Summary: Mechanical patents are typically the easiest to search, file and issue. One reason is that the illustrations of the mechanical apparatus can often be compared visually without reading pages of text such as the case in software and business method patents. Well written mechanical patent application use very precise terminology to describe the physical structure of the devices.

Summary: Software patents are challenging to write but extraoridnarily valuable when the right technology is protected. In our opinion, a patent attorney writing these types of patents must have software development experience. In our office, our software patent attorneys have practical experience in Microsoft .NET, SQL, VB, C#, Java, C++ and the like.

Software development environments are extremely powerful. Highly complicated and innovative software systems may be reproduced quite easily without "copying" the original work. Accordingly, the inventive approach must be protected with a utility patent.

Summary: We have substantial experience with biotechnology and pharmacuetical patents. One of the biggest challenges is obtaining and presenting meaningful clinic data to establish that the invention has been "reduced to practice." A compound that demonstrates efficacy against skin cancer might not be a viable therapeutic for breast cancer.

Patent examiners frequently attempt to narrow claims to only the ailments which have been tested in clinical settings asserting that results cannot be extrapolated due to the "unpredictable nature" of the biological arts. Our office has substantial experience in traversing these types of rejections. Inexperienced patent attorneys might simply agree to an allowance of narrow claims without carefully considering the implications. If the compound or diagnostic is a potential blockbluster, then such missteps may cost the company millions of dollars in lost sales.

Summary: Business methods patents have been around in the United States since 1998. In the early days of the dot-com boom (1998-2001) thousands of business method patents were filed and eventually granted. The U.S. Patent and Trademark Office (PTO) was not initially equipped to examine these application. After years of fine-tuning, the PTO now rigourously examines this type of patent application due to the broad coverage they give their owners.

Our firm has successfully prosecuted and issued business method patents in the financial and insurance industries. Our clients have attributed great value to the patents in creating a barrier to competition. Perhaps more than any other type of patent application, the patent attorney filing this must be both highly competent and creative.

Successful businesses realize the value of customer goodwill generated through the public’s association with their trademark. A registered trademark is a recognized business asset which may contribute to the overall value of a company. In addition, licensing or franchising your trademark may lead to unrealized revenue.

Summary: If your company has a protectable brand it should be registered for a number of reasons. First, securing federal trademark rights expands the reach of the brand into other U.S. states and localities immediately upon filing ("national constructive use"). Second, having a federal trademark registration gives the owner legal presumptions in case of an infringement. Third, the federal registration can be critical in domain registration issues and cybersquatting. Fourth, should the company be acquired or spun off, the federal trademark is an important asset in the book-value of the company. Fifth, once a trademark has been federally registered for five (5) years, it may become "incontestable" wherein very few legal attacks can be made on it.

Indeed, Congress has stacked the deck for business owners that have federal trademark registrations. The filing of a federal trademark is logistically simple but strategically complex. Pro se applicants and novice attorneys frequently make critical mistakes that jeopardize the validity and scope of the trademark, even if it is initially registered. The type of mark claimed, the recitation of goods and services, and what constitutes true "first use in commerce" should not be left to inexperienced counsel.

Summary: The Trademark Trial and Appeal Board (TTAB)is the administrative body that decides ex-parte appeals, oppositions, cancellations and concurrent use proceedings. The rules of the TTAB are precise and rigid. Although they track the Rules of Federal Civil Procedure there are numerous exceptions.

Even firms with experienced federal litigators refer TTAB matters to our office. In addition, we also represent major corporations with in-house trademark counsel that refuse to handle the complexity and liability of TTAB litigations.

Summary: Trademark applications may also be filed overseas. We recommend against such filing if you have no means of marketing your product overseas. You can obtain trademark protection in 27 European countries by filing a Community Trademark (CTM) application. The twenty seven (27) countries, including about 360 million consumers, are: Austria, Belgium, the Netherlands, Luxembourg, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Portugal, Spain, Sweden, and the United Kingdom. If a CTM application is filed within six (6) months of the U.S. application then the CTM will be effectively awarded the U.S. priority date.

There are no treaties for filing trademark applications in Asian, African, or other countries outside of the European Union. Thus, a trademark lawyer must be hired in the non-European country of interest.

Summary: Copyrights are designed to protect artistic works, i.e., works that have no utility. Musical scores, sound recordings, poems, books, paintings, and sculptures may be copyrighted, of course, but more mundane works such as instruction brochures, sales brochures, and the like may also be copyrighted as well. The only requirement is that the work contain at least a nominal amount of creativity. Searches are not performed prior to the filing of a copyright application because if someone else has already written the song or book you wrote, it makes no difference to the Copyright Office as long as you did not copy from the earlier artist.

Summary: Copyright applications are deceptively simple. A typical copyright application for a literary work (Form TX) can generally be filled out and submitted in 10 minutes. However, in reality, many copyright deposits require careful consideration of what will be deposited. Our office has frequently spent many hours collecting and evaluating the information intended for submission. We also counsel clients on the proper use of the copyright registration symbol as well as assigning rights to copyrighted works from one company or author to another.

Note: We often suggest that clients retain our office to file a first copyright deposit. Once that is done we have the client reproduce our filing method for future works.

Summary: For most applications, we have the ability to submit the copyright application electronically through the eCO system. The benefits include a slight reduction in the government filing fee ($35 instead of $45) and, more importantly, a drastic reduction in the time to receive the copyright registration certificate.

Summary: Federal copyright registration is time-sensitive. The registration must be filed either: (1) within ninety (90) days of publication; or (2) before actual infringement occurs. Since a company cannot anticipate when infringement is to occur, text, graphics, source code, website content and the like should be filed within 90 days. If the work is registered timely the benefits include:

1) Statutory damages up to $150,000/violation
2) Recovery of attorney fees
3) Recovery of court costs

Summary: Software copyrights, both object and source code, are important intellectual property assets to protect. This is particularly true for "premise-based" or "distributed" software. Alternatively, software that resides on the copyright owner's network and only serves data (i.e., a web-server) might not be as critical to deposit if no other entity will reasonably have access to it.

Nevertheless, we frequently deposit source code for application service providers as many of the developers they use migrate to potential competitors. By filing the source code proactively, we enhance the barrier to competition by preventing whole-sale appropriation of that developer's code.

Summary: Our office focuses exclusively in intellectual property law. This includes patent, trademark, copyright, trade secrets, and licensing. By specializing in this area of law we obtain a proficency and knowledge that results in a substantial cost-savings to our clients. Clients have come to us from from other firms and lamented about the billing policies they endured.

As a client of Smith and Hopen you do not pay for basic intellectual property law research. We do not charge our clients to maintain our knowledge of the law and procedure. Furthermore, due to the wide range of intellectual property matters we handle, it is quite common that we have dealt with the same issue before. Accordingly, we can appropriate much of our existing work to handle the new matter.

Summary: We have a simple philosphy when approaching fees and billing: we treat your money like we would treat our own. Every attorney and staff member must ask themselves, "would I pay this fee for this work?"

Unlike large, general practice law firms we do not separate the billing section from the legal section. Every employee is accountable for the work and fees they bill. There must always be meaningful and clear value to the work that is billed. If not, such charges will not be incurred.

Summary: As we noted above, our practice encounters the same issues and procedures repeatedly. While the client might be new the patent or trademark application process, we are experienced. Accordingly, we prepare flat-fee estimates of virtually all work prior to the initiation of the project.

Clients should not have to "guess" at what a project will cost when it is possible for our office to anticipate those costs.

Summary: Our office provides 24/7 secure access to all our client matters. Our clients, at any time may view our deadlines, billing entries and status of matters. We provide this through our website. Of course, we are more than happy to discuss all these issues over the telephone.