Intellectual Property Services

A utility patent gives its owner the right to exclude others from making, using, selling, offering for sale, or importing the claimed invention in the United States for about twenty (20) years after the application's filing date. Utility patents protect how something works, including machines, processes, systems, software-implemented methods, compositions of matter, and improvements to any of them. A patent can protect a market position, support licensing revenue, and serve as a valuable asset in financing and acquisitions.

Patentability searches

A patentability search reviews issued patents, published patent applications, and technical literature to assess whether an invention is likely to be considered new and nonobvious (which are general requirements for obtaining a patent). The results tend to show a client what already exists in the field and which features of an invention may be distinguishable from pre-existing technology. In some scenarios, a search can help a client decide whether to pursue a patent before investing in an application.

Provisional patent applications

A provisional patent application establishes an early filing date with the United States Patent and Trademark Office (USPTO) and allows the applicant to use the term “patent pending.” It is not examined, does not require formal patent claims, and remains pending for twelve months, during which a nonprovisional application must be filed to claim its benefit. A provisional application supports later claims only to the extent it describes the invention in sufficient detail, which makes the completeness of its disclosure important. Generally, these types of applications can be used to support specific patent strategies, such as having an application “on file” while a client tests an innovation's viability in the marketplace.

Utility patent applications

A nonprovisional utility patent application is the application the USPTO examines and, if allowed, issues as a granted patent. It includes a written description of the invention, drawings, and claims, which are the numbered sentences that define the legal boundaries of the patent. The application must describe the invention in enough detail that a person skilled in the field could make and use it, and the claims must be new and nonobvious over what came before.

Office action responses and examiner interviews

An office action is a written communication from a USPTO examiner explaining why an application is not yet in condition for allowance. It can include rejections of the claims, objections to the drawings or specification, and formal requirements. A response can amend the application, present a rebuttal or explanation to the USPTO, or do both, and it is due within a set period that can be extended for a fee. Sometimes, an examiner interview, which is a formal conversation with a USPTO examiner, can be beneficial because it can clarify the issues raised in an office action and identify amendments that would move the application toward allowance.

Responding to rejections of an application

Claims can be rejected because they are anticipated by or obvious over the prior art, because they are directed to subject matter that is not eligible for patent protection, or because their language is indefinite or not supported by the written description. When a rejection is made final, the options available to an applicant include further amendment, a request for continued examination, which reopens prosecution before the examiner, and an appeal to the Patent Trial and Appeal Board.

Continuation and divisional applications

A continuation application claims the benefit of an earlier application's filing date and pursues additional or different claims based on a patent application already filed. It must be filed while the earlier application is still pending, and it allows claims to be pursued for aspects of an invention that were described but not yet claimed. A divisional application pursues an invention that the examiner required to be separated from the original application through a restriction requirement, and it also retains the earlier filing date.

Continuation-in-part applications

A continuation-in-part application repeats a substantial portion of an earlier application and adds new subject matter, such as improvements developed after the original filing. This type of application can be used to cover developments of an invention and to join an existing “family” of patent application(s).

Patent reissue and ex parte reexamination

Reissue allows the owner of an issued patent to correct an error that renders the patent wholly or partly inoperative or invalid, such as claims that are too broad or too narrow, or errors in the specification or drawings. Ex parte reexamination is a USPTO proceeding in which issued claims are reconsidered in light of prior patents and printed publications that raise a substantial new question of patentability. It can be requested by the patent owner, but it is typically requested by a competitor attempting to alter the patent or render it narrower or weaker.

Patent portfolio management

Patent portfolio management is the ongoing administration of a collection of patents and pending applications. It includes docketing deadlines, paying maintenance fees, which are due three and a half, seven and a half, and eleven and a half years after a patent is granted, and recording changes in ownership.

Patent work extends across electronics and software, aerospace and space systems, agricultural and construction equipment, manufacturing technologies, medical devices, defense systems, and artificial intelligence, among other fields. Protection for the ornamental appearance of a product is described under Design Patents, and protection outside the United States under International IP.

A design patent protects the new, original, and ornamental appearance of a manufactured article, meaning its shape, its surface ornamentation, or both. At the same time, design patents can also be used to protect graphical user interfaces or other displays on a screen. Where a utility patent protects how something works, a design patent protects how it looks. A U.S. design patent generally remains active for fifteen (15) years from the date it is granted, and design patents are generally considered versatile tools against copied and knockoff products.

Graphical user interface design patent applications

Graphical user interfaces, icons, and screen layouts can be protected by design patents when they are shown as part of a display screen or other article of manufacture. A graphical user interface design patent protects the appearance of the interface rather than the software behind it, and it can cover app screens, dashboards, icons, and animated icons.

Office action responses and examiner interviews

Design applications are examined by the USPTO, and an office action can raise rejections for lack of novelty or obviousness over earlier designs, along with objections or rejections concerning the drawings, such as inconsistencies between views or a lack of clarity. A response can amend the drawings within the limits of the original disclosure, present arguments, or both, in furtherance of receiving an allowance of the application.

A single product can be protected by both a design patent and a utility patent, and a distinctive product appearance may also qualify for protection as trade dress.

A trademark is a word, name, logo, slogan, or other designation that identifies the source of goods or services and distinguishes them from those of others. A federal registration with the USPTO provides nationwide notice of the owner's claim, a legal presumption of ownership and validity, the right to use the ® symbol, and the ability to record the registration with U.S. Customs and Border Protection to thwart infringing imports.

Trademark clearance searches

A trademark clearance search can be used to review federal and state trademark records, business names, and domain names to identify existing marks that could conflict with a proposed name, logo, or slogan. The results help assess whether a mark is available to use and to register before resources are invested in branding, packaging, and marketing, and they can reduce the risk of a refused application, an opposition, a demand letter, or a costly rebrand.

Federal trademark applications

A federal trademark application is filed with the USPTO and can be based on current use of the mark in commerce or on a bona fide intent to use it in the future. The application identifies the mark, its owner, and the specific goods and services the mark covers, organized into international classes. An application based on intent to use secures a priority date before the mark is in use, and a registration can follow once use begins and is documented. A registered trademark can remain registered indefinitely.

Florida State trademark applications

A Florida trademark registration is issued by the Florida Department of State, Division of Corporations, for a mark that is in use in Florida. State registration provides public notice of the owner's claim within Florida and is often recommended for marks used within the State.

Office action responses

An office action from a USPTO examining attorney identifies the refusals or requirements that must be addressed before a mark can be approved for publication. Requirements can concern the identification of goods and services, disclaimers of descriptive wording, the description of the mark, or the specimen showing how the mark is used.

Federal trade dress applications

Trade dress is the overall appearance of a product, service or establishment, or its packaging, such as a shape, color combination, or configuration, that identifies its source. Trade dress can be registered with the USPTO when it is nonfunctional and distinctive. A resulting federal registration places competitors on notice and supports enforcement against confusingly similar uses.

Trademark portfolio management

Trademark portfolio management is the ongoing administration of a company's marks across its brands, products, and markets. It includes filing renewals and their requisite declarations, recording changes in ownership, and monitoring new filings for conflicting marks.

Conflicting applications and registrations can be challenged through opposition and cancellation proceedings, infringement is addressed under IP Enforcement, and protection outside the United States is described under International IP.

Copyright protects original works of authorship, including software, websites, written content, photographs, artwork, music, and video, from the moment they are fixed in a tangible form. Generally, a copyright owner holds the exclusive rights to reproduce, adapt, distribute, publicly perform, and publicly display the work. Copyright protects the expression of an idea rather than the idea itself, and for works created by individuals it generally lasts for the life of the author plus seventy years.

Copyright applications

Registering a copyright with the U.S. Copyright Office creates a public record of ownership and strengthens the owner's ability to protect a work. A range of benefits comes with the registration of a copyright, and a registration is generally required before enforcement can take place. In addition, timely registration can make additional remedies available, including statutory damages and the recovery of attorney's fees. A registration can also serve as evidence that the copyright is valid.

Software, website, and digital content applications

Computer programs, websites, mobile applications, video, and other digital content can be registered with the Copyright Office. Software can be registered in a manner that protects confidential source code, and new versions of a program can be registered as they are developed. Registering digital works can help developers, content creators, and businesses protect the products and content in which they invest.

Works made for hire agreements and assignments

Works made for hire agreements and assignments are critical whenever one individual or entity asks another to create content on its behalf, such as software, a website, advertising materials, photos, videos, product design or packaging, or written materials. Generally, the author of a work is the copyright owner absent an agreement otherwise, so paying for a work does not by itself transfer ownership of it. These agreements confirm that the party commissioning the work owns the content, code, and creative work it pays for.

Copyright registration management

Copyright registration management is the organized administration of a collection of registrations. It includes maintaining records of registered works, filing supplementary registrations to correct or amplify information in existing registrations, using group registration options where they apply, and recording transfers of ownership with the Copyright Office.

Copyrighted software portfolio management

A copyrighted software portfolio requires ongoing attention to track which versions of a program are registered, who wrote each component, and which code is owned, licensed, or open source. Organized management of a software portfolio supports licensing, financing, and acquisitions, in which a company may be asked to show that it owns the code it sells, and it complements trade secret protection for unpublished source code.

Unauthorized copying is addressed under IP Enforcement, and permission to use copyrighted works is generally granted through the agreements described under IP Agreements & Licensing.

A trade secret is information that has economic value because it is not generally known and that its owner takes reasonable measures to keep secret. Formulas, source code, manufacturing processes, customer lists, pricing models, and business methods can all qualify. Trade secrets are protected under the federal Defend Trade Secrets Act and, in Florida, the Florida Uniform Trade Secrets Act, require no registration, and remain protected for as long as the information stays secret.

Nondisclosure and confidentiality agreements

A nondisclosure agreement, or NDA, obligates the receiving party to keep shared information confidential and to use it only for a stated purpose. An NDA can be one-way, when only one party discloses information, or mutual, when both parties do. Confidentiality agreements allow a business to share sensitive information with potential partners, manufacturers, investors, and contractors while preserving trade secret protection and the ability to seek remedies if the information is misused.

Trade secret protection programs

Because trade secret protection depends on the reasonable measures an owner takes, a trade secret protection program documents those measures. A program can include identifying and labeling confidential information, limiting access on a need-to-know basis, securing digital systems, training employees, and following onboarding and departure procedures. A documented program helps preserve the secrecy of valuable information and supports a claim for misappropriation if that information is taken.

Claims arising from the theft or misuse of trade secrets are addressed under IP Enforcement and IP Litigation.

Intellectual property agreements can aid in defining who owns intellectual property, who may use it, and on what terms. A license grants permission to use a patent, trademark, copyright, or trade secret while ownership remains with the licensor, and an assignment transfers ownership outright. Clear agreements can allow intellectual property to generate revenue, support partnerships, and reduce the risk of disputes.

IP Agreements & Licensing are bespoke, but in general, Victor works on the following types of agreements and licenses:

• Patent, trademark, and technology assignments and licenses
• Assignments and recordation
• Software licenses
• Software and website development agreements
• Joint development agreements
• Nondisclosure agreements (NDAs)
• Non-circumvention agreements
• Work-for-hire agreements

Licenses and assignments are examined closely in IP due diligence.

Patents and trademarks are territorial, so a U.S. patent or registration provides rights only in the United States. Protection in other countries is obtained through filings in those countries or through international treaty systems.

Patent Cooperation Treaty (PCT) patent applications

The Patent Cooperation Treaty allows an applicant to file a single international patent application that preserves the right to seek protection in more than 150 member countries. The application receives an international search report and a written opinion on patentability, and the selection of countries, along with most national filing costs, is deferred until the national phase.

Foreign patent applications

Foreign patent applications are filed directly with national patent offices or with regional offices such as the European Patent Office. Most countries require absolute novelty, meaning an invention cannot be patented there once it has been publicly disclosed. Each foreign application is examined under that country's own law and (sometimes) language requirements.

Foreign trademark applications

Foreign trademark applications are filed with national trademark offices or with regional offices such as the European Union Intellectual Property Office. In many countries, trademark rights arise from registration rather than use, and the first party to file can secure rights to a mark, so a foreign trademark application can preserve a brand's ability to enter new markets.

Madrid Protocol trademark filings

The Madrid Protocol allows a trademark owner to file one international application, through the USPTO, that designates any of more than 130 member countries.

Coordination with foreign associates

Most countries require patent and trademark applications to be filed and prosecuted by a locally qualified attorney or agent. Coordination with foreign associates includes preparing filing instructions, managing translations, tracking foreign deadlines, and reviewing and responding to foreign office actions. Malloy & Malloy maintains longstanding relationships with foreign associates around the world.

The U.S. filings on which international protection is based are described under Patents and Trademarks.

IP enforcement covers the steps taken to stop infringement, counterfeiting, and the unauthorized use of intellectual property. In some cases, enforcement can resolve a dispute without a lawsuit, protect a brand's reputation in the marketplace, and preserve the value of patents, trademarks, copyrights, and trade secrets.

Cease-and-desist letters

A cease-and-desist letter is a formal written demand that identifies the intellectual property at issue, describes the infringing conduct, and demands that it stop. In some cases, a letter can resolve a dispute quickly and via inexpensive means, and it places the recipient on notice of the owner's rights, which can affect the damages available for later infringement. Victor also assists with strategy and responding after a client receives a cease-and-desist letter.

Online marketplace takedowns

Amazon, eBay, Walmart Marketplace, and other online marketplaces maintain procedures for reporting listings that infringe trademarks, copyrights, and patents. A takedown request identifies the rights and the infringing listings, and an accepted request can result in the removal of the listings. Marketplace brand registry programs provide additional reporting tools, and utility patent disputes on Amazon can be decided through the APEX program.

U.S. Customs recordation

Federally registered trademarks can be recorded with U.S. Customs and Border Protection, which allows the agency to detain and seize counterfeit and infringing goods at the border. Recordation gives Customs officers information about the protected marks, and it can stop infringing products before they reach the market.

Domain name disputes

A domain name that incorporates a trademark and was registered in bad faith can be challenged through a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding or through a lawsuit under the federal Anticybersquatting Consumer Protection Act. A successful UDRP complaint results in the transfer or cancellation of the domain name, and the Act also permits statutory damages of substantial sums per domain name.

Disputes that are not resolved through enforcement can proceed to IP Litigation.

IP litigation generally resolves intellectual property disputes in Federal Court. Remedies can include injunctions, damages, and, in some cases, enhanced damages and attorney's fees.

Patent infringement

Patent infringement occurs when someone makes, uses, sells, offers to sell, or imports a patented invention without authorization, and it can also arise from inducing or contributing to another party's infringement. A patent owner can recover damages of no less than a reasonable royalty, including lost profits where they are proven, and a court can increase damages up to three times for willful infringement.

Trademark and trade dress infringement

Trademark and trade dress infringement claims arise under the federal Lanham Act when the use of a mark or product appearance is likely to cause confusion about the source of goods or services. Claims are available for both registered and unregistered marks and trade dress. Remedies can include injunctions, the defendant's profits, the owner's damages, and costs, with enhanced damages for counterfeiting and attorney's fees in exceptional cases.

Copyright infringement

Copyright infringement occurs when one of the exclusive rights of a copyright owner is exercised without authorization, such as the copying of software, images, or written content. A copyright owner can recover actual damages and the infringer's profits or, for timely registered works, statutory damages up to substantial sums, which can be multiplied in cases of willful infringement.

Trade secret

Trade secret claims seek relief for the misappropriation of confidential business information. They can be brought in Federal Court under the Defend Trade Secrets Act or in State Court under the Florida Uniform Trade Secrets Act. Remedies can include injunctions that stop the use or disclosure of the information and damages for the resulting loss or unjust enrichment.

Unfair competition and false advertising claims

The Lanham Act also prohibits false or misleading statements of fact in commercial advertising about a party's own or another's goods or services, as well as false designations of origin. Florida law provides related claims under the Florida Deceptive and Unfair Trade Practices Act. These claims allow a business to generally address competitors whose misrepresentations divert sales or damage its reputation.

Pre-suit investigation and infringement analysis

Before a lawsuit is filed, the facts and the law are investigated, including the scope of the intellectual property, the accused products or conduct, and the available evidence. For patents, the analysis compares each element of the asserted claims to the accused product in a claim chart. A thorough investigation provides a clear picture of the strength of a claim or defense before significant resources are committed.

Challenges to the validity of a patent and to trademark registrations can also be pursued before the USPTO through Quasi-Judicial Proceedings.

Quasi-judicial proceedings resolve intellectual property disputes before administrative tribunals and dispute resolution programs rather than in court. Within the USPTO, the Trademark Trial and Appeal Board decides disputes over trademark registration, and the Patent Trial and Appeal Board decides appeals and challenges concerning patents. These proceedings (alongside other nongovernmental proceedings) have their own rules and deadlines, and they can resolve questions of registrability, patentability, ownership, and ability to sell, oftentimes at a lower cost than federal litigation.

Trademark Trial and Appeal Board oppositions and cancellations

An opposition is a proceeding before the Trademark Trial and Appeal Board that challenges a trademark application after it is published and before it registers, and a cancellation is a proceeding that challenges a registration that has already issued. Either proceeding can be brought by a party that believes it would be harmed by the registration of a mark, such as the owner of a similar mark, and both are decided by a panel of administrative trademark judges.

Patent Trial and Appeal Board Inter Partes Review

Inter partes review is a trial proceeding before the Patent Trial and Appeal Board in which a challenger seeks to cancel one or more claims of an issued patent as anticipated or obvious in light of prior patents and printed publications. If review is instituted, the Board issues a final written decision on the patentability of the challenged claims.

Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings

The Uniform Domain-Name Dispute-Resolution Policy provides an administrative procedure for resolving disputes over domain names that conflict with trademarks. For example, the procedure may be used when a third party registers a domain name containing a trademark, or a misspelling of one, in order to sell it to the trademark owner, to redirect visitors to a competitor or to advertising, or to impersonate the owner through fraudulent emails or websites. Proceedings are decided on written submissions by independent panelists at providers such as the World Intellectual Property Organization, and the available remedies are transfer or cancellation of the domain name.

Amazon Patent Evaluation Express (APEX) program proceedings

The Amazon Patent Evaluation Express (APEX) program resolves claims that products listed on Amazon infringe a U.S. utility patent. A neutral patent attorney selected by Amazon evaluates, on written submissions and without discovery, whether the patent owner is likely to prove infringement of one patent claim, and each participating party pays a deposit to the evaluator. Listings of sellers who do not participate, or whose products are found likely to infringe, are removed from Amazon. An APEX evaluation can be considerably faster and less expensive than litigation, and its outcome affects only Amazon listings. These proceedings often arise when a patent owner wishes to remove a competing and infringing product from Amazon.

These proceedings can run alongside IP Litigation and arise from patent and trademark applications and registrations.

IP due diligence is the investigation of intellectual property in connection with a merger, acquisition, investment, or license. It confirms what a company owns, whether that ownership is clear, whether the rights are valid and enforceable, and what risks accompany them. The findings can inform the price, structure, what remedial actions might need to be taken before closing, and contract terms of a transaction, including its representations, warranties, and indemnities.

IP Due Diligence for Acquisitions is tailored to each transaction, but in general, Victor works on the following:

• Chain-of-title review
• Freedom-to-operate analysis
• Validity and enforceability assessments
• Infringement and noninfringement opinions
• License and encumbrance review

The agreements reviewed in due diligence are described under IP Agreements & Licensing.

General IP counseling addresses the intellectual property questions that can arise at any stage, from an initial idea to an established business. Founders, inventors, creators, individuals who are just getting started, and companies of all sizes can benefit from understanding what they own, what can be protected, and how the different forms of protection relate to one another.

IP audits

An IP audit is an inventory and review of a company's intellectual property, including its patents, trademarks, copyrights, trade secrets, domain names, and related agreements. An audit identifies assets that are not yet protected, ownership gaps, upcoming deadlines, and rights that are no longer needed, and it provides a clear picture of the portfolio for planning, financing, and transactions.

Portfolio strategy

Portfolio strategy is the planning of which inventions, brands, and works to protect, in which countries, and on what timeline, in light of a company's products, markets, competitors, and budget. A coordinated plan aligns intellectual property spending with business priorities and helps ensure that protection is in place in the markets that matter.

Invention disclosure programs

An invention disclosure program is an internal process through which employees, researchers, and even third parties report new inventions in writing. Disclosures create a record of what was invented, by whom, and when, which supports correct inventorship and allows inventions to be evaluated for protection before a public disclosure, product launch, or publication affects patent rights.

Brand strategy and naming

Trademark law recognizes a spectrum of distinctiveness. Invented and arbitrary names are the strongest and the easiest to register, suggestive names follow, and, sometimes, descriptive names need to show they have “acquired distinctiveness” to become registrable. Considering this spectrum when selecting a name, logo, or slogan can result in a brand that is easier to register and enforce.