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PATENTS | TRADEMARKS | COPYRIGHTS | TRADE SECRETS | IP ASSET MGMT
Curran Patent Law (“CPL”) offers services in the Practice
Areas described below. The
descriptions are anecdotal in nature and not intended to innumerate all
possible available services. For
inquiries about particular services and how CPL can serve your needs, please
contact CPL.
Patents: Arguably the
most formidable of IP rights, a patent
protects an invention for a
limited time in exchange for the disclosure of how to practice the
invention. Governed exclusively by Federal law
in the US, patent
protection is intended to be uniform throughout the US, and practitioners registered
to practice before the US Patent & Trademark Office (“USPTO”)
may service clients nationwide. Using
the USPTO’s Electronic Filing System (“EFS”), CPL
may file patent applications from any location where CPL has Internet
access.
As such, CPL services
clients located across the United
States as well as abroad. In particular, being fluent in German and
having lived in Germany
for years, Kevin is well-suited to represent German, Swiss and Austrian
clients in pursuing US
patent protection. Similarly, such
German clients would benefit from Kevin’s knowledge of and experience with
the German Employee-Inventor Law in spotting potential issues associated with
US patent applications.
In general, clients coming
to CPL with new ideas face two main questions: whether their ideas amount to
patentable inventions, and if so, what level of the patent protection
available to their inventions is worth the cost. CPL can help clients address these and
related questions in developing a patent strategy for a given invention or
portfolio of inventions. Having been
an in-house IP strategist managing a patent portfolio of several hundred
applications, with several dozen new invention disclosures submitted
annually, Kevin has extensive experience with deciding what, where and when
to file, and how much to budget to a given filing or family of filings. On the corporate side, CPL may assist
clients with the identification of patentable inventions, invention
assignment, inventor incentives, inventor remuneration, patent portfolio
management, and patent licensing.
In contrast to other IP
rights, such as copyright and common law trademark rights, acquiring patent
protection involves a significant commitment of money and time. From managing an annual budget in the
hundreds of thousands of Euros, Kevin knows the dilemmas that clients
encounter in dealing with outside counsel to keep costs down over the
lifetime of a project. The
low-overhead, boutique-nature of CPL’s practice allows CPL to offer patent
application and prosecution services at rates below those of much of the competition.
In private practice, much of
Kevin’s time has been devoted to writing, filing and prosecuting
patents. A significant amount of his
time, though, has involved patent litigation, providing Kevin with a balanced
perspective of the IP landscape. As
such, clients of CPL are offered a spectrum of services, including
patentability searches, patent non-infringement / freedom-to-operate
opinions, and patent infringement analyses, all at reasonable prices. In addition to the preparation and
prosecution of utility patent applications, CPL offers the preparation and
prosecution of design patent applications, preparation and conversion of
provisional patent applications, international application filing and
prosecution, and payment of patent maintenance and annuities.
Moreover, next to high costs,
most in-house counsel would cite poor customer service as a major shortcoming
of large law firms. In contrast,
prompt turn-around times and personal service are characteristic of each
project undertaken by CPL. In a
boutique practice, every client matters.
Attention to detail distinguishes CPL from many firms, as CPL can
tailor its practices, such as invoice formatting and content, to the desires
of individual clients.
TOP | COPYRIGHTS | TRADE SECRETS | IP ASSET MGMT
Trademarks, Service Marks, Trade Dress, & Domain Names: As companies invest significant portions of
their budgets branding and marketing their products and services, they invest
in the market value of their trademarks,
service marks,
trade dress,
and domain
names. Similar care and
effort should be taken to properly investigate and protect the proposed
marks, dress and names on the front end.
Trademark clearance searches and registration applications are
services that clients may receive from CPL.
As client needs dictate, CPL may assist with inbound and outbound
licensing of marks, as well as trademark enforcement or defense.
Trademark issues often arise
in the context of Internet domain name registrations, and CPL may work with
clients to register new domain names, challenge domain name registrations that infringe
the client’s trademarks, and defend against such challenges to the client’s
registrations.
While patents confer
protection nationwide, the scope of protection afforded a trademark varies by
geography and use, reflecting the mixture of State and Federal laws
regulating trademark protection
in the US. CPL appreciates
that consideration of how, when, and where a client intends to use proposed
marks and names is best done in the planning stages, and CPL can work with
the client to achieve the best protection.
TOP | PATENTS | TRADE SECRETS | IP ASSET MGMT
Copyrights: Based on a
client’s circumstances, CPL may help craft an effective strategy for the
management, licensing, and enforcement of a client’s copyrights. Such a strategy may include, for instance,
CPL seeking federal registration of the copyrighted material. CPL also may assist clients with the proper
handling of third-party copyrighted material, in particular where open
source software code is involved.
Compliance with licensing requirements is an important issue when open
source code may be included in a client’s software.
Beyond standard legal
services, CPL can visit a client’s location to educate the client’s staff
about IP rights and laws, such as copyrights.
To date, Kevin has given presentations covering an overview of IP to
management and employees in the US,
Canada, Germany, France,
India, and Israel. A discussion of copyrights, for example,
would point out that US
Federal Copyright law and international treaties confer copyright
protection to fixed expressions of creative works automatically upon
creation. Copyright protection is
limited in duration and does not require registration, but various incentives
exist in the US
to encourage registration.
Registration is required, though, to seek statutory damages in US
Federal Court for copyright infringement.
When technical features are incorporated to deter copying, copyright
protection may be augmented by application of the Digital Millennium Copyright Act.
In the entertainment
business, copyrights, copyright licensing and copyright clearance are very
important. Every actor, producer, and
distributor is affected by the handling of a project’s copyrights. The actor’s right of publicity likewise may
be a subject of negotiation. As
between the parties, though, the interests of each may be at odds. CPL is available to assist a client with
the management, clearance, negotiation and licensing of these rights. Where indicated, for example, the terms and
conditions of the Screen Actors Guild (“SAG”)
Theatrical Motion Pictures and Television Contract with Producers (the “standard contract”) may apply. As a member of SAG, Kevin has personal
familiarity with issues affecting SAG members.
TOP | PATENTS | TRADEMARKS | IP ASSET MGMT
Trade Secrets: In furtherance
of trade secret
protection, CPL may serve clients through identification of trade secrets,
education regarding proper treatment of trade secrets, use of contracts and
procedures to maintain the confidentiality of trade secret information, and
implementation of systems to manage trade secrets and confidentiality
agreements.
Unlike the
exclusively-Federal nature of patent protection in the US, for instance, trade secret
protection is based largely on a patchwork of State and Federal laws. Although each law may have its own
definition, the Uniform Trade Secrets Act defines trade
secrets as information “that:
(i) derives
independent economic value, actual or potential, from not being generally
known to, and not being easily ascertainable by proper means, by other
persons who can obtain economic value from its disclosure or use, and
(ii) is the
subject of efforts that are reasonable under circumstances to maintain its
secrecy.” The information may include,
for example, “a formula, pattern, compilation, program, device, method,
technique or process.”
Trade secret protection
exists indefinitely, but only as long the information remains
confidential. As such, protection of
trade secrets requires a client’s ongoing diligence, and CPL can help focus
and streamline a client’s efforts. For
instance, many business ventures require the exchange, maintenance, and
eventual return of confidential information of business partners. This exchange typically is governed by
confidentiality clauses or non-disclosure agreements that a client may wish
to standardize and monitor.
Analogously, while Senior IP Counsel at a large multi-national
software company, Kevin was instrumental in advancing a worldwide system for
creating, clearing and tracking non-disclosure agreements (NDAs).
TOP | PATENTS | TRADEMARKS | COPYRIGHTS
IP Asset Management Consultation: When a
client’s desires implicate a more involved approach, CPL is available to
serve the client on a consultancy basis.
Having practiced for years as outside counsel as well as years as
in-house counsel, both domestically and internationally, Kevin is
advantageously positioned to provide clients with advice incorporating wisdom
from each practice. Clients often
benefit from external assistance when looking to:
establish or expand an
IP department,
draft or improve IP
best practices,
educate management and
staff about IP rights,
educate potential
inventors about protecting IP,
manage Intellectual
Property assets,
comply with Sarbanes-Oxley (“SOX”) documentation requirements
regarding IP assets,
facilitate
global cooperation among worldwide subsidiaries to integrate IP procedures,
or
implement any
combination of the foregoing.
Working closely with corporate managers and in-house counsel, CPL may
assist clients to move beyond the status
quo to achieve the desired progress in any of the above areas.
Specifically, Kevin
participated in the growth and expansion of the Global IP Group at a premier
multinational software company having over 35,000 employees spread across 50+
countries. When Kevin joined the
Global IP Group in 2002, it was less than a year old and employed a staff of
about a dozen employees, largely split between an office in the US and another in Germany. By 2006, the Global IP staff had grown
four-fold and expanded to additional company locations in India, Israel,
China, Bulgaria, and the US. Naturally, this growth involved much more
than adding employees and locations; it involved no less than the development
and roll-out of a complete and comprehensive IP strategy. Having assisted, witnessed and learned from
this growth, Kevin in turn can help clients develop and implement their own
IP strategies to achieve their goals.
Furthermore, Kevin
recognized early on the applicability of SOX requirements to IP Asset
Management (“IPAM”) and spearheaded efforts to develop a compliance strategy
for the Global IP Group to participate in the company’s overall SOX
documentation compliance. This
instance of documentation of internal controls related to IP Asset Management
is likely one of the first instances of IPAM SOX documentation compliance at
either a domestic or foreign issuer.
As such, Kevin has hands-on experience with and insight into the SOX
documentation process that few other IP attorneys possess.
The foregoing are just
a few of numerous anecdotes portraying Kevin’s broad IP practice
exposure. Clients of CPL can leverage
this experience to yield results of their own, benefiting from lessons
learned through the successes and failures of others.
TOP | PATENTS | TRADEMARKS | COPYRIGHTS | TRADE SECRETS
Nota Bene: A
remarkable plethora of texts summarizing the different areas of Intellectual
Property Law is available online, and you are invited to visit the IP Law Links
page to browse through some of them.
Case in point, for information regarding the substance of the various
types of Intellectual Property and the protections afforded them, you may
peruse the detailed entries in Wikipedia for Intellectual
Property and related topics.
More in-depth descriptions are available from Wikibooks for US Patent Law,
US
Trademark Law, and US Copyright
Law. The above Practice
Area descriptions, however, highlight selected legal aspects as they pertain
to the relevant services offered by CPL.
Given that
sites such as Wikipedia.org have compiled extensive content on the above
subjects, CPL
has avoided including a detailed, and largely duplicative, summary of each
subject here. While CPL is indebted to
Wikipedia.org for the informative presentations and plain-English discussions
of these legal topics, CPL reminds the reader that Wikipedia.org
is a non-authoritative, secondary resource comprising user-edited
content. For the current state of the
law, please refer to binding legal authorities, such as relevant statutes and
case law. CPL is not responsible for
any content available on or accessed via Wikipedia.org or any other
resource.
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