The intellectual property (IP) your business owns may be some of your most overlooked and undervalued assets. It may be more technical in nature, such as inventions, know-how, processes, procedures, technical roadmaps, drawings, software, technical documentation, or specifications. Often, however, it takes the form of logos, business plans, licenses and approvals, customer or supplier contact information and tendencies, financial information (including pricing and costing), or distribution information. All of these assets have at least one thing in common: they are the result of the creative, mental activity of your workforce.
Intellectual Property Protection Plan
Gutwein Law has developed an Intellectual Property Protection Plan to help your business identify and protect your intellectual property. Beyond simply talking about the features of patents, trademarks, copyrights, and trade secret protection, our goal is to work with you to develop an overarching strategy of how to protect these assets so that there is a return on the investment you are making.
A meeting is the first step in the Intellectual Property Protection Plan where we get to know one another, learn more about the nature of your business and what type of IP you are creating, as well as share information with you regarding our experience and the common IP protection mechanisms.
After the meeting, Gutwein Law will put together an Intellectual Property Protection Plan tailored to protect your unique assets. This Plan may consist of workforce training, drafting core documents, conducting further strategy sessions, and drafting and filing patent, trademark, and copyright registrations.
An informed, engaged workforce is your front line for identifying and protecting IP, as well as a core asset in themselves. Gutwein Law can provide training on any legal issues you encounter, including IP matters such as:
- IP Basics & Best Practices
- The Patent System
- International Patent Strategy
- Trade Secrets Best Practices
- Trademarks & Copyrights
- IP Agreements
Drafting Core Documents
Making sure that your organization is using the right document in the right circumstance is one of the best ways to avoid inadvertently compromising your IP. Gutwein Law can provide basic documents to help your team identify and protect your company’s IP, such as:
- Confidentiality and Non-Disclosure Agreements
- Employment Agreements with duty to assign and other critical clauses
- Invention Disclosure Forms
- IP Portfolio Management Spreadsheets
- New Product Introduction Plan
Best Practices and Strategies
Setting the course is the right beginning, but continuing to exercise best practices and finishing projects will return the most value to your business. Gutwein Law can help your team remain focused on IP identification and protection by providing the following services:
- Invention Capture Session with your engineers, inventors or other creative team members
- Invention Review Board meetings with management to help evaluate new ideas, identify the best method of protection, and continuing evaluation of your company’s IP portfolio to ensure proper allocation of resources to maintain the portfolio
- Formal opinions where appropriate, such as Freedom to Operate or Infringement Analysis Opinions
- Portfolio valuations and management strategy, especially during transitions, such as company sales, restructuring, liquidation or forming a joint venture
Traditional IP Services
The full extent of legal protection is often only possible through formal mechanisms. Gutwein Law can help your team secure protection via patents, trademarks, copyrights, or IP agreements by assisting with the following:
- Intellectual Property Licenses or Sale Agreements
- Management Employment Agreements
- Provisional and Regular Patent Applications
- Trademark Registrations (state and federal)
- Copyright Registrations
- International Patent and Trademark Registrations
Gutwein Law will guide you through the registration process by filing all documents necessary to obtain the registration and responding to office actions. If there is a challenge to your trademark registration, Gutwein Law will defend your mark. Once your IP protection is secured, we will track dates for future filings and prepare maintenance documents to ensure that your IP remains protected.
Developing a brand requires a significant investment of your time and money. You may develop a name, logo, or choose a particular color – all designed to separate your business in the market. Too often, business owners commit to these marks without ensuring they have the legal right to use them or taking the necessary steps to protect them.
By surveying what trademarks already exist in your marketplace, Gutwein Law can help you decide if filing will be a success. We can also use the results from a comprehensive search to better classify your goods and services and to prepare responses to registration refusals issued by the United States Patent and Trademark Office (“USPTO”). International trademark searches are also available.
Whether you already have a mark or you’re developing a new one, you should protect that investment in your brand by filing for a federal trademark. It gives you benefits like exclusive use of the mark nationwide, and the ability to bring a lawsuit in federal court with access to infringer’s profits, actual damages, costs of bringing the lawsuit, and potential attorney’s fees. Our trademark service includes a consultation with an attorney who will tailor the classification of your goods and services to fit your business. This increases the chance of a successful registration and ensures you have the proper scope of protection in the marketplace.
INTENT TO USE
By filing an Intent-to-Use (ITU) application, Gutwein Law can hold your place in line at the USPTO until you start using your mark in commerce. Every six months after filing, we’ll renew your application by filing for extensions. Once you begin using your mark in commerce, Gutwein Law will convert your ITU into a full registration by filing a Statement of Use.
Throughout the life of your trademark, you must police and enforce your rights. Gutwein Law provides services like filing mandatory federal renewals, cease-and-desist letters to infringers, trademark watch services, and filing for incontestability status to help protect your marks.
In addition to filing and maintaining your marks, Gutwein Law can help you leverage your trademark portfolio to drive revenue and market share. We can draft, negotiate, and close trademark licensing deals, assignments and transfers.
If you find that someone is infringing on your mark, Gutwein Law has the resources in place to defend your rights. We have experience in multiple federal jurisdictions handling complex trademark cases, so we can accurately evaluate your case, advise you on the best course of action, and then implement an effective litigation strategy to recover any damages and ensure your mark is safe.
EXAMPLES OF SERVICE
As an example of our trademark services, we assisted a product manufacturer with conducting a trademark search to check the availability of a new product name and then filed a trademark application for registration with the United States Patent and Trademark Office. When an opposition was filed to the trademark registration by a competitor arguing that the proposed registration would pose a likelihood of confusion with the competitor’s registered trademark, we researched the various response options and counseled our client on the benefits and drawbacks to each response. The client was then able to make an informed decision to resolve the opposition.
Sometimes other businesses invent valuable technology that can be useful in your business. We have helped clients in various industries license technology from government, universities, and private companies. As an example, we negotiated a license agreement for a manufacturing client to license technology from a university to enhance its products as well as assisted a service firm with licensing valuable technology from the federal government.
When it comes to protecting your products, services, or just how you do business, Gutwein Law can help you better understand what it is that should be protected and best practices for securing that protection. This may include establishing best practices around treatment of confidential information and employment agreements, but it also may include pursuing formal patent protection or managing an existing portfolio in a cost-effective way. For example, Gutwein Law worked with a manufacturing client to quickly identify key features of new products that were going to be launched at an upcoming trade show. By efficiently filing for patent protection, the client was able to initiate a large marketing campaign with confidence that their ingenuity and competitive advantage were protected.
At Gutwein Law, our experienced IP attorneys can help your business evaluate and protect your IP through a spectrum of legal services relating to acquiring, enforcing, and commercializing your IP assets. Our approach is to help you form a business strategy that returns value on your IP investment: that’s Legal Strategies with Business Perspective.