Tag Archives: intellectual property

Staying Innovative as a One Man Operation

Lewis Roca Rothgerber honored for IP work

Lewis Roca Rothgerber LLP was recognized among the top intellectual property firms in Arizona and Nevada by Managing Intellectual Property in its 2014 IP Handbook. Six of the firm’s attorneys were also named to the list of 2014 “IP Stars,” including Jeffrey Albright (New Mexico), W. West Allen (Nevada), Flavia Campbell (Arizona), Frank Hiscox (California), Michael McCue (Nevada) and Jennifer Van Kirk (Arizona).

The 2014 IP Handbook editors note that Lewis Roca Rothgerber’s intellectual property group “has expertise across a full range of intellectual property and is particularly well thought of with respect to life sciences-related work, trademark and copyright matters and counseling clients on developing and protecting IP assets.”

Lewis Roca Rothgerber is highly recommended in Arizona and listed as a notable firm in Nevada, the only designation available in the state. Managing Intellectual Property’s IP Handbook is based on extensive research among IP practitioners carried out over six months. A team of researchers sought responses from thousands of practitioners by phone,
surveys, email and in face-to-face meetings. The survey also includes a list of “IP Stars” in each jurisdiction, as recommended and confirmed by their peers and clients in each respective jurisdiction.

Firms cannot vote for their own inclusion or solicit votes from associates; to be included at all, a firm must have received a large number of recommendations from peers and clients.

social.media

Jaburg Wilk Attorney to Present at Social Media Day

Jaburg Wilk attorney Laura Rogal will be presenting at the fourth annual Social Media Day Phoenix on June 28th from 6 p.m. to 10 p.m. at the Renaissance Phoenix Downtown Hotel.

Rogal will present the first seminar: “The Not-So-Fine Line of Social Media & Copyright Infringement.” In this presentation, she will discuss the potential legal issues associated with using content from public websites on one’s social platforms. She will share best practice suggestions for avoiding problems online associated with defamation, copyright infringement, trademark infringement, and brand protection. Rogal will give the attendees a forum to ask questions and will parlay real-world experience into scalable scenarios for all users of social media.

Rogal assists clients with their intellectual property legal needs including internet law, social media, domain disputes and commercial litigation.

Other speakers include Kevin Spidel, director of agency services at Voice Media Group as well as Allison Michaels of Yammer/Microsoft, Monique Shaldjian of QtheBrand and Jim Simmons with CDS Insurance Agency. Following the sessions, participants will network and socialize.

Social Media Day was created by social media giant Mashable in 2010 to celebrate the digital revolution, and has grown tremendously since its inception. Today, Social Media Day (#SMDay) has transformed into a worldwide celebration that is recognized by more than 100 countries, six continents and 17 U.S. cities.

Tickets are $25 and can be reserved at SMDayPHX.eventbrite.com. Space is limited.

IP

Lewis Roca Rothgerber's IP Team earns No. 1 ranking

Lewis Roca Rothgerber’s Intellectual Property Group received more mentions by Fortune 500 companies for IP litigation than any other firm in the United States, according to Corporate Counsel Magazine’s 2013 survey, “Who Represents America’s Biggest Companies.”  The survey also recognized the firm’s patent prosecution practice.

Michael McCue, Co-Practice Group Leader of the firm’s Intellectual Property practice, said, “The survey is a testament to our practical, cost-effective representation.”  “We are focused on client service and value, not billable hours and maximizing our own profits to the detriment of our clients.”  The firm’s IP practice has been built by hiring laterals from top firms and offering flexible and creative pricing customized to clients’ needs.  The firm’s IP group serves clients across the U.S. from offices in Silicon Valley, Phoenix, Las Vegas, Denver and Tucson.

IP

Lewis Roca Rothgerber’s IP Team earns No. 1 ranking

Lewis Roca Rothgerber’s Intellectual Property Group received more mentions by Fortune 500 companies for IP litigation than any other firm in the United States, according to Corporate Counsel Magazine’s 2013 survey, “Who Represents America’s Biggest Companies.”  The survey also recognized the firm’s patent prosecution practice.

Michael McCue, Co-Practice Group Leader of the firm’s Intellectual Property practice, said, “The survey is a testament to our practical, cost-effective representation.”  “We are focused on client service and value, not billable hours and maximizing our own profits to the detriment of our clients.”  The firm’s IP practice has been built by hiring laterals from top firms and offering flexible and creative pricing customized to clients’ needs.  The firm’s IP group serves clients across the U.S. from offices in Silicon Valley, Phoenix, Las Vegas, Denver and Tucson.

Sanders & Parks attorneys honored

Sanders & Parks, P.C., an AV-rated boutique firm that prides itself on its expertise and results, announced that 11 of its attorneys have been named 2013 Southwest Super Lawyers or Rising Stars.

Sanders & Parks’ Super Lawyers are Robert Bruno, Winn Sammons, Mark Worischeck, Garrick Gallagher, Robin Burgess and Brett Hager.

Sanders & Parks’ Rising Stars are Jeffrey Smith, Arthur Eaves, Mandi Karvis, Jasmina Richter and Shanks Leonhardt.

Sanders & Parks specializes in complex legal problems in civil, business and insurance litigation, as well as in the areas of medical malpractice defense, aviation law and intellectual property and licensing. Sanders & Parks handles litigation and major transactions for clients both locally and nationwide.

Sanders & Parks attorneys honored

Sanders & Parks, P.C., an AV-rated boutique firm that prides itself on its expertise and results, announced that 11 of its attorneys have been named 2013 Southwest Super Lawyers or Rising Stars.

Sanders & Parks’ Super Lawyers are Robert Bruno, Winn Sammons, Mark Worischeck, Garrick Gallagher, Robin Burgess and Brett Hager.

Sanders & Parks’ Rising Stars are Jeffrey Smith, Arthur Eaves, Mandi Karvis, Jasmina Richter and Shanks Leonhardt.

Sanders & Parks specializes in complex legal problems in civil, business and insurance litigation, as well as in the areas of medical malpractice defense, aviation law and intellectual property and licensing. Sanders & Parks handles litigation and major transactions for clients both locally and nationwide.

skd258400sdc

Greenberg Traurig among 'Best Corporate Law Firms’

The international law firm Greenberg Traurig, LLP, with more than 50 Arizona-based attorneys, has been named one of America’s Best Corporate Law Firms by Corporate Board Member, an NYSE Euronext company, and global business advisory firm FTI Consulting, Inc. in their annual survey of directors and general counsel of publicly-traded companies. The award was presented Tuesday as part of Corporate Board Member’s 6th Annual Legal Recognition Dinner in New York.

“We are very grateful for this honor,” said John Cummerford, a co-managing shareholder in Greenberg Traurig’s Phoenix office. “This is especially noteworthy since this recognition comes from our peers in the industry – general counsel of public companies – and reflects the respect our firm has earned worldwide.”

Each year, Corporate Board Member and FTI Consulting team up to conduct research to reveal those law firms that directors and general counsels believe to be the most respected legal counsel nationwide. This year, Greenberg Traurig is included on the 2013 Top 25 National Law Firm General Counsel’s Rankings list.

Greenberg Traurig attorneys represent both public and privately-held clients in a wide range of industries and in transactions including mergers and acquisitions, private equity transactions, public and private offerings of securities, as well as litigation, real estate, intellectual property, tax and other matters.

skd258400sdc

Greenberg Traurig among ‘Best Corporate Law Firms’

The international law firm Greenberg Traurig, LLP, with more than 50 Arizona-based attorneys, has been named one of America’s Best Corporate Law Firms by Corporate Board Member, an NYSE Euronext company, and global business advisory firm FTI Consulting, Inc. in their annual survey of directors and general counsel of publicly-traded companies. The award was presented Tuesday as part of Corporate Board Member’s 6th Annual Legal Recognition Dinner in New York.

“We are very grateful for this honor,” said John Cummerford, a co-managing shareholder in Greenberg Traurig’s Phoenix office. “This is especially noteworthy since this recognition comes from our peers in the industry – general counsel of public companies – and reflects the respect our firm has earned worldwide.”

Each year, Corporate Board Member and FTI Consulting team up to conduct research to reveal those law firms that directors and general counsels believe to be the most respected legal counsel nationwide. This year, Greenberg Traurig is included on the 2013 Top 25 National Law Firm General Counsel’s Rankings list.

Greenberg Traurig attorneys represent both public and privately-held clients in a wide range of industries and in transactions including mergers and acquisitions, private equity transactions, public and private offerings of securities, as well as litigation, real estate, intellectual property, tax and other matters.

Benjamin Tietgen

Tietgen Joins Quarles & Brady’s IP Group

The national law firm of Quarles & Brady LLP announced that Benjamin D. Tietgen has joined the firm’s Phoenix office as an attorney in the Intellectual Property Group.

Prior to joining the firm, Tietgen worked at Etherton Law Group, LLC in Tempe, Arizona. His practice focuses on the preparation of patent applications covering inventions in a variety of industrial and technological fields. Tietgen’s experience also includes drafting and negotiating IP asset licenses and assignments and developing IP portfolios for independent inventors and emerging companies across a broad range of high and low technologies.

He received his law degree from Arizona State University College of Law and his undergraduate degree from the University of Missouri.

Benjamin Tietgen

Tietgen Joins Quarles & Brady's IP Group

The national law firm of Quarles & Brady LLP announced that Benjamin D. Tietgen has joined the firm’s Phoenix office as an attorney in the Intellectual Property Group.

Prior to joining the firm, Tietgen worked at Etherton Law Group, LLC in Tempe, Arizona. His practice focuses on the preparation of patent applications covering inventions in a variety of industrial and technological fields. Tietgen’s experience also includes drafting and negotiating IP asset licenses and assignments and developing IP portfolios for independent inventors and emerging companies across a broad range of high and low technologies.

He received his law degree from Arizona State University College of Law and his undergraduate degree from the University of Missouri.

Pamela Overton Risoleo

31 Phoenix Greenberg Traurig attorneys earn honors

The international law firm Greenberg Traurig, LLP with 50 Arizona-based attorneys, has 22 attorneys on the 2013 Southwest Super Lawyers list, an independent rating service of outstanding lawyers from more than 70 practice areas. In addition, the publication also named nine Greenberg Traurig attorneys as Southwest Rising Stars.

“We are extremely proud of this independent recognition by Super Lawyers,” said John E. Cummerford, a co-managing shareholder in Greenberg Traurig’s Phoenix office. “The professionals included on this list are exceptional and truly deserving of this honor. I’m proud of the strength and local roots of our Phoenix office which is supported by our firm’s national resources and global reach.”

Super Lawyers, a Thomson Reuters organization, is a research-driven, peer-influenced rating service of lawyers who have attained a high degree of peer recognition and professional achievement. The mission of Super Lawyers is to bring visibility to those attorneys who exhibit excellence in practice.

Six Greenberg Traurig attorneys were also recognized on the “Top 50 Southwest Super Lawyers” list. They are: Brian H. Blaney, Rebecca L. Burnham, Robert S. Kant, Jeffrey H. Verbin, E. Jeffrey Walsh and Quinn P. Williams.

Three Greenberg Traurig attorneys were included in the Super Lawyers “Top 25 Arizona Women” list. They are: Rebecca Lynne Burnham, Stacey F. Gottlieb and Pamela Overton Risoleo.

More than 60 percent of the attorneys in Greenberg Traurig’s Phoenix office are included in the 2013 ranking. The attorneys named Southwest Super Lawyers include: Gil Rudolph, Jeffrey H. Verbin (Banking), David D. Cleary (Bankruptcy), Brian H. Blaney, Robert S. Kant, Bruce E. Macdonough, Quinn Williams (Corporate/Securities), Michelle De Blasi (Environmental), John E. Cummerford, Jerry Fellows, Frank G. Long (Intellectual Property), Laurent R. G. Badoux (Labor and Employment), Nicole M. Goodwin, Stacey F. Gottlieb, Pamela Overton Risoleo, Brian J. Schulman, Peter W. Sorensen, E. Jeffrey Walsh (Litigation), Rebecca Lynne Burnham, Kevin J. Morris, David M. Paltzik and Lesa J. Storey (Real Estate). Southwest Rising Stars include: Greenberg Traurig attorneys Michael L. Aguirre, Logan V. Miller, Katherine A. Swenson and Jeremy D. Zangara (Corporate/Securities), Kimberly A. Warshawsky (Intellectual Property), Dana L. Hooper, Nathan T. Mitchler, Laura Sixkiller and Tracy L. Weiss (Litigation.)

The selection process is multi-phased and includes independent research, peer nominations and peer evaluations. Super Lawyers Magazine features the list and profiles of selected attorneys and is distributed to attorneys in the state or region and the ABA-accredited law school libraries. Super Lawyers is also published as a special section in leading city and regional magazines across the country. In the United States, Super Lawyers Magazine is published in all 50 states and Washington, D.C., reaching more than 13 million readers.

Christian Stahl

Stahl Joins Quarles & Brady’s IP Group

The national law firm of Quarles & Brady LLP announced that Christian G. Stahl has joined the firm’s Phoenix office as an associate in the Intellectual Property Group.

Stahl represents clients in many aspects of intellectual property enforcement and litigation (patents, copyrights, trade secrets, trademarks, trade dress, unfair competition and false advertising), including cease and desist actions, fact and expert discovery, motion practice, claim construction, inter partes proceedings before the Trademark Trial and Appeal Board, domain disputes, and UDRP proceedings. He also advises and assists clients on the acquisition, protection and exploitation of their intellectual property in brand licensing and market collateral.

He earned his law degree from Chicago-Kent College of Law and his undergraduate degree from Vanderbilt University.

Christian Stahl

Stahl Joins Quarles & Brady’s IP Group

The national law firm of Quarles & Brady LLP announced that Christian G. Stahl has joined the firm’s Phoenix office as an associate in the Intellectual Property Group.

Stahl represents clients in many aspects of intellectual property enforcement and litigation (patents, copyrights, trade secrets, trademarks, trade dress, unfair competition and false advertising), including cease and desist actions, fact and expert discovery, motion practice, claim construction, inter partes proceedings before the Trademark Trial and Appeal Board, domain disputes, and UDRP proceedings. He also advises and assists clients on the acquisition, protection and exploitation of their intellectual property in brand licensing and market collateral.

He earned his law degree from Chicago-Kent College of Law and his undergraduate degree from Vanderbilt University.

Frank Long

Greenberg Traurig Attorney will Teach Trademarks Law at ASU

Frank G. Long, an Of Counsel in the Phoenix office of international law firm Greenberg Traurig, LLP, will serve as a Faculty Associate at the Arizona State University Sandra Day O’Connor College of Law, where he will return to teach the course in Trademarks and Unfair Competition Law.

The course curriculum focuses on the specific principles and practice of protecting trade identity under U.S. trademark and unfair competition laws. Long, who works on transactions and litigation involving intellectual property rights law and e-commerce, enjoys the opportunity to share his gained knowledge with students as they are beginning their legal careers.

“Greenberg Traurig encourages its attorneys to become involved in the community, and we are proud that Frank has consistently directed his experience and legal skills towards educating Arizona’s future lawyers,” said John Cummerford, Co-Managing Shareholder of Greenberg Traurig’s Phoenix office.

Long, Of Counsel in the firm’s Intellectual Property & Technology group, is an active member of the legal and civic community in Phoenix. He advises clients in matters related to trademarks, trade dress, false advertising, copyright, cybersquatting and trade secrets. Long assists clients with the development of strategies for the protection of intellectual property rights and trademarks. He has a wide range of experience in the management of worldwide intellectual property rights, as well as transactions involving merchandising and licensing agreements for intellectual property rights and transfers of patents, trademarks, copyrights, trade secrets and domain names. In addition to his law practice, Long serves as Vice President of the Arizona State Parks Foundation, where he is a charter member of the Board of Directors.

gavel

Arizona’s Top Lawyers – 2012 Healthcare – Intellectual Property

Arizona Business Magazine used its own research, solicited input from legal experts, and referenced professional ratings and rankings to determine the legal professionals who made the 2012 Top Lawyers list.


[stextbox id="grey"]

Categories

BankingHealthcare
Business/Corporate LawIntellectual Property
Construction LitigationMergers and Acquisitions
Employment/Labor
Relations
Real Estate
Environmental LawSecurities and Corporate Finance
Estate and Trust LitigationTax

[/stextbox]


HEALTHCARE

Charles L. Arnold ◆ Frazer Ryan Goldberg & Arnold LLP
602-277-2010 ◆ frgalaw.com
Arnold specializes in mental health and elder law, serving the developmentally disabled, the mentally ill, and the elderly.

Susan D. Brienza ◆ Ryley Carlock & Applewhite, P.C.
602-440-4885 ◆ rcalaw.com
Brienza is especially involved in issues concerning herbal products for women, and in biotechnology and nanotechnology issues.

Richard B. Burnham ◆ Gammage & Burnham PLC
602-256-0566 ◆ gblaw.com
Burnham has developed an extensive commercial litigation, administrative law and legislative practice which has evolved to emphasize health care reimbursement matters.

Frederick M. Cummings ◆ Jennings Strouss
602-262-5903 ◆ jsslaw.com
Cummings has extensive trial experience in the areas of health care, medical malpractice and medical products liability defense litigation.

Richard Davis ◆ Mesch Clark & Rothschild PC
520-624-8886 ◆ mcrazlaw.com
Davis’ practice areas include healthcare and cases that involve products liability, condemnation matters and medical malpractice.

Bill Drury ◆ Renaud Cook Drury Mesaros, PA
602-307-9900 ◆ rcdmlaw.com
Drury has a strong track record of success in defending medical malpractice and negligence claims, regulatory claims and administrative claims.

Barry D. Halpern ◆ Snell & Wilmer L.L.P.
602-382-6345 ◆ swlaw.com
Halpern’s practice is focused in business and health care matters.

Roger N. Morris ◆ Quarles & Brady LLP
602-229-5200 ◆ quarles.com
Morris is chairman of Quarles & Brady’s Health & Life Sciences Industry Group.

Lawrence J. Rosenfeld ◆ Greenberg Traurig
602-445-8502 ◆ gtlaw.com
Rosenfeld has more than 35 years of experience in the areas of health law and administrative law.

Beth J. Schermer ◆ Coppersmith Schermer & Brockelman PLC
602-381-5462 ◆ csblaw.com
Schermer’s legal practice concentrates in health care transactions, regulation, and operations.


INTELLECTUAL PROPERTY

Karin Scherner Aldama ◆ Perkins Coie LLP
602-351-8270 ◆ perkinscoie.com
Aldama focuses her practice on commercial and appellate litigation, with particular emphasis on complex commercial cases and issues relating to intellectual property protection, privilege law, choice-of-law, and cross-border litigation.

Glenn S. Bacal ◆ Bacal Law Group PC
480-245-6233 ◆ ipdepartment.net
Bacal Law Group focuses on intellectual property, including litigation, administration, trademarks, copyrights, trade secrets, noncompetes, rights of publicity, and appellate advocacy.

George C. Chen ◆ Bryan Cave LLP
602-364-7367 ◆ bryancave.com
Chen’s practice includes litigation, licensing, counseling, and prosecution of patent, trademark, copyright, trade secret, unfair competition, Internet, cybersquatting, and other intellectual property matters.

Bruce Converse ◆ Steptoe & Johnson
480-257-5274 ◆ steptoe.com
Converse is a member of the Litigation Department and Intellectual Property group. He has a broad range of experience in commercial litigation at both trial and appellate levels.

John E. Cummerford ◆ Greenberg Traurig, LLP
602-445-8377 ◆ gtlaw.com
Cummerford’s practice focuses on the legal and business needs of established and emerging growth companies, with particular emphasis on software, Internet, hardware and related businesses.

R. Lee Fraley ◆ Snell & Wilmer L.L.P.
602-382-6250 ◆ swlaw.com
Fraley offers clients a unique blend of intellectual property counseling, IP rights enforcement and defense, as well as aggressive negotiation of IP-related transactions and acquisitions.

Robert J. Itri ◆ Gallagher & Kennedy, P.A.
602-530-8019 ◆ gknet.com
Itri focuses on intellectual property and securities related litigation, arbitration and enforcement proceedings, contract, trade secret, business tort and shareholder litigation.

Ron Kisicki ◆ Woods Oviatt Gilman LLP
480-659-2213 ◆ woodsoviattgilman.com
Kisicki is admitted to practice before the U.S. Patent Office, and concentrates his practice in intellectual property law.

Peter Kozinets ◆ Steptoe & Johnson
480-257-5250 ◆ steptoe.com
Kozinets concentrates his practice on complex litigation, with particular focus on media and constitutional law, intellectual property litigation and commercial disputes.

Brian W. LaCorte ◆ Ballard Spahr LLP
602-798-5449 ◆ ballardspahr.com
LaCorte’s practice is focused on patent, trademark, and copyright litigation as well as IP transactional work.

Albert L. Schmeiser ◆ Schmeiser, Olsen & Watts
480-655-0073 ◆ iplawusa.com
Experienced in all areas of intellectual property protection, transfer and enforcement, including preparation of patent applications and prosecuting same, patent appeals and interferences.

Maria Crimi Speth ◆ Jaburg & Wilk P.C.
602-248-1000 ◆ jaburgwilk.com
Speth assists clients in protecting their intellectual property through preventative measures to avoid disputes, and taking aggressive measures when disputes arise.

Arizona Business Magazine has used its best efforts in assembling material for this list, but does not warrant that the information contained herein is a complete or exhaustive list of the top lawyers in Arizona, and hereby disclaims any liability to any person for any loss or damage caused by errors or omissions herein.

Arizona Business Magazine March/April 2012

Protecting Intellectual Property - AZ Business Magazine November/December 2011

Planning And Patience: Keys To Protecting Intellectual Property

Planning and patience are they keys to protecting intellectual property

The seed for one of Tim Crawley’s inventions was planted in a teenage promise.

“When I was 16, I was (gold) prospecting with my uncle, who had rheumatoid arthritis,” says Crawley, president of the Inventors Association of Arizona. “It tore my heart out to watch him struggle to carry those five-gallon buckets. I told him, ‘Someday, I will fix that.’”

Crawley’s “someday” came more than 20 years later when he invented Snappy Grip, a replacement handle for five-gallon buckets that alleviates hand fatigue and makes it infinitely easier to carry them, particularly when they are filled. The product has been embraced by Arizona’s mining industry.

One problem: Crawley’s idea was also embraced by a competitor.

“Even though I filed my patent application first,” Crawley says, “he got his bucket handle into Home Depot first.”

The mistake Crawley made, he admits, was that the claims listed in his patent application were too wordy and allowed his competitor to make a slight adjustment to the design and beat Crawley into the marketplace. Experts say Crawley’s error is just one of many common mistakes individuals and businesses make when it comes time to protect their intellectual property.

”Intellectual Property refers to creations of the mind,” says Robert J. Itri, a shareholder at the Phoenix law office of Gallagher & Kennedy. “Intellectual property includes inventions such as computer chips or new methods of manufacture; literary and artistic works such as novels, films and songs; symbols, names and images used to identify goods and services such as Xerox and Kodak.”

When it comes to protecting those superhuman ideas, experts agree that it’s a decidedly human trait that gets most innovators into trouble.

“They let the genie out of the bottle,” says Ari Bai, whose practice at the Phoenix law firm of Polsinelli Shughart involves the preparation and filing of foreign and domestic patent applications in the mechanical, electrical and computer disciplines. “People disclose their ideas to others. Professors rush to publish findings before their colleagues. It happens all the time. What people don’t understand is that once that occurs, they are giving up all their foreign patent rights.”

According to Itri, these are the most common mistakes innovators make:

  • Failing to establish an intellectual property protection policy.
  • Failing to identify and record intellectual property as it is created.
  • Failing to ensure that all employees who contributed to the intellectual property have executed invention assignments.
  • Failing to use non-disclosure agreements and document trade secret policy for employees and business partners.
  • Waiting too long to file for patent protection. U.S. law provides that a patent application must be filed within 1 year of publication or first offer of sale.
  • Failing to police the unauthorized use of intellectual property. The failure to do so can, and often does, result in the loss of intellectual property rights.

 

“There’s a big problem in the private sector because companies are pushed to constantly get new products on the market to remain competitive,” says A.J. Moss, an intellectual property attorney with Squire, Sanders & Dempsey in Phoenix. “But if these companies wait too long to protect themselves and their ideas, it wipes out all rights they have to their own ideas and inventions.”

There are four categories of intellectual property rights — patents, trademarks, copyrights and trade secrets. Gallagher & Kennedy’s Itri explains the rights that protect those intellectual properties like this: They are a form of property right that allow creators of intellectual property to benefit from their work or investment in a creation. These rights, which can belong to individuals or organizations, are recognized by governments and courts. The intellectual property rights system helps to strike a balance between the interests of the innovator and the public interest to establish an environment in which creativity and invention can flourish for all to benefit.

But what U.S. intellectual property rights don’t do, experts said, is protect the creator in the global economy.

“Just because you have a U.S. patent, that doesn’t protect you overseas,” Moss says. “You have to file for patent protection in every jurisdiction you plan to do business. If you don’t, you leave yourself vulnerable.”

And as the Internet has changed the way we do business, it has presented businesses with both opportunities and obstacles.

“Geographical borders present no impediment to distributing products worldwide,” Itri says. “These opportunities also present enormous challenges to businesses seeking to protect their intellectual property rights and to consumers as the proliferation of counterfeit and pirated products grows.”

It also presents a challenge when companies develop websites to boost revenue.
“Just as a wedding photographer owns the copyrights to the photos taken at your wedding, the website developer who designs your website owns the rights to that design,” says John E. Cummerford, co-managing shareholder at Greenberg Traurig in Phoenix. “So if the developer suddenly thinks he wasn’t paid enough to do the job, you could have a problem if you didn’t protect yourself.”

To avoid those problem, experts agree, a business is best served by consulting a legal professional who has experience in obtaining and enforcing intellectual property rights in the jurisdiction in which protection is sought.

“I tell other inventors to research the patent attorney they hire,” says Crawley, who has faced costly patent infringement issues on at least three of his inventions. “Make sure they have experience writing patent claims for ideas or inventions that are similar the one you have.”

If the worst case scenario happens and unauthorized use of intellectual property is detected, Itri said the property owner should consult an attorney to determine his or her legal rights. In the U.S., patent, trademark and copyrights are typically enforced through federal civil court actions. Claims for trade secret misappropriation are generally pursued through state court proceedings. Generally, an intellectual property owner may obtain both injunctive relief prohibiting and money damages for the infringing activity. In certain circumstances, the law permits enhanced or punitive damages for willful infringement.  If unauthorized use is detected abroad, the property owner should consult with a legal professional in the jurisdiction in which the unauthorized use is being made to determine its rights and the process to enforce those rights.

“The best way you can protect yourself and your ideas is to plan up front,” Cummerford says. “You can have the best ideas, the best business plan, the best website, the best marketing strategy, and the best product in the world, but it will all be for naught if you fail to protect your intellectual property.”

Four categories of intellectual property rights

Patents

An exclusive right granted by the United States Government through the Unites States Patent and Trademark Office for a new, useful and non-obvious invention or process. The grant of patent rights excludes others from making, using, selling, offering to sell or importing the invention in the United States. U.S. patent rights do not extend beyond the United States and its territories.

How get a patent

An inventor seeking a patent must submit a patent application to the USPTO within one year of the first publication or offer for sale of the invention. A patent application consists of a written specification, a drawing — if necessary — to understand the invention or process, an oath or declaration of the inventor, and the appropriate filing fees. A patent may, and often does, take several years to issue.  Patents are valid for 20 years from the date of application.

Trademarks

Trademarks are what businesses use to identify themselves and distinguish their goods and services from those of other businesses.  Any distinctive word, name, symbol, or device or combination thereof may be used as a trademark.

Protecting a trademark

Under the common law, the rights to a trademark are established when the business adopts a particular mark and uses it in connection with the sale of goods or services.  The date of first use is important in establishing trademark rights. Although enforceable trademark rights can be obtained at common law, there are certain advantages to obtaining a federal registration for the mark, including nationwide notice of a claim of right to the mark, the right to use the ® symbol, and — most importantly — the exclusive right to use the mark nationwide in connection with the listed goods and services. A trademark owner seeking a federal registration must file an application with the USPTO.

Generally, provided that the trademark owner makes continuous use of the mark and does not permit unauthorized use of the mark by others, trademark rights can be indefinite.

Copyrights

Copyrights give authors, artists and creators of original works, which are “fixed” in any tangible medium of expression, such as in print, audio or digital recording, the exclusive right to reproduce, adapt, distribute, perform, make derivative works and display their work.

Getting a copyright

Registering a copyright is a simple and inexpensive process.  An application form together with one or two copies of the work (depending on the character of the work) are filed either in paper or online with the United States Copyright Office together with the applicable filing fee. The filing fee for online registration is $35.

Trade Secrets

Trade secrets may generally be described as proprietary, non-public business information which enables the owner of the information through its use to achieve competitive advantage in the marketplace.  One of the most famous trade secrets is the formula for manufacturing Coca-Cola.

Protecting trade secrets

The most important factor in determining whether something is protectable as a trade secret is whether it is actually a secret and the business has taken reasonable measures to maintain its secrecy. Arizona law, like all other states’ laws governing “trade secrets,” permits the trade secret owner to obtain both injunctive relief and monetary damages for any actual or threatened misappropriation of trade secret. Trade secret law does not prevent the use of trade secrets acquired through proper means. Nor does trade secret law prevent discovery of the trade secret through reverse engineering.

Protecting intellectual property

To best protect its intellectual property rights, Robert J. Itri, a shareholder at the Phoenix law officer of Gallagher & Kennedy, says it is essential for the business to understand the various pieces that make up its intellectual property portfolio and which set of intellectual property rights — patent, trademark, copyright or trade secret — apply. Once identified, the intellectual property should be recorded and, with the exception of trade secrets (which should be closely guarded), registered with the appropriate governmental agency.

  • In the case of patents and trademarks, registration is with the United States Patent and Trademark Office.
  • In the case of copyrights, registration is with the U.S. Copyright office.
  • Trademark owners who have registered their marks with the USPTO and copyright holders who have registered with the Copyright Office may record these rights with the U.S. Customs and Border Protection (“CBP”). The CBP actively monitors imports to prevent the importation of counterfeited and pirated goods.
  • Any business which anticipates that its products or services will be distributed outside the U.S., should register its intellectual property in the country or countries it anticipates the product or services will be distributed.
  • In addition to registration, businesses also need to implement an intellectual property policy. Components of such a policy should include, at a minimum, employee invention and nondisclosure agreements. Intellectual Property protection language should also be developed for the various vendors and distributors with which the business deals.

 

 

 

 


Arizona Business Magazine November/December 2011