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Patent Law

Patent Attorneys in Long Island, NY

New York’s Best Patent Attorney! In 1787, our founding fathers stated in our constitution “The Congress shall have Power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” Today, the America Invents Act (AIA) has drastically influenced the patent landscape in multiple facets. Prior, the first to invent, was the only party entitled for patent protection. Such amendments create significant hurdles for business, inventors, and entrepreneurs that necessitate the strategic guidance and advice of seasoned patent attorneys. We are an intellectual property firm serving clients throughout Long Island, New York, New Jersey, Connecticut and the US. Our legal team advises clients on both patent applications with the U.S.

Patent and Trademark Office (USPTO) and registering international patents under Patent Cooperation Treaty (PCT). We are highly experienced in all phases of patent prosecution — prior art and clearance searches, drafting patent applications, and preparing amendments and responses to Office Actions. We have a well-earned reputation for fostering ingenuity and always putting the best interests of our clients first. Product clearance before pursuing a patent, it is often crucial to conduct a thorough analysis of existing patents and products. Our attorneys conduct product clearance searches of relevant patent claims to avoid the risk of infringement. When a more extensive analysis is required, we also conduct freedom to operate (FTO) searches to evaluate in-force patents, expired patents and other relevant information in the public domain.

An FTO can provide safe harbor for a product in the US and also ascertain whether it is protected in other jurisdictions throughout the world. Finally, we conduct due diligence, patent validity and infringement analysis to prepare patent opinions. Patent Preparation And Prosecution. Our patent prosecution professionals hail from a wide range of technological fields, including mechanical, electrical, computer hardware and software, chemical, biotechnological, food chemistry, and design. We bring to bear significant legal knowledge and technical proficiency to help our clients protect their innovations. We are keenly aware that the way in which claims are structured is crucial for the approval of a patent application.

We advise clients throughout the patent preparation process and works diligently to identify the inventive concept. We model patents for each technological advance and draft applications with the broadest possible claims. Because our attorneys have industry, science and research backgrounds, we are able to build relationships with our clients throughout the application process. We also work closely with examiners at the USPTO to expedite patent prosecution. Post-Grant Proceedings Currently, patents can be challenged through a variety of post-grant examination proceedings before the Patent Trial and Appeal Board (PTAB). A Post Grant Review (PGR), for example, is designed to evaluate the patentability of one or more claims in a patent.

Moreover, a new proceeding that is commonly pursued in lieu of litigation is the Inter Partes Review (IPR) — designed to invalidate a patent based on its obviousness or lack of novelty. We are highly experienced in these post-grant proceedings as well as covered business method review (CBM). We also anticipate the potential patent challenges during the drafting and prosecution phases to minimize the risk of a post-grant challenge. Our thorough understanding of these proceedings can either be used as patent defense strategy or as a means of challenging a competitor’s patent claims. We leverage our decades of litigation experience to help clients navigate the complexities of post-grant challenges. Patent Licensing A patent license can provide patent owners with a means for monetizing their inventions as well as for resolving a patent dispute. Similarly, those accused of patent infringement may be able to mitigate the potential of a costly litigation by entering into a patent licensing agreement. We advise clients on patent licenses, patent assignments, cross-licenses, as well as patent portfolio sales and acquisitions.

FAQ’s

  • What is a patent?
    • A patent is the right to stop others from making, using or selling an invention in the United States for a limited period of time. Further:
      • You cannot enforce it until granted as such by the USPTO
      • It is only issued on inventions, as defined in the statute
      • It is issued by the U.S. Patent and Trademark Office, therefore it can only be enforced against other people’s actions within the USA. That is, a U.S. Patent has no effect on people making, using and selling the invention entirely outside the USA (although it may serve as a basis for national patents in other countries, each of which would have effect in its respective area.).
      • It only lasts for a limited period of time, and once it has expired, the patented invention may be freely used by anyone (assuming, of course, no other patent would interfere).
  • What can be patented?
    • Any new, non-obvious and useful process, machine, article of manufacture, composition of matter or an improvement of any of the above. In addition to utility patents, encompassing one of the categories above, patent protection is available for (1) ornamental design of an article of manufacture.
  • What is the process of filing a patent?
    • The first step entails speaking with a patent attorney and fully explaining to the attorney what your invention is, how it works, and how it designed. This may include providing the attorney with drawings, a written description and possibly photos or video if you have a prototype. At this stage you may request a prior art search and opinion be performed. If you decide to move forward with a patent application, your information will be forwarded to a drafter to draw the professionally rendered figures required for your application, though hand sketches may be used if the filing is a provisional application. The attorney will then write the patent application, send it to the client and the client will read through the document to verify that all information therein is correct. The application will then be filed and the client will have patent pending status. If the filing is a nonprovisional application, it will be reviewed by a patent examiner usually between 12 and 30 months after filing. The examiner will issue an Office action and the attorney will respond to the action(s). There are usually one to three Office actions before the examiner issues either a final action rejecting all of the claims or an allowance. If the examiner issues the final action, there are several options still available, including different forms of appeals, continued examination or filing new applications. However, as this final determination will usually be given two or more years after the filing of the original application, the inventor will by and large know whether or not there is ample reason to spend additional funds on further patent prosecution.

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