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Intellectual Property Protection


Overview

Patent Prosecution

The Carlton Fields patent prosecution team offers comprehensive services across industries, including technology, health care, and telecommunications. Our clients benefit from our deep understanding of the science that underlies their businesses. Members of our team have worked as software designers and programmers, and we handle matters related to informatics, internet commerce, computer law, licensing, software publishing and copyright protection, system security, reverse-engineering, and other evolving fields. Additionally, one of our attorneys authored Patent Office Rules and Practice, a 13-volume treatise on the workings of the Patent and Trademark Office (published by LexisNexis).
 
Post Grant Proceedings
 
The America Invents Act created several new USPTO procedures, which both allow challengers to attack a patent’s validity, and enable owners to strengthen their patents’ validity. These procedures, added to some existing ones, are starting to change the face of patent litigation. Now, a USPTO decision on validity can, in some cases, preclude a later court attack on the patent’s validity. In other cases, the decision may be persuasive in court. Our comprehensive post grant proceeding experience includes filing actions and getting the USPTO to commence them, revisiting and defending actions, and handling the procedures and trials that follow.
 
Services

  • Perform IP Audits
    • Our team performs comprehensive business reviews to identify IP assets, detect weaknesses in present rights to those assets, and help identify early steps to take to perfect those interests. We furnish specific recommendations for patents, licenses, non-disclosure agreements, non-competition agreements, and internal policies, and have advised Fortune 100 companies on the processes of identifying inventions and processing patent rights.
  • Prosecute applications for patents and other representations of clients before the USPTO and international patent offices
  • Assist clients in acquiring, perfecting, and transferring patent rights
  • We prepare all necessary federal and international registrations of patents and other IP rights. We also prepare assignments, licenses, or other forms of transfer for the acquisition or sale of rights in IP.
  • Prepare ownership and non-disclosure arrangements with employees and independent contractors
  • Advise on IP procedures and policies, including policies for surveillance of potential infringing uses
  • Assist clients with post-grant procedures at the USPTO
  • Represent clients in infringement and unfair competition disputes

 
Trademark Prosecution
 
Working closely with our clients, we develop the most strategic, cost-effective approach to implement, maintain, and enforce both their domestic and international trademark portfolios. We have represented companies before the USPTO, prosecuted trademark and service mark applications for businesses ranging from Fortune 10 companies to startups, and filed applications in more than 100 jurisdictions around the world. Our trademark prosecution experience covers a wide range of industries, businesses, and products, including computer hardware and software, lasers, restaurants, universities, clothing designers, nature institutes, Swiss watches, food companies, sports teams, insurance companies, semi-conductor fabricating equipment manufacturers, jewelers, and catalog publishers.
 
Members of our team include Apple Computer’s original trademark attorney who developed and implemented Apple’s domestic and international trademark program; the author of World Trademark Law and Practice (LexisNexis, 5 volumes), a treatise that addresses trademark procedures in more than 150 jurisdictions around the world; and  two attorneys Board Certified in Intellectual Property by the Florida Bar, an honor given to only 136 attorneys in the state of Florida.
 
Our services in the United States and around the world include clearing trademarks for use, planning trademark portfolios, applying for trademark protection, representing clients in ex parte and inter partes proceedings in the USPTO and in Patent and Trademark Office proceedings, and representing clients in court proceedings on issues of cancellation, trademark infringement, unfair competition, and passing-off.
 
Copyrights
 
Carlton Fields helps clients identify, protect, and enforce their copyrights. Our experience covers a wide range of products and industries, including: clothing and accessories, computer software, eCommerce, financial services, health care, music publishing and sound recordings, print and online publishing and advertising, residential and commercial architecture and construction, resorts, retail, technology, telecommunications, and textiles.
 
Services

  • Obtain federal copyright registrations from the United States Copyright Office
  • Assist clients in acquiring, perfecting, and licensing their copyrights
  • Prepare joint authorship and joint ownership agreements; end user license agreements; work-for-hire agreements; and assignments, licenses, or other forms of transfer for the acquisition or sale of copyrights
  • Negotiate and draft copyright-related provisions in corporate transactions including, mergers and acquisitions, and refinancings
  • Represent clients in copyright disputes, enforcing and defending copyrights through negotiation, counseling, demand letters, and settlement
  • Perform comprehensive copyright audits
    • This work includes identifying copyrightable materials, detecting weaknesses in present rights to those assets, and helping to identify early steps to take to perfect those interests. We furnish specific recommendations for copyright filings, licenses, non-disclosure agreements, non-competition agreements, work-for-hire agreements, end user license agreements, and internal policies; and have advised Fortune 100 companies on the processes of identifying and enforcing copyrights.

 
Domain Names and Websites
 
We assist clients with all issues related to domain names and website development. Our team includes an attorney who sits on the National Arbitration UDRP, PDRP, and RRDRP panels; and the author of World Trademark Law and  Practice,  which covers domain name registration proceedings for various countries.
 
Services

  • Determine domain name availability  
  • Handle, maintain, and police domain name registration
  • Enforce domain name against cybersquatters and trademark infringers, both in civil litigation and UDRP proceedings
  • Advise on the purchase and sale of domain names
  • Help clients obtain the appropriate rights from employees and developers to ensure a clean chain of title of the client’s website and its contents
  • Draft appropriate licenses to third-party materials; software, technology, and end user licenses related to websites
  • Draft “privacy” and “terms of use” notices; and obtain appropriate trademark, patent, and copyright protection for websites

 

Disclaimer

The information on this website is presented as a service for our clients and Internet users and is not intended to be legal advice, nor should you consider it as such. Although we welcome your inquiries, please keep in mind that merely contacting us will not establish an attorney-client relationship between us. Consequently, you should not convey any confidential information to us until a formal attorney-client relationship has been established. Please remember that electronic correspondence on the internet is not secure and that you should not include sensitive or confidential information in messages. With that in mind, we look forward to hearing from you.