A patent provides its owner with the right to exclude others from making, using or selling the claimed invention. Carstens & Cahoon has extensive experience in obtaining patents for inventions in fields as diverse as computer hardware and software, food technology, oil field equipment, medical devices, business methods, telecommunications and aviation. The firm’s experience extends beyond practicing before the U.S. Patent and Trademark Office to include navigating the numerous requirements for obtaining patent protection internationally.
Patent litigation is typically complex and demanding, requiring counsel with the appropriate legal and technical expertise. Carstens & Cahoon, LLP brings a high level of experience and competence to the courtroom and has litigated many patent infringement suits successfully. The firm's arguments concerning validity and infringement have been instrumental in achieving favorable settlements for our clients, and the firm's expertise in licensing patent portfolios has brought added value to our client's intellectual property programs. We have the depth, knowledge, experience, expertise to handle any patent litigation matter.
Interacting with the Patent and Trademark Office (PTO) is just part of the process followed to successfully prosecute a patent application to issuance as a patent. Our attorneys are experts at interacting with the inventors and in-house counsel as well. The quality of the patents we obtain is a result of the unique blend of the technical expertise of our attorneys with their excellent communication skills. The technical expertise of our patent attorneys ranges across the spectrum of technical disciplines, including electrical engineering, chemical engineering, and computer science. The firm prides itself in consistently obtaining meaningful patent protection for its clients with a thoughtful combination of efficiency and tenacity.
Understanding the risk associated with a patent requires an ability to carefully dissect the history of the patent and the scope of its claims. Our attorneys are experts at counseling clients on whether a product infringes a patent and on issues of patent validity. We can provide right-to-use opinions in advance of product investment, infringement and validity due to diligence in advance of litigation, and infringement and validity analysis in response to cease and desist letters and threatened or actual litigation. Our patent lawyers can also assist clients in developing, marketing, and enforcing patent portfolios.
An IPR is an administrative trial at the USPTO limited to the issue of the validity of patent in view of two specific types of prior art: patents, and printed publications. IPR stands for “Inter Partes Review.” The process starts with the filing of a detailed “Petition” with the USPTO to set out how the cited prior art demonstrates that the claims of the patent at issue are invalid based on anticipation or obviousness. The Petition is usually supported by the declaration of an expert. The Patent Owner then has 3 months to file an optional preliminary response, and then the USPTO will either grant the petition and institute the trial as to at least one claim, or deny the petition. If the petition is granted, then the trial process shown in the diagram below is generally completed in one year from the granting of the petition, culminating in oral argument before a panel of three Administrative Patent Judges within the newly created Patent Trial and Appeal Board (“PTAB”):
The America Invents Act actually created three new post-issuance review proceedings in 2011, which the PTAB practice rules govern: inter partes review (“IPR”); and two additional procedings: post-grant review (“PGR”) which must be filed within 9 months of the issuance of a patent and may challenge the validity of a patent on any available statutory ground; and the transitional post-grant review for covered business method patents (“CBM”) which is directed primarily to “computer implemented” business method patents in the financial industry. In addition, the former “interference” proceeding to determine priority of inventorship was transitioned to the “First-to-File” patent regime and became a “Derivation Proceeding” to determine whether a patent applicant had derived the invention from another person, and therefore is not entitled to the patent, even if the patent applicant was “first-to-file” an application for the claimed invention at the USPTO.
Carstens & Cahoon, LLP offers a full spectrum of trademark services to our clients. We have the ability to acquire trademark registrations for our clients. We also are experienced in opposing or canceling the applications of our client’s competitors. Understanding the procedures of the Patent and Trademark Office and the nuances of trademark law gives our firm the ability to provide services to our clients in a cost effective manner.
Acquiring a trademark requires an attorney who is experienced enough to initially evaluate its distinctiveness and its availability. We have assisted companies with the acquisition of literally hundreds of valuable trademarks. This involves a careful search of available records to assess the availability of a particular mark and also an understanding born from experience to counsel the client on the distinctiveness of their mark. With those steps completed, our attorneys and paralegals are also expert in the procedural steps of working with the PTO to prosecute an application to registration and to handle post-registration requirements.
Litigation of trademark rights usually occurs in either federal courts or before the Trademark Trial and Appeal Board (TTAB). Our attorneys are comfortable and experienced in either forum. Before the TTAB, we have successfully cancelled a great many blocking registrations. Further, we have opposed competitors attempting to register marks that were confusingly similar to our client’s marks.
As of the end of 2014 and into early 2015, statistics were that roughly 75% of Petitions to institute an IPR trial had been granted as to at least one claim of the target patent. Additional statics recently issued by the USPTO are as follows:
- As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
- Of all of the AIA petitions filed so far, 63 percent were filed in the electrical/computer technology centers (TCs), 23 percent in the mechanical/business methods TCs, 9 percent in the bio/pharma TC, and 5 percent in the chemical TC.
- Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
- Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable. Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.
Copyrights provide the right to prevent others from making additional copies of the copyrighted work and also the right to prevent others from making works that are mere derivatives of the copyrighted work. The value of copyright registrations should not be underestimated, as it allows for the recovery of attorney’s fees and statutory damages in the event of infringement of the copyright.
If a question arises about whether a work is the subject of an existing copyright, Carstens & Cahoon can research the matter, provide authoritative answers, and explain to the client the standards used to determine copyright infringement. Each year the firm handles the filings of many copyright registrations for dramatic works, computer software, artistic designs, broadcasts of radio and television programs, musical performances and the like.