We determine whether or not your invention is patentable

This typically involves studying the invention to determine whether or not: 1) the underlying subject matter is eligible for patent registration (i.e., the U.S.P.T.O. will not issue patent registrations for abstract or mere ideas, perpetual motion machines, mathematical formulas, and certain computer-related business methods); and/or 2) the invention is new and non-obvious (i.e., the U.S.P.T.O. will not issue patent registrations for inventions already invented by someone else, or for inventions that are obvious variations of something already-invented).

 

We file and prosecute U.S and foreign applications for patent registration

This typically involves drafting a written specification describing what the invention is and how it works, drafting the legal language claiming the invention, preparing the patent drawings illustrating the invention, and preparing the necessary forms.  All of the foregoing is thereafter electronically filed with the U.S.P.T.O. and/or foreign patent office.  After filing the application documents, we respond to correspondence received from the patent examiner, advocating an allowance of the application to register.

 

We determine whether or not your trademark is registerable

This typically involves studying the trademark to determine whether or not the mark is: 1) descriptive of the related goods or services (i.e., the U.S.P.T.O. will not issue trademark registrations for marks that merely describe the associated good or service); and/or 2) confusingly similar to a mark used by another (i.e., the U.S.P.T.O. will not issue trademark registrations for marks that are the same or confusingly similar to those of prior users).     

 

We file and prosecute U.S and foreign applications for trademark registration

This typically involves preparing documents reciting the spelling and appearance of the mark, setting forth the associated goods and services and classifying such goods and services pursuant to an international classification system.  All of the foregoing is thereafter electronically filed with the U.S.P.T.O. and/or foreign trademark office.  After filing the application documents, we respond to correspondence received from a trademark examiner, again advocating an allowance of the application to register.

 

We determine the merits of patent and trademark infringement matters

If you believe someone in infringing your patent of trademark, or are concerned that your invention or trademark may infringe the patent registration or trademark of another, we study the underlying facts to determine the matter’s strengths and weaknesses, and provide opinion advice as to the merits of the overall matter.

 

We litigate patent and trademark infringement and other matters

If resolution of a patent or trademark infringement matter is necessary, we send or respond to cease and desist letters and thereafter litigate the matter, seeking favorable resolution via settlement or trial.   We also litigate miscellaneous patent and trademark matters before both the Patent and Trademark Trial and Appeal Boards of the U.S.P.T.O. 

 

We appeal adverse patent and trademark examiner decisions

If a U.S. patent or trademark examiner refuses to register a given invention or trademark, we appeal the adverse decision to the respective Patent or Trademark Trial and Appeal Board of the U.S.P.T.O.  If the Board affirms the adverse decision, we appeal to the U.S. Court of Appeals for the Federal Circuit.   

 

We also:

-  prepare and file applications for copyright registration;

-  procure internet domain names and resolve domain name disputes before the Internet Corporation for Assigned Names and Numbers (I.C.A.N.N.);

-  prepare, file and prosecute applications for design patent registration;

-  prepare and record intellectual property assignment and licensing agreements; and

-  perform due diligence investigations for intellectual property relating to the purchase; and or sales of businesses.

What We Do

David A. Gottardo, Intellectual Property Attorney

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