Patents

Patents – Masters of Invention

Patents provide a significant competitive edge, but only if they are properly protected. Our experienced patent attorneys help patent owners reduce the risk of infringement, while leveraging opportunities to exploit their patent rights. 

Our firm works with inventors and businesses of all sizes to develop, protect, and monetize their patent portfolios. We strive to meet our clients’ business objectives through cost-effective strategies that maximize the return on investment. Our comprehensive patent services include:

• Patent Prosecution: Our patent attorneys assist clients in securing and managing patent rights for their inventions and designs both domestically and internationally. We file and fully prosecute non-provisional and provisional patents with the United States Patent and Trademark Office (USPTO), as well as international patent offices.
• Patent Consulting: We advise clients on patent clearance issues by performing patent searches and providing freedom-to-market reports. We also provide guidance on how patent rights may impact business transactions, such as joint ventures, recapitalizations, mergers, and acquisitions.
• Patent Enforcement: In addition to devising robust patent enforcement strategies, we enforce and defend our clients’ patent rights in federal district courts, in arbitration forums, and before the USPTO’s Patent Trial and Appeal Board. 
• Portfolio Management: We assist clients in developing a patent portfolio strategy that protects their inventions and generates the most value for their business. We also help patent owners monitor and manage their patent portfolios both at home and abroad. 
• Patent Agreements: We help patent owners exploit their assets by negotiating, drafting, filing, and recording patent license and assignment agreements.

Our Patent Attorneys in Action

Our patent team has filed, prosecuted, and obtained numerous patents in the U.S. and abroad on behalf of a wide array of clients ranging from individual inventors to large-scale corporations. Below are several representative patents:

• Stringed Instrument Pickup and Feedback System – (Patent No.: US 11,308,929 B2) – April 19, 2022
• Tuning Machine Backplate – (Patent No.: US D916,953 S) – April 20, 2021
• Tuning Machine Backplate – (Patent No.: US D915,502 S) – April 6, 2021
• Tote bag – (Patent No.: US 10,925,365 B2) – February 23, 2021
• Vest With Integrated Sensory System – (Patent No.: US D890,937 S) – July 21,2020
• System and Method for Generating and Monitoring Feedback of a Published Webpage as Implemented on a Remote Client – (Patent No.: US 10,542,123 B2) – January 21, 2020

Scarinci Hollenbeck’s Intellectual Property group and trademark attorneys provide clients with patent availability searches and “freedom to operate” reports. We also file and fully prosecute non-provisional and provisional patents with the United States Patent and Trademark Office.

We also identify opportunities for our clients to add to their intellectual property portfolio through active participation in their creative processes, and assist clients in addressing third-party patent issues that may pose obstacles to commercialization activities, through clearance studies and associated counseling and opinion work.

The firm represents clients in industries such as software, battery and energy technology, nutritional supplements, mechanical devices, and electronics. We have represented both plaintiffs and defendants in trademark, copyright and patent infringement actions, trade secret disputes, contract breaches and general business litigation clients in Federal and State Courts across the country, as well as in the Trademark Trial and Appeal Board and Patent Trial and Appeal Board. We have obtained nationally recognized precedential verdicts and decisions for our clients, as well as achieved favorable settlements.

Scarinci Hollenbeck’s IP Defense Practice Group

Litigation – Mediation – Negotiation

Many cases of intellectual property infringement require the holders of intellectual property rights to assert those rights.

IP Enforcement & Defense Considerations

When clients approach the firm due to an alleged infringement of their IP rights, a review of the case, the actual financial costs of the infringement, and the success of launching a challenge are all weighed and considered in order to identify an optimum IP enforcement strategy. In advising clients about the best IP enforcement and defense strategies, Scarinci Hollenbeck considers many factors, including:

• Monetary damages
• Injunctions
• Valuation of the market
• Costs of litigation
• Need for extensive discovery
• Need for expert witnesses
• Complexity
• Exposure & Risk
• Business Concerns

The use of similar trademarks or IP owned by a party which leads to confusion can be grounds for infringement. The production of derivative works in copyright cases can constitute infringement. Regardless of how an IP enforcement or defense case arises, the firm tailors the enforcement strategy for each client’s specific case.

Since IP enforcement is governed by national and international tribunals and agreements, the firm’s IP colleagues around the world assert client interests in all relevant markets. Investing in resources to serve clients’ needs, the firm receives around-the-clock information about clients’ trademark, copyright, and patent rights across the globe.

Drafting Intellectual Property License Agreements

Businesses in many sectors depend on the ability to grant or receive licenses in the course of their business. We represent clients seeking to obtain or grant licenses in New York City, across the United States, and around the world. The firm’s team negotiates and tailors agreements in accordance with clients’ needs, including software development agreements, patent, trademark, and copyright licenses, confidentiality agreements, software licensing agreements, and distribution agreements.

In all of these cases, the objective is to ensure that the intellectual property rights of the original owners are protected while giving licensees adequate use of the rights. Additionally, the global nature of the firm’s IP practice ensures that clients interested in dividing license grants on the basis of geographic territories can leverage the firm’s network of IP attorneys around the world. The firm assists clients in granting or obtaining licenses for:

• Patents
• Copyrights
• Trademarks
• Trade secrets

Domain Names & The Internet

The importance of domain names in representing brands and companies has led to an emerging intellectual property practice area specific to securing and asserting clients’ intellectual property rights which intersect with domain names, copyrights, the Internet, and more. Scarinci Hollenbeck assists clients in New York City, throughout the U.S., and around the world to claim, purchase, and negotiate the transfer of domain names which correspond to or are related to services, trademarks, and copyrights owned by clients.

Scarinci Hollenbeck’s Domain Name Dispute Resolution

Strategic Domain Name Representation

There are several resolutions to client issues involving domain names. For instance, Scarinci Hollenbeck assists clients in purchasing domain names from domain owners. When domain owners cannot be identified or refuse the sale, the firm pursues arbitration in appropriate tribunals. The use of tribunals and arbitration is weighed against the cost of the process and the likelihood of success in forcing a transfer of the domain name.

Defining Your Business On The Internet

IP protection online requires robust Terms of Use, Privacy Policies, guidelines, clear notices of ownership, and other terms and conditions in order to ensure that users are placed on notice as to what information on the site is proprietary and the rules governing the use for a site. By drafting these documents, Scarinci Hollenbeck places clients in a clear position in regard to terms.

Trade Secrets

We help our clients protect information that is difficult to protect. The firm’s clients have valuable assets in the form of ideas, formulas, specific processes or a method that allows them to excel in business. We have helped clients seeking to protect trade secrets, advising on legal mechanisms to protect such information.

Trade secrets can broadly be defined as information that is known only to a business that provides value to the enterprise. Additionally, trade secrets that become public knowledge lose their protected status. As such, trade secrets require extensive IP experience and discipline to minimize potential exposure risks.

Drafting Robust Legal Documents To Protect Trade Secrets

Clients need systems and plans for sharing trade secrets with employees and contractors without compromising their legal protections. By drafting robust non-compete, nondisclosure, confidentiality, and employee agreements, Scarinci Hollenbeck is able to ensure that clients can continue to do business without compromising the company’s trade secret protections.

Unfair Competition

Unfair competition is deceptive or wrongful business conduct that causes an economic injury to another business. The firm’s IP lawyers have extensive experience addressing concerns of clients facing unfair competition from businesses operating under deceptive terms.

Scarinci Hollenbeck’s Unfair Competition