Patent Prosecution


          McHale | Slavin has extensive experience in all areas of patent prosecution for matters before the U.S. Patent and Trademark Office (USPTO) and other patent offices throughout the world. Our firm handles patentability assessments, preparation of all types of patent applications, inventorship determination, assignments and worldwide filing of patent applications. We work with the client to develop a prosecution strategy best suited to the client's needs. In addition, we handle appeals, reexaminations, reissues and interferences. We work closely with our foreign associates in local prosecution, oppositions and appeals of foreign applications. This enables our client to gain and maintain protection of their intellectual property throughout the world.


          Our firm couples strengths in all areas of intellectual property law with a depth of experience in all areas of technical subject matter to provide our clients with the highest caliber of counseling and opinions. Our staff includes several former USPTO examiners and a former Director of the USPTO Office of Petitions. These employees enable our firm to keep pace with the latest developments and policies in the USPTO.


Our patent prosecution services include:


  • Performing patentability and validity searches of the prior art.
  • Preparing patentability opinions.
  • Preparing provisional, non-provisional and design patent applications for filing in the U.S. and foreign countries.
  • Prosecution domestic and foreign patent applications.
  • Evaluating and preparing patent licensing agreements.
  • Preparing confidentiality agreements.
  • Evaluating and resolving inventorship issues.
  • Preparing and prosecution reissue and reexamination applications.
  • Prosecuting applications before the U.S. Board of Patent Appeals and Interferences.


          Our firm's experience in intellectual property law, in conjunction with our knowledge of the technical subject matter, enables us to develop unique and successful prosecution strategies for both domestic and foreign patent applications. Our attorneys and agents have a depth and breath of technical and legal backgrounds that enables them to quickly and correctly grasp legal issues regarding complex legal technological issues without burdening our clients with getting us up to speed. This helps our clients maximize the value of their intellectual property assets. Contact us for additional information or to schedule a consultation.






Patent Litigation


          Sometimes innovation begets imitation. An issued patent gives its owner the right to exclude others from making, using, selling, offering for sale or importing the patented invention. Typically, a party wishing to practice a patented invention enters into a license or purchase agreement with the patent owner in order to secure the right to do so.


          Occasionally, however, a party wishing to practice the invention does so without the patent owner's consent, thus infringing the patent. Conversely, a patent owner may overestimate the extent of the limited monopoly granted under an issued patent and allege infringement against a non-infringer. Though we work to resolve issues for our clients without going to court in either instance, in the event patent infringement litigation becomes necessary we represent our clients to the fullest extent.


          At every stage of the litigation process, it is important to maintain the proper perspective of the case in relation to the overall objectives and needs of the client. Otherwise, litigation can become exceedingly costly, and in some instances may do more harm than good. McHale | Slavin puts its clients' interests at the forefront in every litigation, with an aim toward achieving maximum results for both the short and long term, at a reasonable expense.


          In the United States, there are several forms of relief available to the patent owner who has successfully proven patent infringement. Such relief can include an injunction, protection from future infringement; compensation for past infringement; certain of the costs of litigation; and, in exceptional cases, attorney's fees and treble damages.


          The basic remedy for past infringement is the award of damages (35 U.S.C. § 284). While the law provides no maximum damages, it does provide a minimum. Damages shall "in no event [be] less than a reasonable royalty for the use made of the invention by the infringer." Compensatory damages are designed to replace what the inventor has lost. In the case of an inventor who does not have the capacity to manufacture his or her own invention, compensatory damages set at a reasonable royalty might be appropriate. Although indirect damages are generally not recoverable, the "entire market value" rule allows a patent owner to collect damages based on the value of an entire infringing device, even if that device contains multiple features and only one of the features infringes. Prejudgment and post judgment interest on an infringement award can be requested for damages. The court may also increase damages up to three times for the willful, wanton infringement of the patent.


          An alternative source of limited relief is available through the International Trade Commission (ITC) when the source of the infringing products is outside of the United States. The ITC can exclude from importation products that infringe a valid U.S. patent and cause injury to a domestic business. However, no compensation for past infringement or attorney's fees is available in an ITC proceeding.


          McHale | Slavin has extensive experience in prosecuting and defending patent litigation, while remaining mindful of a client's overall business objectives. Contact us for additional information or to schedule a consultation.






Patent Opinions


          A patent opinion is a comprehensive analysis of a business entity's position with respect to the patent landscape prepared by counsel utilizing the attorney's experience in intellectual property law. There are four types of opinions commonly prepared by patent attorneys: freedom to operate opinions, infringement opinions, patentability opinions, and validity opinions. Freedom to Operate opinions determine whether a product or process would likely infringe the valid and enforceable rights of a third party. These opinions are helpful at the beginning of technology development, prior to investing significant funds, in identifying the risks associated with development of a particular project. Infringement opinions determine whether an accused device, process, or design of another infringes upon a client's patent. Such an opinion is helpful prior to engaging in the time consuming and costly process of litigation. Patentability opinions occur prior to filing a patent application and help determine whether an invention satisfies the conditions for patentability. Validity opinions determine the validity and enforceability of a patent. Such opinions arise either when a company is accused of patent infringement or when a company seeks to acquire the rights to a patent. Obtaining an opinion as to the invalidity of a patent may provide a defense against willful infringement. On the other hand, failure to obtain a non-infringement opinion may serve as evidence of intent to induce infringement.


          McHale | Slavin's patent attorneys and agents have extensive experience preparing the full array of patent opinions. Contact us for additional information or to schedule a consultation.






Patent Licensing


          A patent license involves the granting of permission from a patent owner - the licensor - to another party - the licensee - to make, use, sell or offer for sale the patented invention.


          In addition to general licensing concepts such as specifying the license grant and the consideration provided in exchange for the grant, a patent license has its own special set of issues. For example, a patent license must address the sharing and development of technology and technical expertise during the term of the license agreement. It is critical for the parties to specify: whether the license grant includes access to related know-how and show-how; procedures for the handling of proprietary information exchanged during the relationship; and ownership and future licensing interests in the event further technology is developed by one or both of the parties during the relationship. A patent license must also address the proper marking of the licensed invention under the patent laws. Marking puts potential infringers - i.e., unlicensed practitioners of the invention - on notice that the licensed invention is protected. Conversely, mismarking, the marking of an invention that is not protected under the patent laws, is a fineable offense. A patent license must identify the party responsible for the proper marking of the licensed invention.


          McHale | Slavin has extensive experience in the preparation and negotiation of patent licenses. Contact us for additional information or to schedule a consultation.






Patent Petitions


          Our firm has an active patent petitions practice, providing skilled petition work for matters before the U.S. Patent and Trademark Office. We assist clients seeking equitable remedies for procedural errors and defects. Several former USPTO examiners are among the firm's patent attorneys and agents, including a former Director of the USPTO Office of Petitions.


          Petitions provide a formal mechanism for correcting procedural improprieties, not subject to appeal, that may occur in the course of prosecution. The scope of petitions is very broad. Petitions may be filed from any action or requirement of any examiner in the ex parte prosecution of an application, or in the ex parte or inter partes prosecution of a reexamination proceeding. However, no petition may be taken from any examiner action that is subject to appeal to the Board of Patent Appeals and Interferences or the court. A petition may be filed in cases in which a statute or rules specify that the matter is to be determined directly by or reviewed by the Office, and in appropriate circumstances to invoke the supervisory authority of the Director of the USPTO.


          Petitions may also be filed in situations not specifically provided for in the regulations and will be decided in accordance with the merits of each situation. In an "extraordinary situation, when justice requires," the Director may suspend or waive any non-statutory requirement of the rules required to grant the petition, but may not waive any requirement imposed by statute.


A petition must meet certain requirements:


  • It must be in writing.
  • It must contain a statement of facts involved, the point(s) to be reviewed, and the action requested.
  • It must be accompanied by a fee, if required.
  • It must be timely filed. Petitions not filed within 2 months of the action or notice prompting the petition may be dismissed as untimely. Filing of the petition will not stay any period for reply.
  • It must comply with required statutory, regulatory, and policy requirements.


Specific types of petitions include:


  • Petitions to permit filing when an inventor refuses or cannot be reached to sign the oath or declaration
  • Petitions to correct inventorship in applications
  • Petitions to obtain or correct a filing date
  • Petitions to revive abandoned applications or lapsed patents
  • Petitions to correct of the Patent Term Adjustment
  • Petitions to withdraw the holding of abandonment
  • Petitions to expunge papers
  • Petitions to withdraw an allowed application from issue, defer issuance, or recognize a priority claim
  • Petitions for access
  • Petitions seeking to abandon an application to avoid publication of the application
  • Petitions relating to maintenance fees
  • Petitions relating to reexamination practice


          Our firm understands the intricacies of petitions practice and has the depth of experience to assist our clients in navigating this process. Contact us for additional information or to schedule a consultation.






Patent Reissues and Reexaminations


          Reissue and reexamination proceedings are a key component of patent protection and an indispensable tool to correct and confirm the patentability of claims. These proceedings have gained in popularity in recent years for a number of reasons, including a recent U.S. Supreme Court opinion establishing a new obviousness rubric. See KSR v. Teleflex, 550 U.S. 398 (U.S. 2007)


          The law provides mechanism for the patentee to apply for a reissue patent when a patent is defective in certain respects. The nature of the changes that can be made by reissue are quite limited. Ex parte reexamination allows anyone, patent owners or third parties, to inform the United States Patent and Trademark Office about new prior art issues that might affect a patent's validity. Inter partes reexamination is also available for patents filed after a specific date. Both ex parte and inter partes reexamination begin with a request for reexamination. The reexamination process can be a useful way for third parties to limit infringement risks and to benefit from the potential advantages that an administrative forum may bring over the federal courts. Reexamination proceedings may also reduce the cost and time required for litigation in the federal courts.


          These proceedings are important adjuncts or alternatives to litigation and may better position a client's patent portfolio. McHale | Slavin's attorneys and agents, many of whom are former USPTO examiners, handle all aspects of post issuance proceedings. We have the expertise to advise our clients on the advantages of post-grant strategies and prosecute such actions to successful conclusions as enforcement efforts or defensively. Contact us for additional information or to schedule a consultation.






Patent Appeals and Interferences


          The United States Patent and Trademark Office (USPTO) Board of Patent Appeals and Interferences has two main responsibilities:  review of ex parte appeals from adverse decisions of examiners; and resolutions of interferences to "determine priority" (that is, decide who is the first inventor) whenever an applicant claims the same patentable invention which is already claimed by another applicant or patentee.


          This specialized aspect of patent practice involves a complex level of decision-making. McHale | Slavin has experience appearing before panels of the Board and understands the facets of interference law. Our firm´s expertise with USPTO procedure and other aspects of patent litigation has prepared us to handle Board of Patent Appeals and Interferences proceedings on behalf of our clients. A number of our attorneys and agents are former USPTO staff with knowledge of the rules of practice and an understanding of the intricacies of interference practice. Contact us for additional information or to schedule a consultation.






Design Patents


          Design patents are useful in protecting the non-functional ornamental shape of an article of commerce. A design patent relies primarily upon drawings and a single claim to communicate what is protected. The claim generally refers to the drawings as a standard of what is protected. The United States Patent and Trademark Office has defined the design of an object to be the visual characteristics or aspects displayed by the object.


          A design patent may be directed to ornamental configuration, surface decoration, or both. To qualify for a design patent, the ornamental shape must be new in the sense that no single, identical design exists in the known prior art and the device must satisfy certain ornamental standards. It must also be unobvious on the basis of any previously existing design or combination of designs when viewed through the eyes of a hypothetical designer skilled in the art. Design patents cannot be obtained for ornamental features that are not visible when the product is in use.


          A design patent is subjected to an examination in the U.S. Patent and Trademark Office, which includes a prior-art search. The design patent has a term of 14 years from the date it is granted. In many circumstances, one may obtain a design patent in addition to a utility patent for the same invention if the standards for each patent category are satisfied.


The design patent gives the owner the right to prevent others from making, using, or selling a product that so resembles the patented product that an ordinary observer might purchase the infringing article, thinking it was the patented product. The ordinary observer is generally deemed to be the retail purchaser of goods of that particular type rather than an expert, who would be less likely to be fooled.


          Comparison of a patented design and an accused design involves satisfying the "Ordinary Observer" test to find infringement. The "ordinary observer" test was first enunciated by the United States Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) in a case involving an ornamental design for silverware handles, which held that:


[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.


          In the case of Egyptian Goddess Inc.  vs. Swisa, Inc.  543 F. 3d 665  (Fed. Cir. 2008) (en banc) the entire court rejected earlier case law which had increased the burden for establishing design patent infringement.  As a result, the Federal Circuit has put real teeth back into the enforcement of design patents.


          An industrial design patent can also be obtained in other countries. For instance, in Japan, South Korea and Hungary, industrial designs are registered after performing an official novelty search. In Europe, one needs to only pay an official fee and meet other the formal requirements for registration (e.g. Community design at OHIM, Germany, France, Spain). For the member states of WIPO, registration is afforded by application to WIPO and examination by designated member states in accordance with the Geneva Act of the Hague Agreement.


          McHale & Slavin has extensive experience in advising clients as to the prosecution and protection of both U.S. and foreign design patents. Contact us for additional information or to schedule a consultation.














Trademark Prosecution


          A trademark/service mark is any word, symbol, design, slogan, logo, device, etc. that identifies or distinguishes the source of one product or service from another. A mark that identifies the source of a product is called a trademark; a mark that identifies the source of a service, rather than a product, is called a service mark although the term "trademark" or "mark" is commonly used to refer to the identification of both goods and services. Although the most common type of mark consists of a word, logo, or combination of both, a trademark can be anything, as long as it can identify and distinguish a product or service. There are two other types of marks: collective membership marks, which signify membership in an organization; and certification marks, which certify the quality of goods or services to which the mark is attributed.


          In the United States, trademark rights accrue from actual use of a mark in interstate commerce, and not from registrations. However, there are distinct advantages to federally registration. First, a federal registration constitutes prima facie evidence and provides a presumption of the validity of the registration, ownership of the mark, and the owner's exclusive right to use the mark in commerce. Second, a federally registered trademark owner acquires the right to use the ® symbol and provide constructive notice of a claim of ownership to the public. As a consequence, a second party that adopts the mark after it has been registered will not be able to argue that it was adopted in good faith. Under the Lanham Act, the owner of a federally registered trademark may recover defendant's profits, any damages sustained by the plaintiff and, in extraordinary cases, the costs of the action including attorney fees, in a federal trademark infringement lawsuit. Although an unregistered mark has certain protections under state law, federal registration offers powerful rights against other users of same or similar marks.


          Once a proposed trademark has been selected it is important to first determine whether that proposed mark represents a viable trademark for interstate use and federal registration. Conducting a comprehensive search and applying a proper interpretation of the search results is essential as a main basis for refusal by the U.S. Trademark Office relates to confusion with other similar marks. After a mark has been selected, searched, and determined to be viable for use and registration, the application for registration, in its entirety, is prepared. There are over 40 classifications of trademarks and service marks, and in addition to requiring the claim of a classification, a description of the goods/services must be devised. Once a trademark application is filed, the Trademark Office Examining Attorney will carefully scrutinize the application and proposed trademark. Interaction with the Examining Attorney typically involves complex legal issues and procedural rules. Accurate statements during this interaction is of the utmost importance to avoid either denial of the registration or, to avoid limiting and restricting the scope of the application such that the resulting registration has little to no value in terms of practical trademark protection. Our experienced trademark attorneys will assist you in deciding the overall strength of your mark to ensure your brand enjoys continued success and protection while preventing unnecessary entries in the application record that can lessen the strength and breadth of a registration.


          McHale | Slavin has successfully prosecuted thousands of trademarks before the United States Patent and Trademark Office. Our firm understands with the intricacies of trademark practice. Contact us for additional information or to schedule a consultation.






Trademark Litigation


          McHale | Slavin has wide experience and success in handling trademark and trade dress litigation in the federal courts, as well as cancellation and opposition proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. The related field of Internet domain name disputes, both in federal court and before administrative tribunals, and an understanding of the critical nuances which often determine the outcome of such disputes, is an area in which we have deep experience.


          In addition to preparing detailed litigation budgets, the practical business needs involved in trademark disputes always remain the firm's primary focus, and, when appropriate, the expeditious end of litigation, including obtaining the benefits of alternative dispute resolution is a critical aspect of these cases from inception. If the controversy involving results in a civil action 15 U.S.C. § 1117 governs damages, providing:


Profits; damages and costs; attorney fees


          When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office is established, the plaintiff shall be entitled to recover: (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed.


          If the court finds that the amount of the recovery based on profits is either inadequate or excessive it has the discretion to enter judgment for such sum as it shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party.


Treble damages for use of counterfeit mark


          In assessing damages, the court shall, unless it finds extenuating circumstances, enter judgment for three times such profits or damages, whichever is greater, together with a reasonable attorney's fee, that consists of intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark, in connection with the sale, offering for sale, or distribution of goods or services. In such cases, the court may in its discretion award prejudgment interest on such amount at an annual interest rate established under 26 U.S.C. § 6621(a)(2), commencing on the date of the service of the claimant's pleadings setting forth the claim for such entry and ending on the date such entry is made, or for such shorter time as the court deems appropriate.


Statutory damages for use of counterfeit marks


          In a case involving the use of a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under 15 U.S.C. § 1117(a), an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of - (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.

          The importance of protecting a business's valuable goodwill, existing in its marks, and establishing and protecting trade dress rights in products and product related services cannot be underestimated, and our firm's ability to protect the value of these rights through necessary litigation is one of our most important services. Contact us for additional information or to schedule a consultation.






Trademark Licensing


          A trademark license involves the granting of permission from a trademark owner - the licensor - to another party - the licensee - to use the trademark in the marketing of goods and services.


          In addition to general licensing concepts such as specifying the license grant and the consideration provided in exchange for the grant, a trademark license has its own special set of issues. A large measure of the value of a trademark consists of its "goodwill" i.e., the reputation for quality in connection with the source of the goods and services sold under the mark. A trademark owner can directly receive and control that goodwill where the mark is used in connection with the owner's goods and services. In the context of a license, however, a licensee is selling the goods and services bearing the owner's mark. Issues of quality control, avoidance of confusion, and the inuring of goodwill to the owner are of critical importance. A trademark owner must be able to protect the goodwill associated with the mark and the value for the innovation that went into the development of the mark.


          McHale & Slavin has extensive experience in the preparation and negotiation of trademark licenses. Contact us for additional information or to schedule a consultation.






Trademark Searches


          One of the most critical steps in selecting a trademark for use and registration is the trademark search. Often times this step goes overlooked or is underestimated because easily available searches conducted over the Internet may provide clients with the false sense of security that their proposed trademark is available. This may be compounded if an individual navigates the United States Patent and Trademark Office's website and after "conduct(ing) their own trademark search" concludes that the mark is available. An individual may mistakenly search only for the exact mark sought and rely on that result to their detriment.


          Conducting of a proper trademark search is an art only fully understood after extensive interaction with the Trademark Office's application process. Finding (or not finding) exact matches is only the beginning of the search process, rather than the end. Prior existing registered and pending trademarks capable of interfering with a newly proposed trademark are also those deemed to be "confusingly similar." The Trademark Office will conduct its own search upon examination of the trademark application and will convey its findings within 5-6 months after the application is submitted. In some cases this time frame is acceptable to learn whether or not a new trademark is viable. However, in other cases, where mass-production of a product is eminent, or the launch date of a service industry is looming, a prior trademark search is beneficial so as to learn the viability of a mark before the Trademark Office conveys its findings.


          Our attorneys are experienced in providing the trademark owner with a written legal opinion setting forth reasons why a given proposed mark is viable. With a written legal opinion letter as part of your trademark-launch due-diligence, it is more difficult for you to be labeled a "willful infringer," in the event of a challenge by another trademark owner. Demonstrating that an infringer is "willful" aids in a challenger obtaining an award of increased damages and reimbursement of attorney fees.


          McHale | Slavin has successfully prosecuted thousands of trademarks before the United States Patent and Trademark Office. Our firm understands with the intricacies of trademark practice. Contact us for additional information or to schedule a consultation.






Trademark Oppositions and Cancellations


          An entity or an individual who believes that they will be damaged by the registration of a mark on the United States Trademark Office's Register may file an opposition proceeding or a cancellation proceeding. An opposition proceeding is filed during the prosecution of a trademark application and a cancellation proceeding can be filed after the trademark registration. These proceedings are governed by the U.S. Trademark Trial & Appeal Board (TTAB).


          A trademark opposition proceeding is similar to civil litigation wherein the parties participate in a discovery period, a period for summary judgment and a trial period. However, the TTAB does not have a live trial; the trials are essentially conducted on paper using the submissions of the parties and deposition testimony. A cancellation proceeding is similar to an opposition proceeding but seeks the removal of a registered trademark versus a pending application.


          Sometimes parties attempt to register a trademark that would conflict with our clients' branding or business plans. In other cases, our clients desire to use trademarks which were previously registered, but investigation reveals that the trademark owner is no longer using the mark as stated in the trademark registration record or absconded with the mark and filed for registration despite prior usage. Both eventualities require the elimination of the objectionable trademark application or registration. Depending upon the facts and circumstances, objectionable trademark applications and registrations may be eliminated through the employment of opposition and cancellation actions.


          The opposition/cancellation practice is a specialized area of quasi-litigation in which a suit is brought against another trademark owner, but instead of a court of law, the suit is heard before the TTAB . The proceeding is governed by the Federal Rules of Evidence and Civil Procedure, as well as the TTAB rules. McHale | Slavin's attorneys have prosecuted and defended numerous TTAB cases and bring to the practice a keen awareness and ability to navigate favorable resolutions to these matters. Contact us for additional information or to schedule a consultation.






Trade Secrets


          Trade secret law represents a balance of two primary concerns — the encouragement of innovation and the enforcement of ethics in business. Under the Uniform Trade Secrets Act, which has been adopted by the vast majority of states, a trade secret is information that: derives independent economic value by virtue of not being generally known or readily ascertainable by others; and is the subject of efforts reasonable under the circumstances to maintain its secrecy.


          Trade secret protection focuses on the nature and character of information and the precautions taken to ensure its protection, rather than the form in which it exists. Unlike other forms of intellectual property, virtually any subject matter of information can be a trade secret, as long as it is kept secret according to the general standards required for trade secret protection. Though trade secret owners are required to take affirmative steps to safeguard their proprietary information, the reasonableness of one's protective measures is considered in light of the particular circumstances. Every trade secret owner should tailor its measures to its needs and abilities.


          The benefits of trade secret protection can be seen in a variety of situations. For example, in the workplace a trade secret protection program can ensure that employees past and present uphold their confidentiality obligations rather than sharing information with competitors. In dealing with third parties, protective measures such as confidentiality and non-disclosure agreements serve as deterrents against the theft of developing innovations. Conversely, parties benefit from being mindful of steps they can take to avoid having to defend against such claims. For example, some of the most common trade secret disputes arise where an employer hires a new employee formerly employed by a competitor who then sues, or where negotiations between businesses do not conclude in a new relationship subsequent to the disclosure of confidential information.


          McHale | Slavin has extensive experience in advising clients as to the protection of trade secrets both within one's own business and with third parties. Contact us for additional information or to schedule a consultation.






Domain Names


          The Internet is an integral part of most clients' business models, and quality legal representation in areas of electronic content and domain name protections is a critical need.


          Domain name governance arises out of several doctrines of law, including the United States "anti-cybersquatting" statutes, the World Intellectual Property Organization rules, the Uniform Dispute Resolution Policy ("UDRP"), and rules established under the Internet Corporation for Assigned Names and Numbers ("ICANN"). Domain name protection works hand-in-hand with trademark protection. Under the Lanham Act, trademark holders have a cause of action against anyone who, with a bad faith intent to profit from the goodwill of another's trademark, registers, traffics in, or uses a domain name that is identical to, or confusingly similar to a distinctive mark, or dilutive of a famous mark, without regard to the goods or services of the parties.


The following factors are considered in determining whether a domain name has been registered in bad faith:


  • If the registrant has any trademark or other intellectual property rights in the name

  • If this is the legal or nickname of the registrant;

  • The registrant's prior use of the domain name in connection with the good faith offering of goods and services;

  • Lawful noncommercial or fair use of the mark in a web site under the domain name;
  • Intent to divert to a site that could harm the trademark owner's goodwill - either for commercial gain or with intent to tarnish by creating likelihood of confusion as to source, sponsorship or affiliation, or endorsement of the site;

  • Offer to sell the domain name without having used, or having an intent to use, it in the bona fide offering of goods or services, or a prior pattern of such conduct;

  • Intentional provision of misleading contact information in the domain name registration application or the history of such conduct;

  • Warehousing of multiple domain names known to be identical or confusingly similar to distinctive marks or dilutive of famous marks, without regard to the goods or services of the parties;

  • The extent to which a mark is distinctive or famous.


          In addition to traditional trademark remedies, plaintiffs may elect statutory damages ranging from $1,000 to $100,000 per domain name. Anti-Cybersquatting Piracy Act (ACPA); Lanham Act.§ 43(d); 15 U.S.C. §1125(d).


          McHal & Slavin regularly represents clients in the quasi-judicial arbitration actions established for the redress of domain name conflicts. Under typical circumstances, owners of trademarks and personal names are entitled to bring suit against parties who register, traffic in, or use a domain name that is identical or confusingly similar to the trademark or personal name with a bad faith intention to profit from that mark or name. Persons who have been victimized by bad-faith opportunists that register domain names with the intent of profiting from, or diverting consumers from, the authentic source represented by a given trademark, need legal counsel specializing in this constantly evolving area of law. Contact us for additional information or to schedule a consultation.






Unfair Competition


          McHale | Slavin represents clients in matters relating to unfair trade practices including federal actions under the Lanham Act and state law causes of action. Unlike other areas of intellectual property law, unfair competition actions are not preempted by federal law and may involve both federal and state causes of action. The law of unfair competition emerged from common law and is designed to protect competition and valuable business information. There are a number of actions that may give rise to claims of unfair competition including: trademark and trade dress infringement; trade secret theft; dilution; and false advertising. Unfair competition law often overlaps with other areas of law including not only patent, trademark and copyright law - but also antitrust, trade secret laws; laws recognizing the right of publicity, computer fraud statutes, employment law, and the Lanham Act.


          Our firm's intellectual property lawyers are experienced in handling these matters both through transactional work and litigation. We are skilled at both protecting clients' intellectual assets and in defending unjust assertions of unfair competition. Contact us for additional information or to schedule a consultation.











Copyright Registration


          Under the current copyright law, copyright subsists in original works of authorship from the moment of creation and fixation. Registration is permissive rather than a statutory formality, and a work may be registered at any time within the life of the copyright. Although registration is not a requirement for protection, the copyright law provides several inducements or advantages to encourage copyright owners to make registration, including:


  • registration establishes a public record of the basic facts of a copyright claim;

  • for works of U.S. origin, registration is necessary before an infringement suit may be filed in court;

  • if made before or within five years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate;

  • if registration is made within three months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner;

  • registration allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies.


          McHale | Slavin has advised many clients concerning the benefits of registration and is experienced in prosecuting claims before the United States Copyright Office. Whether a literary, visual, musical work, or sound recording; whether a computer program or database; whether a vessel hull or a mask work - our attorneys and legal professionals are experienced in guiding you through this administrative process and securing registrations for your claims. In addition to assisting our clients in the prosecution of their claims to copyright, we are also experienced in defending our clients' exclusive rights as copyright owners if that need arises. Contact us for additional information or to schedule a consultation.






Copyright Searches


          McHale & Slavin conducts comprehensive searches for our clients to determine the copyright status and ownership of copyrighted works. The search process entails investigating whether a work is currently under copyright protection. It may include determining a work's publication history and authorship information, copyright registration and status, and whether assignments or other documents relating to the work have been recorded. The process often involves searching not only the original records of registration and renewals but also various indexes relating to records of assignments and other documents affecting copyright ownership. If there is imminent or ongoing litigation, a search may extend to inspecting copies of copyright deposit material and reviewing correspondence between the applicant and the U.S. Copyright Office.


          Investigating the copyright status of a work requires understanding the subtleties of statutory enactments including the Copyright Act of 1976, the Berne Convention Implementation Act of 1988, the Copyright Renewal Act of 1992, and the Sonny Bono Copyright Term Extension Act of 1998. The process often includes searching not only the original records of registration and renewals but also various indexes covering the records of assignments and other documents affecting copyright ownership and, if appropriate, inspecting copies of copyright deposit material and reviewing correspondence between the applicant and the U.S. Copyright Office.


          The lack of a registration is not presumptive of lack of protection. Works may have entered the pubic domain for any of a number of reasons. Certain works (e.g., titles, ideas, government works) are not protectable under the copyright laws. Under the copyright law in effect prior to January 1, 1978, copyright could be lost if a work was published without the requisite notice of copyright, if the first 28 year-term of copyright expired without renewal, or at the end of the renewal term. Even if a work may be in the public domain in the United States, it may not necessarily be freely used in other countries. Each nation has its own copyright laws governing the scope and length of protection. The duration of copyright protection varies as well - generally, the term of protection for works created on or after January 1, 1978 is based on the life of the author plus 70 years after the author's death.


          The domestic and international copyright laws and regulations are complex and our firm is expert in its understanding of those complexities and advising our clients accordingly. We can negotiate contracts, rights and permissions, and licenses based on the results of the searches we conduct. Contact us for additional information or to schedule a consultation.






Copyright Litigation


          McHale & Slavin has extensive knowledge and experience in copyright litigation which, because of its potential complexity and the strength of the remedies provided for infringement, takes on major importance for any litigant in these cases. We have many years of experience successfully representing both plaintiffs and defendants, and bring our valuable understanding and depth to the needs of clients involved in copyright disputes.


          In general, an infringer of copyright is liable for either: (1) the copyright owner's actual damages and any additional profits of the infringer; or (2) statutory damages.


Actual Damages and Profits


          The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer's profits, the copyright owner is required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.


Statutory Damages


          The copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just.


          In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.


          Because the protections of copyright law and the remedies for infringement are among the most powerful of any area of the law, our knowledge and understanding in this field allows aggressive and focused representation, including the critical element of financial compensation and when appropriate, preliminary injunctions and enforcement remedies through U.S. Customs and other emergency relief. In defending against infringement allegations, the Copyright Laws' recognition that the right to fair use is as important as the protection of the author's rights in creation is often a critical issue. An understanding of the scope of any copyright protection and the actual nature of accused infringement allows us to defend lawful activity in the context of copyright infringement litigation. Contact us for additional information or to schedule a consultation.






Copyright Appeals


          The U.S. Copyright Office has specific procedures regarding administrative review of the Office's refusals to register a claim to copyright.


          Although the Copyright Office registers the vast majority of claims that are submitted, some claims will not meet the necessary threshold for registration. For example, the Office may determine upon initial examination that material deposited does not constitute copyrightable subject matter or does not comply with other legal requirements. In such cases, the Office refuses registration and notifies the applicant in writing of the reasons for the refusal.


          After receiving notice of rejection, an applicant may appeal the refusal to register. There is a two level administrative reconsideration process. The decision at the second level - the Copyright Office's Review Board - is considered a final agency action. The Office may either uphold its refusal to register or decide that the applicant's work is registrable.


          Our firm understands the intricacies of the registration process and is facile in drafting requests for reconsideration. Contact us for additional information or to schedule a consultation.












IP Maintenance Programs


          McHale | Slavin's Critical Dates department is dedicated exclusively to monitoring patent and trademark renewal dates. The United States charges a maintenance fee at the 3½, 7½ and 11½ year from the date of patent issuance that must be paid in order to maintain a U.S. patent in force for its full term. In addition, most foreign countries charge a yearly annuity which must be paid while an application is pending and after patent issuance in order to maintain the patent in force for its full term. The United States requires that trademarks be renewed at the 6-year and 10-year anniversary dates, and most foreign countries have 10-year and 20-year trademark renewal dates. All such fees must be paid during a "payment window" in order to meet the government requirements; prepayment is not possible.


          Multinational companies with an IP portfolio that includes multiple patents and trademarks require a firm capable of providing timely reminders and the secure transfer of monies in a manner that is most convenient to the company. Our firm also provides watch services for monitoring of improvement and/or infringing patent and trademark applications or registrations. Contact us for additional information or to schedule a consultation.






Dispute Resolution


          Alternative Dispute Resolution (ADR) is increasingly used as an efficient and affordable option for resolving intellectual property disputes. ADR is a neutral mechanism that allows parties to solve their disputes outside of the court in a private forum, with the assistance of a qualified neutral intermediary of their choice. It can be used if all parties agree to submit their dispute to the procedure, or if mandated by the courts. Options include: mediation, in which a mediator assists the parties in reaching a settlement of their dispute but does not render a decision; and arbitration, in which the dispute is submitted to an arbitrator who makes a binding decision.


          McHale | Slavin is experienced with the full array of ADR options. We understand the process of utilizing arbitration or mediation as an alternative to brining an IP dispute case to trial and the strategies for guiding disputes into an advantageous dispute resolution forum. Our attorneys have analyzed and weighed the risks and benefits of utilizing ADR and negotiating settlements. We understand the differences among the various types of IP disputes and how strategies differ according to the needs of each form of protection. Contact us for additional information or to schedule a consultation.






Due Diligence


          The importance of a Due Diligence analysis cannot be over emphasized when entering into a relationship that requires the buying, selling, licensing or franchising of intellectual property. McHale | Slavin provides valuable assistance in matters involving technology-intensive companies entering into acquisitions, joint ventures, or investment arrangements by third-party entities by conducting a Due Diligence investigation of the intellectual property assets and liabilities of the target company. These results can be very useful in determining the propriety of the transaction, and can often point toward issues that may require further analysis. Performance of a thorough Due Diligence analysis is of benefit to all parties involved and often assists in the formation of optimal business relationships.


          A Due Diligence investigation during merger/acquisition discussions, when buying or selling IP, or in conjunction with negotiating a license or franchise agreement should stress the following:


  • Defining the ultimate goals of the transaction;

  • Clarifying what is being acquired or sold, and what are the obligations of the parties;

  • Performing a complete search on IP ownership, and determination ensure that rights remain in force;

  • Determining the presence of cross licenses or conditions which might affect or restrict the usage of the IP rights contemplated for purchase/sale;

  • Requesting details of any improvement patents that might exist;

  • Ascertaining whether the IP is the subject of any litigation or infringement suits;

  • Requesting details regarding any significant third parties;

  • Ensuring that the seller has the right to sell the IP.


          Each transaction will have its own characteristics and requirements. In our experience, this is best accomplished by working with a law firm that has a broad base of expertise and experience with the full array of businesses ranging from small start-ups to large corporations. Some intellectual property assets may require closer evaluation than others due to factors such as complexity, competition and foreign registration. Rights may range from ownership to licenses, and may include agreements regarding contingent rights in intellectual property to be developed in the future. A viable evaluation also includes analyzing any prior grants that may impact or dilute the value of the assets and also assessing potential intellectual property infringement claims.


          Our firm understands the necessity of providing the right legal team to conduct IP Due Diligence. Our understanding of the industries, business environments and client objectives allows us to focus on the assets and the relative importance to the client. We are experienced with drafting due diligence requests and undertaking further investigative activities as necessary including: searches; opinions; review of agreements; and other appropriate efforts. Many transactions are increasingly cross-border and will involve an understanding of complex IP treaties and conventions as well as an understanding of U.S. laws and regulations. In addition to our experienced attorneys and registered patent agents, our firm has a network of foreign affiliates who can assist us with such transactions. We understand the scope and nature of due diligence will vary according to the type of asset. Our understanding of intellectual property law, the industries, and technologies position us to assist clients with analyzing IP assets and arriving at equitable terms. Contact us for additional information or to schedule a consultation.






IP Strategy


          McHale & Slavin's IP Strategy & Risk Management Practice assists clients in developing strategies for both defensive and offensive intellectual property risk management.


          To gain and maintain a competitive edge in the world of manufacturing, IP development, R&D and IP protection, we guide our clients through changes in United States intellectual property law, and help them address the challenges of the global marketplace. Given the current level of interest in IP law in both the U.S. Supreme Court and Congress, this requires a depth of experience in both the technological and legal aspects of IP management to properly navigate the best courses of action.


          McHale | Slavin focuses on freedom-to-operate studies and opinions; infringement and noninfringement evaluations; patent scope and enforceability issues; and analyzing licensing agreements in order to counsel clients on effective strategies for IP development and both offensive and defensive risk assessment. Contact us for additional information or to schedule a consultation.






Licensing and Transactions


          Intellectual property ownership provides the right to exclude others from performing certain acts without the owner's permission. Consequently, transactions that grant rights to commercialize or otherwise exploit intellectual property can generate revenue streams and open new markets for innovation. Much of the value of businesses can be traced to intangible assets such as intellectual property.


          An intellectual property license grants permission for one party to engage in certain activities concerning another party's intellectual property without subjecting itself to a claim of infringement. A license can be a powerful and flexible instrument for bringing innovation to the marketplace in connection with any form of intellectual property. For example, technology can be licensed under an issued patent or in the form of a trade secret or know-how. Copyrighted works such as books, paintings, musical compositions or computer programs can be licensed to allow the licensee to copy, perform or distribute the works. Trademark rights, based on the associated goodwill of a mark, can similarly be licensed for use in the sale and marketing of goods and services. These licenses can vary in scope, duration and/or field of use, among other variations.


          There are numerous other forms of intellectual property related transactions utilized to foster and protect innovation. For example, corporate transactions such as mergers and acquisitions often involve access to intellectual property rights. It is also commonplace for intellectual property owners to work with third-party vendors, consultants, engineers and/or developers in a variety of situations, such as the testing of products or the development of websites. In such situations it is necessary to have written agreements in place to delineate the parties' rights with respect to intellectual property that is developed or used during the relationship.


          From initial agreements governing exploratory negotiations through the completion and management of executed intellectual property related agreements or aspects of other agreements, McHale & Slavin has wide-ranging experience in the preparation and negotiation of licenses and other intellectual property related transactions. Contact us for additional information or to schedule a consultation.






Strategic Counseling


          At McHale & Slavin, we appreciate our clients' business goals and provide counsel not only on your specific IP protection needs, but also with your strategic business planning. We often assist clients in reviewing their portfolios and bringing our technical expertise as well as legal skill to the table.


          We work with IP-driven companies by counseling their legal, technical and business personnel in order to facilitate the creation of IP portfolios that act in concert with their business objectives. Whether the client is an innovative start-up or a multinational corporation, our professionals provide valuable guidance when considering their IP options. Our legal and technical experience enables us to provide programs targeted to the specific needs of our clients. We understand the regulatory environment and are particularly facile in providing strategic counseling in areas such as biotechnology and pharmaceuticals. Our staff monitors legal, regulatory and administrative developments in order to identify opportunities for our clients to benefit from opportunities to capitalize on their IP portfolios. We coordinate existing and developing portfolios to avoid infringement and ensure that both the products being protected and the business plans promulgated upon them are based upon a strong IP foundation. Our professionals assist clients in prioritization of assets and offer advice on technology licensing, retention of marginal assets, and identification of acquisitions designed to enhance or expand upon their IP positions. Contact us for additional information or to schedule a consultation.






Venture Intellectual Property


McHale & Slavin's venture intellectual property group has extensive experience in evaluating and analyzing intellectual property portfolios, and offers investors intellectual property due diligence to assist them in:


  • arriving at cogent assessments regarding the technology's freedom to operate;
  • determining the realistic strength and position of the technology in the marketplace; and
  • illuminating perceived risks involved with acquisition of rights to the technology.


          Our counseling assists investors in minimizing risks involved with intellectual property investments, determining deal valuation, and identifying areas of the portfolio that require further development. Counseling further assists investors in determining invention topic generation, licensing and development and implementation of an Intellectual Property Portfolio.


          We have experience in many aspects of municipal and industrial water treatment, power plants, turbine and engine design, medical devices, pharmaceuticals, biotechnology and chemistry.


          Subsequent to investment, the group will collaborate with the investor's intellectual property counsel, or if desired, McHale | Slavin's patent preparation and prosecution team to improve the inventor's intellectual property position. Contact us for additional information or to schedule a consultation.








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