PATENTS

We are and have always been a firm that specializes in patent procurement. All of our professionals have extensive industry or research experience and/or advanced science or engineering degrees that enable us to quickly obtain an in-depth knowledge of the relevant technology in order to identify the inventive concept and craft the broadest possible claims. Our industry, science and research experience allows us to quickly establish a rapport with inventors. This relationship makes the application process virtually seamless. As a result, we provide the highest quality, value-oriented work product that achieves our client's goals with respect to its patent portfolio. When necessary, we conduct telephone and personal interviews with the patent examiners to advance prosecution. We conduct our own patent searches using many commercially available research databases. We will also employ the patent examiner search database that is presently only available at the U.S. Patent and Trademark Office. We are consistently within the top fifty firms representing clients issuing patents in the U.S. Patent and Trademark Office as reported by Intellectual Property Today.

All patent practitioners participate in their respective areas of expertise.

OPINIONS

From our first days as a law firm, businesses have looked to us to provide scientifically sound, precise and reliable opinions regarding validity, infringement, clearance/right-to-use, state-of-the art, patentability, and valuation opinions. Our clients require accurate, detailed information to assist in proper courses of action. When making critical business decisions such as a new product launch, transfer of right of a new or existing product, opinions become an invaluable tool.

In the trademark arena, we construct opinions on right-to-use/infringement and right-to-register, as well as unfair competition, dilution, and internet considerations such as domain name opinions; and for copyrights, copyright duration, ownership, infringement and fair use. In providing a clearance opinion prior to commercialization of a new product, we draw upon our extensive engineering and science experience in these fields and supply valuable advice to clients to modify their designs to insure new products are free of Intellectual Property rights of others.

In preparing our opinions, we conduct nothing short of a rigorous investigation of the prior art and a thorough application of legal principles to the results of the investigation. We have a long history of conducting our own patent and trademark searches both on-line and via the public search room at the U.S. Patent and Trademark Office. We provide a complete analysis of claim construction, as well as issues of unenforceability, and we prepare our opinions with the full knowledge of our client's business goals. And, where necessary, we utilize this knowledge to assist the client in achieving those goals through negotiations and/or litigation.

All practitioners participate in their respective areas of expertise.

LITIGATION / INTERFERENCE

Our litigation experience is technologically and geographically speaking, borderless. We litigate patents, trademarks, trade secrets and copyrights in a boundless range of technologic and commercial environments and possess a domestic and international reputation of being focused and committed to the protection and enforcement of intellectual property.

Recently, we obtained a substantial monetary settlement for a major defense contractor in enforcing its patents on 3D graphics originally developed for flight simulators, now prevalent in video games and animated films. In addition, we have protected multimillion-dollar licensing programs, including the prostate specific antigen (PSA) diagnostic test, 99mTc myocardial diagnostic agents, a computer display system for a major defense contractor, electrical phrenic nerve stimulators and garment hangers for an international industry leader.

Our versatility is further complimented with extensive experience in interference practice in the United States Patent and Trademark Office. Since our inception, we have cleared the way for patents for both large and small corporations and have worked closely on early landmark decisions such as Squires v. Corbett and Driscoll v. Cebalo. Now, 30 years later we continue as one of the most active representatives in interference proceedings.

We are experienced in all aspects of trademark and unfair competition litigation including trade dress infringement, counterfeiting, false advertising, "grey market" actions and trade disparagement under Section 43(a) of the Lanham Act. These actions may involve RICO, antitrust and advertisement laws where applicable. Our firm has counseled client on ITC matters and has brought and/or successfully defended seizure actions and customs proceedings.

Licensing is a multi-billion dollar business. For the most effective and profitable use of your intellectual property, you need impenetrable and sophisticated transactions. We have vast experience in licensing, IP considerations in mergers, acquisitions, and public and private equity investments. Over the years, our practice has effectively licensed millions of dollars in intellectual property assets for Fortune 500 corporations, smaller businesses, and individuals.

With our expertise in both Chapters I and II of the PCT process, clients secure the maximum benefits available to them under this treaty, including strategic planning for the maximization of international rights, while retaining the cost saving features of the PCT practice. In addition, we possess extensive experience in filing patent applications in the European Patent Office, where a single application may cover nearly all industrialized European countries.

As the markets of the United States and abroad become more integrated, we are well positioned to provide our clients with legal and technological advice that will be uniquely useful and globally profitable.

(Manager Trademarks)
Barry Krivisky   (Counsel Trademarks)
Steven R. Bartholomew

All practitioners participate within their respective areas of expertise.

TRADEMARKS
With experience ranging from the worldwide trademark portfolios of major corporations, such as maintaining thirty beverage marks in seventy countries for a major national distiller, to protecting the house-mark of start-up companies - we will build, maintain and defend your trademark.

We provide the full range of trademark application services, including counseling with respect to the availability and selection of trademarks, preparing and prosecuting applications and counseling with respect to renewal. Our experience extends not only to product names but also to service marks and product design registrations.

To facilitate trademark or brand name searches, our firm makes use of comprehensive on-line computer search facilities that allow instant access to records in the United States Patent and Trademark Office, the registers of various states and thousands of brand name directories, telephone books, and news and information sources. Trademark availability and registrability may be determined efficiently and quickly, in the same day, if desired.

We also have extensive experience in the litigation arena. We have handled trials involving product and design trademarks as well as obtained and defended against preliminary injunctions. Also, we have extensive domestic opposition and cancellation experience before the Trademark Trial and Appeal Board.

We offer experience in all aspects of licensing, dealer-distributor relations, manufacturing agreements, joint ventures, etc., to assure that the client's valuable trademark and trade name rights remain protected. Further, once a client registers its trademark, our firm offers comprehensive watching and monitoring services to ensure that a trademark is not being infringed after its initial use or registration.

For years, we have been a leader in the field of international trademark registration, maintenance and protection. In addition to trademark prosecution, we have conducted multi-national settlement negotiations, licensing arrangements and supervised the progress of international litigation.

Moreover, we are an active member of the International Trademark Association and regularly update our resources to keep abreast of the latest developments in trademark law, especially in connection with recent developments related to trademark dilution and domain name disputes. As many business and individuals move further into the information age, we counsel clients on additional ways to promote and protect their valuable trademarks and service marks on the Internet.

Trademark Practice Group

Paul Esatto, Jr.
Keith A. Weltsch
Barry Krivisky
Frank S. DiGiglio
Steven Fischman
Peter I. Bernstein, M.S.
Richard L. Catania, M.S.
Steven R. Bartholomew

TRADE PRACTICE

To the untrained eye, Trade Practice laws may seem like an impassable jungle of regulations. That is why our clients rely on us to help them navigate a successful trade regulation course of action and provide a road map to protect their competitive advantage. There are numerous ways your protection is realized, from developing a complete corporate intellectual property and trade secret protection program to bringing a private antitrust action under both federal and state law.

We have drafted and litigated, know-how and joint technology development agreements, non-disclosure/confidentiality agreements and employee restrictive covenants and non-compete clauses. We are well versed in all areas of unfair competition, including, false designation of origin section 43(a) actions, trade dress, trade disparagement and false advertising. We also advise our clients regarding the interaction between antitrust issues and intellectual property, as they apply to licensing and acquisitions in an effort to prevent fraudulent procurement, bad faith enforcement, misuse and pooling. We have handled antitrust causes of action, from the classic Walker Process patent cause to a Sherman 2 case regarding a conspiracy to block a competitor from having its product approved for competitive bidding contracts.

Trade Practice Group

Paul J. Esatto, Jr.
Frank S. DiGiglio
John S. Sensny
Peter I. Bernstein, M.S.
Allen R. Morganstern
Barry Krivisky
Stephen A. Young
Steven R. Bartholomew

COPYRIGHTS & TRADE SECRETS
We have great respect for creative expression. For many of our clients, their creative expression is their livelihood. Our Copyrights & Trade Secrets practice group is dedicated to providing protection for literary and artistic accomplishments, advising in matters of registration, licensing and transfer of music, photographs, jewelry, artwork and script properties. Where a client finds it necessary to enforce its copyrights or defend claims of copyright infringement by others, we provide the litigation and negotiation skills needed to obtain the most cost effective solution.

At times there is an advantage in securing certain innovations as trade secrets rather than seeking patent protection. For instance, proprietary information may not be patentable subject matter, or the client may not wish to disclose the information to the public. Under such circumstances, we will counsel our clients on the appropriate legal measures for this alternative approach to protecting trade secrets and confidential know-how.

Copyrights & Trade Secrets Practice Group

Frank S. DiGiglio
Paul J. Esatto, Jr
Peter I. Bernstein, M.S.
Steven Fischman
Xiaochun Zhu, Ph.D.
Keith A. Weltsch
Seth Weinfeld
Barry Krivisky
Steven A. Young
Michael W. Russell, Ph.D.
Steven R. Bartholomew

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