority of situations we provide our services on an hourly basis. However, we will consider alternate fee structures depending upon the circumstances of the situation.

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