Practice Areas

The Firm offers and routinely provides services for: domestic and international patent and trademark prosecutions; counseling on the availability, validity and enforcement of intellectual property rights; patent reexamination proceedings; trademark opposition and cancellation proceedings; seizures of infringing products both in the Federal Courts and with the U.S. Customs Service; litigating patent, trademark, trade dress, trade secret and copyright infringement cases; negotiating and drafting license agreements; and preparing and reviewing confidential disclosure and non-use agreements.

Pauley Erickson & Kottis strives to provide quality work product at a reasonable cost. The Firm’s Patent Attorneys communicate with the clients to learn the facts and issues, identify legal options for proceeding and assessing, and communicating the business risks associated with the options for proceeding, so that the client can adequately weigh the business risks and promptly make an informed decision in the marketplace.

Patents

A patent for an invention is the grant of a property right to the inventor, issued by the U.S. Patent and Trademark Office (USPTO).

The term of a new U.S. Patent is 20 years from the filing date of a Patent Application filed in the USPTO or, in special cases, from the filing date of an earlier related Patent Application was filed in the USPTO. Issued U.S. Patents are subject to the payment of maintenance fees. U.S. Patent grants are effective only within the U.S., U.S. territories, and U.S. possessions.

As provided by the statute itself, the right conferred by a patent is “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. U.S. Patents grant a negative property right which is not the right to make, use, offer for sale, sell or import, but rather the right to exclude others from making, using, offering for sale, selling or importing the invention in the U.S.

In addition to assisting with U.S. Patents, Pauley Erickson & Kottis has extensive experience with many different types of foreign patent applications. For example, the Firm can assist with filing a patent application directly in one or more foreign countries, with the International Bureau that operates under the Patent Cooperation Treaty (PCT) and/or with a Patent Office operating under any one or more Conventions, such as through the European Patent Office (EPO), the African Regional Industrial Property Organization (ARIPO), or any other existing Convention. The Firm provides foreign filing options and cost estimates so that the client can decide which of many different routes for foreign patent protection will satisfy the client’s particular goals.

For example, if a client desires patent protection in many foreign countries but has no immediate need to enforce a foreign patent, the Firm generally recommends filing a PCT International Application, designating member foreign countries in which the client will ultimately seek patent protection. By proceeding with a PCT International Application, the client receives an International Search Report and can obtain a Preliminary Examination of the PCT International Application, both of which will help the client assess value and determine whether or not to proceed with further steps and costs to secure patents in individual foreign countries. However, if the client desires foreign patent protection as soon as possible, due to an infringement problem or a licensing consideration, the Firm can help the client expedite the process by filing a patent application directly in one or more foreign countries.

Trademarks

A trademark is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of goods of one party from those of others.

A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than of a product.

Throughout this explanation the terms “trademark” and “mark” are used to refer to both trademarks and service marks whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising materials for the services.

A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.

Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the U.S. Patent and Trademark Office (USPTO) stating that the applicant has either used the mark or has a bona fide intention to use the mark, in commerce regulated by the U.S. Congress.

There are two related but distinct types of rights in a mark: the right to register and the right to use. Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods and/or services. The initial term of a federal trademark registration is 10 years from its registration date, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Pauley Erickson & Kottis can conduct an initial search to see if a trademark is available for registration in the USPTO. The Firm can do a broad based search covering FEDERAL and STATE trademark databases and “Common Law” sources as well. The Firm can search a desired mark and variations of the mark, in one or more particular classifications. To federally protect a mark, the Firm can prepare and prosecute a trademark application with the USPTO.

Copyrights

Copyright is a form of intellectual property protection provided to authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.

The 1976 Copyright Act generally gives the copyright owner the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or records of the copyrighted work, to perform the copyrighted work publicly, and/or to display the copyrighted work publicly.

A copyright protects the form of expression of an idea rather than the subject matter of the idea itself. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the U.S. Library of Congress.