310-844-9696

Intellectual Property

Arias Sanguinetti Stahle & Torrijos represents clients in all aspects of intellectual property protection including: litigation and transactional matters related to patents, copyrights, trademarks, trade dress, trade secrets and internet related legal matters.

Intellectual Property Litigation

We represent clients in all aspects of intellectual property litigation, including trade secret litigation, patent litigation, and copyright, trademark and false advertising litigation. We are skilled and experienced trial lawyers who have the legal and technical expertise to simplify the technically complex in order to persuade judges and juries to decide in our clients’ favor.

Patent Searches

We commission a search of relevant patents, published patent applications and non-patent literature. We analyze all references discovered in relation to US patent law, then prepare and send an opinion letter to the client. We also conduct infringement or freedom to operate searches.

Trademark Searches

We commission or perform an on-line search. Then we review all the discovered references, analyze them according to US trademark law and prepare and send an opinion letter to the client. Our searches include phonetic and visual equivalents, all International classes and goods and services.

Preparing, Filing and Prosecuting US Patent Applications

From the inventor’s disclosure we prepare an application (including claims) and drawings for the invention. The application and drawings are sent to the inventor for review and comment. Pertinent comments are included and the application and drawings finalized. We prepare the required and e-paperwork, and file the application, drawings, fee and e-paperwork with the USPTO electronically.

In the first Office Action (OA), the USPTO usually rejects some or all of the claims. We receive and review OA and advise the client of the options for responding, the time limits for responding and the risks involved in not responding.

Upon approval from the client we conduct preliminary discussions with the Examiner and draft an official response. The response usually includes amendments to the original claims and arguments. It may also include amendments of the specification and drawings. The response is electronically filed with USPTO and the client is informed.

Sometimes a further OA is received and the OA-response cycle must be repeated. Sometimes the OA-response cycle may be repeated several times. There are times we need to appeal the Examiner’s final rejection to the Patent Trial and Appeal Board.

Usually, eventually, we achieve allowance for the client. At this point the issue fee is paid and, if required, formal drawings are prepared and filed. After the patent issues a maintenance fee must be paid every 4 years.

Preparing, Filing and Prosecuting Trademark Applications

We file U.S. Federal trademark applications on-line using the USPTO TEAS facility. We file use-based and intent-to-use applications depending on whether the client has already used the mark on the date of filing.

We use various associates to file foreign trademark applications. The foreign associates consult us for direction about the prosecution of each mark if needed

We take care of any needed prosecution of the applications, including responding as appropriate if the USPTO issues any Office Actions.

If necessary we can conduct Oppositions and Cancellation Actions which are similar to litigation.

Preparing, Filing and Prosecuting PCT Applications

From the inventor’s disclosure we prepare an application (including claims) and drawings for the invention. The application and drawings are sent to the inventor for review and comment. Pertinent comments are included and the application and drawings finalized.

Then we prepare the required paperwork and file the application, drawings, fee and paperwork with the USPTO electronically using the USPTO EFS-Web facility. The client is electronically notified.

In about 16 months from the priority date, we receive and review the International Search Report. If necessary we advise the client of the options for responding, the time limits for responding and the risks involved in not responding. We also counsel the client on best method for responding.

If a response is necessary, upon approval from the client we prepare and file an Article 19 Amendment and/or make a Demand for International Preliminary Examination under Chapter II of the treaty. The response typically includes amendments to the original claims and arguments. Under Chapter II, it may also include amendments of the specification and drawings. The response is electronically filed with International Bureau and the client is informed.

Well before the end of the PCT process we advise the client on entering the National Stages.

Licensing

Developing and patenting an invention is only half the battle on the road to financial success. Someone must also profitably make and sell the invention. For the individual inventor without significant experience in manufacturing, importing, distribution and marketing these tasks can be daunting and expensive. A more reasonable path is to license the invention to a company with the experience and infrastructure to handle these tasks.

We have significant experience with the development and negotiation of licensing arrangements and can help you to handle this complex and difficult process. In a license agreement the inventor authorizes a person or company to make and sell the invention for a portion of monies (royalty) received from the sale of products.

We understand of all the factors to be considered and can write and negotiate a licensing agreement that will have value. The drafting of a successful license agreement involves: whether it is to be exclusive or non-exclusive, how and when the licensee will pay, how to determine payment for all sales, and the appropriate royalty rate. Equally significant is how and under what circumstances the license will terminate and under what conditions.

Copyrighting

We file copyright applications for clients. These offer protection for works of authorship of various types including, books and articles, works of art, architectural designs, jewelry and the look and feel of websites. We can assist clients in copyrighting their works and handling conditions such as works for hire and collected works.