- Our People
What We DoPractice AreasHow We're Different
Explore our How We’re Different page to learn more.
- About MMM
Morris, Manning & Martin's Intellectual Property lawyers counsel companies and organizations in all phases of intellectual property law, including the identification and protection of their technology through the effective use of patents, trademarks, copyrights, and trade secrets. We work with clients across the globe ranging in size from emerging companies to Fortune 500 companies, in locations ranging from Asia to Europe and the United States. Our client service and skills are evidenced by the practice's consistent ranking in Chambers USA, a leading professional services ranking publication.
Our Patent lawyers and professionals are scientists and engineers who understand our clients' technologies. We understand complex technologies in a variety of scientific fields, including computer software and hardware, electrical, mechanical, chemical and material sciences, physics, manufacturing systems and processes, nanotechnology, business methods and systems, biotechnology, medical devices and numerous others. Our goal is to consistently execute on the behalf of our clients to ensure they stay one step ahead.
We help our clients enforce and develop strategies to enforce their intellectual property when necessary, and we help negotiate licenses and similar arrangements, when that is an option. We help our clients understand the intellectual property rights of others; we help design around and avoid infringement of such intellectual property rights; we negotiate and obtain licenses when that is necessary or beneficial to the business; and we vigorously defend claims of infringement when no other option is available.
Our IP Litigation Practice represents clients in a full range of intellectual property disputes including patent, software and literary copyright and trademark infringement, and misappropriation of trade secrets. We represent clients wherever the dispute may arise and have appeared as lead counsel in the courts of more than 35 states and U.S. territories, as well as Asia, Canada and Europe. We are also experienced with respect to new patent challenge procedures pursuant to the America Invents Act (AIA), including Inter Partes Review (IPR) proceedings, Post Grant Reviews, Covered Business Method Challenges, and Ex Parte Reexamination proceedings.
Our lawyers, patent agents and specialists provide clients a broad spectrum of patent services. We are registered to practice before the United States Patent and Trademark Office (USPTO) and have prepared and prosecuted thousands of patent applications in a variety of areas, including telecommunications, optics, mechanical and electronic devices, nanotechnologies, liquid crystal display devices, MEMS devices, lasers, quantum spin devices, semiconductors, biotechnologies and various medical devices.
Our IP lawyers are thought leaders with respect to patent laws and regulations. We assist our clients with a variety of tasks and projects, including the following:
Morris, Manning & Martin lawyers have developed extensive experience in the areas of copyrighting of directories and databases; copyright protection for computer software and web page design; copyright issues relating to music, theater, audio-video recordings and fine arts; copyright issues relating to architectural plans and copyright protection of television and radio station programming. Our lawyers are highly qualified to assist clients with any of their copyright needs, including (but not limited to) copyright registration; opinions in connection with charges of copyright infringement or with the evaluation of possible assertion of copyright infringement by others of a client's copyrights; drafting and negotiating copyright license agreements, as well as evaluating and revising license agreements presented by third parties; provide assignee searches for clients that locate copyrights owned by particular entities; copyright audits and due diligence reviews; and international copyright protection.
Morris, Manning & Martin's Trademark Practice covers the full array of trademark legal services. We have the knowledge base to handle both local and international trademark matters. Additionally, we assist our clients with trademark appeals (with the Trademark Trial and Appeal Board (TTAB)), trademark searching and watching services, trademark application preparation and filing (both federal and state), oppositions and cancellations, trademark and brand name selection, trademark maintenance, trademark prosecution and trademark screening and watching services.
3D printing presents new and complex practical and legal issues. Many of the potential issues around the intellectual property protection of 3D printed designs are untested by the courts. Companies leveraging this new, exciting technology need a law firm with significant experience crafting creative, proactive, cost-effective strategies for emerging technologies. Morris, Manning & Martin’s 3D Printing practice offers a wealth of experience guiding clients through such strategies, managing them in the most effective way possible to set up barriers to entry, optimize value, and limit risk.
Clients need experienced, responsive counsel because the intellectual property (“IP”) landscape in this industry is complex, crosses multiple industries, and is changing quickly. Clients have concerns about how best to protect their own IP while avoiding exposure to infringement litigation. We have a team with a wealth of knowledge and experience to meet these needs, including attorneys trained as electrical engineers, mechanical engineers, manufacturing engineers, and attorney specialists in particular key areas, including end-user licensing agreements, licensing, copyright, patent, trademark, and trade secret.
All manufacturers, particularly those focused on 3D printing, recognize how quickly a successful product can be threatened by knock-offs and counterfeits. 3D printing adds additional copyright and licensing complexities, particularly relating to the upload and sharing of 3D-printable files. We work to understand our clients’ business and ideas, and work to protect their intellectual property in a cost effective manner.
We advise clients to consider IP protection during the product design stage. By incorporating unique design aesthetics, the product may be protectable with a design patent, copyright, trademark, or trade dress. An added benefit is that these types of IP can be less costly to enforce than utility patents.
Intellectual Property Protection and Enforcement
We work to protect our clients’ intellectual property as efficiently and comprehensively as possible. To do that, we think creatively about our clients’ products and services to develop a combination of protectable intellectual property. That may include utility patents, design patents, trademarks, trade dress, copyrights, and trade secrets.
Often a combination of intellectual property is available to protect 3D printed products. Although many key patents on 3D printing have recently expired, the number of patents on incremental improvements in this field has boomed in the last few years.
We also assist our clients in enforcing their intellectual property. Enforcement options range from a letter, a request to takedown infringing content under the Digital Millennium Copyright Act (“DMCA”), or litigation in Federal court.
Terms and Conditions / Licensing
MMM attorneys regularly counsel clients on key legal issues outside IP, including terms and conditions, privacy policies, end user license agreements, and licensing. We regularly draft customized terms and conditions, privacy policies, and end user license agreements that address complex issues such as ownership of copyrightable materials uploaded to a cloud-based service. We also advise clients on compliance with the DMCA safe harbor provisions.
3D printing turns the economics of manufacturing on its head – it is the same cost to produce a single item as it is to produce thousands. The result is a boon for rapid prototyping and highly customized products. However, the speed of 3D printing may make traditional “freedom to operate” or “right to use” opinions unworkable. We advise our clients on how to minimize infringement risk without slowing down their operations.
Commentators expect that a rise in patent litigation may follow the recent boom in patent filings related to 3D printing, but it is unclear what products or features are more likely to be litigated. We help guide clients through this uncertainty by tracking the industry, including both IP filings and infringement litigation. This helps our clients feel confident in their position and prepared for a possible attack. We advise that the best defense is a good offense – strong intellectual property protection of utility patents, design patents, trademarks, and copyrights helps keep litigation at bay.
Product Liability and Regulatory Compliance
Many products, particularly consumer products, have product liability risk and require regulatory compliance. Liability may attach to the product designer, the manufacturer of the 3D printer, or the party that printed the 3D product design. We advise our clients on how to minimize risks in this area.
MMM Representative 3D Printing Experience:
In addition to advising 3D printing clients on intellectual property and other legal issues, our attorneys have also lectured about 3D printing:
Experience and Capabilities
Morris, Manning & Martin lawyers have developed extensive experience in the areas of copyrighting of directories and databases; copyright protection for computer software and web page design; copyright issues relating to music, theater, audio-video recordings and fine arts; copyright issues relating to architectural plans and copyright protection of television and radio station programming.
An important aspect of copyright protection for a works of authorship is procurement of copyright registrations. In connection with filing applications to register copyrights, our lawyers are conversant with the regulations relating to the deposit of copies of the works of authorship.
Opinions, Infringement Studies and Counseling
Clients of Morris, Manning & Martin often require counseling and opinions in connection with charges of copyright infringement or with the evaluation of possible assertion of copyright infringement by others of a client’s copyrights. Such counseling is particularly important in the areas of software, compilations or derivative works where copying may not be apparent or easily demonstrated.
Lawyers of Morris, Manning & Martin are able to evaluate circumstances in which others may be violating the copyrights of a client. In areas such as computer software, Morris, Manning & Martin can provide technical evaluation of software which may have been copied.
In the event that a charge of copyright infringement is made against a client, we provide counsel on the merits of the allegation and are conversant with the nuances of the elements of an infringement action including ownership, copying, access and substantial similarity. In addition, counsel is readily available in regards to possible defenses including fair use, abandonment, estoppel, copyright misuse and the reduction of damages by the innocent intent defense. We counsel our clients regarding ways to avoid infringement through independent development of works of authorship. Such counseling not only stresses the need to avoid copying, but also encourages development of a program and evidence of independent development, which can be important in a successful defense against a charge of copyright infringement.
Licensing and Other Asset Transactions
Lawyers of Morris, Manning & Martin have experience in drafting and negotiating copyright license agreements, as well as evaluating and revising license agreements presented by third parties. We can recommend, draft and negotiate all types of licensing agreements, including exclusive, non-exclusive, combined patent/copyright (for computer-based software), publishing and multimedia and have extensive experience drafting and perfecting security agreements.
Copyright Searching and Clearance Center Services
Our lawyers can provide assignee searches for clients that locate copyrights owned by particular entities. This type of search is intended to locate copyright registrations owned by a particular company or in the name of a particular individual. We conduct these searches using online databases with very fast turn-around or use our Washington office to supplement or complement an online search.
Use of copyrighted works in the commercial arena with stock photography, article photocopying, development of multimedia works, etc. can be simplified by using the services of the Copyright Clearance Center, ASCAP, BMI and other copyright licensing organizations. Our lawyers help clients coordinate their copyright clearance needs with these various clearance houses.
International Copyright Services
Some clients elect to pursue copyright protection in foreign countries. With the entry of the United States into the Berne Convention in 1989, the opportunities for foreign copyright protection are now more uniform worldwide. Morris, Manning & Martin can help clients protect their copyrights in every country having a copyright system. In addition, we assist companies located outside the United States in filing and pursuing copyrights in the United States.
Intellectual property disputes require the highest levels of expertise not only in the courtroom, but also in the technology matter at hand. Our IP clients succeed with unparalleled representation when they work with the talented and accomplished Intellectual Property Litigation Practice lawyers at Morris, Manning & Martin, LLP. Our excellent service and skills are evidenced by the practice’s ranking in Chambers USA, a leading legal services ranking publication.
Our IP Litigation Practice represents clients in a full range of intellectual property disputes including patent, software and literary copyright and trademark infringement, and misappropriation of trade secrets. We represent clients wherever the dispute may arise and have appeared as lead counsel in the courts of more than 35 states and U.S. territories, as well as Canada and Europe. Since 1987, we have served IP clients ranging from publicly traded, Fortune 500 companies to individual inventors and start-up ventures.
We understand that IP disputes involve unique legal and business issues that impact diverse aspects of our clients’ businesses. As a result, we provide clients with creative litigation strategies to resolve efficiently and effectively these unique issues. While we vigorously defend each client’s rights, we also recognize that litigation often is a distracting and time-consuming process for our clients. Accordingly, we stay focused on the substantive issues and work closely with our clients to reevaluate our strategies to balance potential benefits and the related costs, and achieve the optimum result.
Often, the greatest service we can provide our clients is counseling on how to avoid the necessity for our litigation services in the future. Our IP Litigation lawyers pride themselves on their ability to counsel clients in avoiding IP disputes by utilizing proven, proactive strategies that achieve their clients’ goals while minimizing the risk of costly litigation.
The Life Sciences team at Morris, Manning & Martin brings experience, passion, and craftsmanship to every project we undertake for you. We have the experience to create the patent strategy that aligns with your business needs. We bring passion to the work to translate your breakthrough science into intellectual property with business value. We approach each project with the eye of a craftsman so that we can tailor our work for you.
Life science inventions are diverse and embrace cellular components and single cell organisms to multicellular organism such as plants, animals, and humans. Our team has the breadth and depth of understanding to provide expert assistance with your life science inventions. The Morris, Manning & Martin Life Sciences team is made up of experienced scientists and engineers who understand your technology. Complex inventions in the life sciences frequently involve expertise in diverse technical areas and we can put together the right multidisciplinary team to craft a strategy that meets your needs, whether you are a company, university or research institute.
Some of the technologies that we have handled for clients includes:
Companies and universities we have worked with include:
Morris, Manning & Martin’s Medical Device Practice enables successful development of new medical device and life science technologies by providing legal and business guidance on formation, financing and operation of leading medical device companies.
The Medical Device Practice of Morris, Manning & Martin has built its reputation by assisting medical device entrepreneurs grow their businesses. We have consistently focused on representing companies that are developing and commercializing new technologies and engaged in fundamental scientific research. From our inception over 30 years ago, we have grown into one of the leading law firms in the Southeast and, in the words of the Atlanta Business Chronicle, are “generally regarded as having the city’s top technology group.” We understand the promise of medical device and life sciences technology, and we bring the full scope of our expertise to help our clients succeed.
From emerging companies to large public enterprises, Morris, Manning & Martin has become a leader in technology related venture capital deals, M&A transactions and IPOs for medical device companies. We have also developed leading practices in the intellectual property and regulatory areas related to the medical device industry. As such, our lawyers have the industry experience and business acumen to work with companies in all stages of development, from idea generation and initial patent filings, to clinical trials and venture financings, through to an M&A transaction or an IPO and beyond. We maintain extensive ties with venture capital firms and other investors who are active in the medical device field. We were leaders in the formation and operation of the Southeastern Medical Device Association (SEMDA), a networking community that helps inventors and entrepreneurs locate sources of financing, navigate complex licensing and regulatory issues and grow their medical device businesses. Through SEMDA and other organizations, our Medical Device Practice has an extended reach into resources and contacts and has established crucial business relationships within the medical device community.
Medical device and related life science companies need capital to grow. We have been recognized as the Southeast’s leading law firm in representing companies in venture capital transactions. In the recent past, we have acted as counsel in well over 200 venture capital transactions that have raised approximately $2 billion. Due to our active practice in this area, we have strong relationships with many venture capitalists throughout the country. We assist our clients in identifying funding sources, creating the appropriate investment structure and negotiating both the term sheet and final investment documents. More importantly, our experience helps our clients avoid strategic errors that may hinder further growth or complicate exit strategies. We understand that as our clients succeed, we succeed. Therefore, our philosophy is to add value, not expense.
As our clients grow, we assist them in raising capital in the public securities markets, where we have been ranked among the top firms in the nation in initial public offerings. In the recent past, our clients have raised approximately $6 billion from sales of equity in initial public offerings. As company counsel, we help our clients through every stage of the offering process, from identifying and selecting the underwriters to preparing the prospectus and closing the transaction.
For companies with an interest in debt financing, we are very active in the public and private debt markets. In addition to acting as counsel with respect to offerings of debt securities, such as senior subordinated notes and convertible subordinated notes, we are regularly involved in asset-based financings, acquisition financings, mezzanine financings, syndicated financings and sale/leaseback transactions.
Achieving Corporate Goals
Many of our clients engage in joint ventures or mergers and acquisitions as an integral part of their corporate strategies. Due to our reputation for providing creative, efficient and effective solutions to our clients’ business and legal challenges, we have one of the leading merger, acquisition and joint venture practice groups in the Southeast. In the recent past, we have acted as counsel in more than $15 billion of merger, acquisition and joint venture transactions. We represent companies at all stages of their growth. We are able to efficiently staff transactions from small private company acquisitions to multibillion-dollar public company acquisitions and joint ventures.
We have particular experience in complicated domestic and international licensing, distribution and joint venture transactions. These types of transactions often require expertise in many legal disciplines, such as tax, securities, intellectual property, litigation, employee benefits, environmental and real estate. To address the complexities of these transactions, we create multidisciplinary client teams that work together seamlessly and efficiently to complete the transactions.
Protecting and Managing Intellectual Property
Most of our clients create and depend upon intellectual property as their core asset. Our practice group that deals with protecting, developing, selling, licensing and granting rights in intellectual property is among the most prominent in the Southeast. Patent filings and transactions involving critical technologies require not only solid legal drafting and negotiation skills, but also comprehensive technical knowledge and business acumen. Patens and technology contracts are as diverse as the technologies they address, and the law governing patenting and licensing intellectual property evolves almost daily. Accordingly, we actively focus our practice on understanding and applying the most recent industry and legal developments for the benefit of our clients.
We provide guidance on key regulatory issues faced by a medical device concern. Clients count on our thorough understanding of HIPAA privacy and security rules to keep them in compliance with the evolving nuances of this recent law. Operational hurdles are surmounted, from FDA compliance issues through clinical trials to product approval. We also focus on reimbursement issues, fraud and abuse laws and product liability concerns, allowing our clients to keep their attention fixed on creating innovative medical products. Together with Morris, Manning & Martin’s Healthcare Regulatory lawyers, we provide the sound advice our clients need to successfully navigate the many laws and regulations imposed upon them, both in the U.S. and internationally.
Practicing a team approach to legal service, we work closely with other relevant practices, such as our Licensing, Intellectual Property and Healthcare Regulatory Practices, to assist medical device and related life science companies in all stages of their lifecycles. Our Medical Device lawyers also draw upon the experience of our corporate and technology practices, who have built their reputations on helping entrepreneurs grow their businesses and by representing companies that are developing and commercializing new technologies, particularly in scientific research. We advise and assist our Medical Device clients on matters involving equity and debt financings, mergers and acquisitions, intellectual property, technology licensing and protection, strategic joint ventures and general corporate governance. For a sound legal approach with sophisticated deal-making experience, Medical Device clients rely on Morris, Manning & Martin.
Representative Clients and Transactions
Morris, Manning & Martin’s Medical Device lawyers represent clients and organizations of all types across the medical device industry, including clients engaged in the development of products in the cardiovascular, orthopedic, endoscopic, bioinformatics, nanotechnology and related fields, as well as other biotechnology and healthcare companies, including therapeutics companies, clinical research organizations, pharmaceutical manufacturers, pharmaceutical distributors, healthcare IT companies and venture capital and private equity investors. Several recent representations include:
Technical Experience and Capabilities
Many of the firm’s IP lawyers are registered patent lawyers authorized to practice before the United States Patent and Trademark Office (USPTO). Lawyers who practice in this area have a wide range of prior academic and industrial experience that make Morris, Manning & Martin uniquely qualified to assist clients involved in complex, cutting‑edge technology matters and disputes.
All lawyers in the IP Group have engineering and science degrees and many have years of practical technical work experience. This combination of excellent technical, academic, education and industrial work experience gives our lawyers a distinctive edge in assisting technologically sophisticated clients with all of their patent needs.
Patent Searching Services
Generally, we provide six types of searching services: patentability, infringement, state-of-the-art, assignee, validity and patent watching.
Patentability. Many clients elect to conduct a preliminary patentability search prior to preparing and filing a patent application. Such searches often are useful in evaluating whether to make the additional investment of pursuing patent protection for a particular invention. Patentability searches can be conducted within very short turnaround times.
Infringement. An important aspect of the firm’s approach to patent disputes is counseling clients how to avoid litigation. Infringement searches, also called “product clearance” searches or “right-to-use” searches, often are conducted prior to introducing a new product in a patent‑intensive industry. The report from this type of search helps clients evaluate the risk of infringing patents of third parties. These searches also aid in the design‑around process, when design changes to a product are made to lower the risk of infringement. When appropriate, the firm can generate a non-infringement opinion with respect to a particular patent. Such non-infringement opinions, although not binding on a court, are nevertheless a virtual necessity for avoiding a finding of “willful infringement” in the event of litigation.
State-of-the-Art Search. A state-of-the-art search, also called a “technology survey,” provides a broader view of a particular field of technology than a patentability search or an infringement search. This type of search often is conducted as part of an evaluation whether to enter that technical field. The search is intended to pull up a comprehensive collection of patents in the designated technical field. The purpose of a state-of-the-art search is to see who the players are in a particular field and how extensive their portfolios are, as well as provide information about the prospects for patentability and the risks of infringement.
Assignee Search. This type of search is intended to locate patents owned by a particular company or in the name of a particular individual.
Validity Searching. This type of search helps assess whether a patent is valid or invalid, in view of prior art. A validity search is often conducted on a patent asserted by a third party in a charge of infringement. Also, a validity search should be considered for your own patents prior to initiation of litigation to verify the strength of a potentially valuable patent.
Patent Watching. Some clients maintain a watch over certain fields of technology. Patent watching services help companies keep tabs on competitors by conducting patent searches using databases around the world.
Patent Application Preparation and Filing
To obtain patent protection requires preparation of an extensive legal/technical document that describes the invention in such detail as to enable a person skilled in the art to make and use the invention. The document contains detailed technical information about the field of the invention, the background of the technology, technical problems that the invention addresses, consideration of known prior art, a summary of the invention, a collection of drawing figures (block diagrams, flow charts, state diagrams, schematic diagrams, database schemas, messaging formats, etc.), a brief description of the drawing figures, a detailed description of the invention in full enabling terms, a description of the best mode or “preferred embodiment” of the invention and a set of claims that set forth the invention in which property rights are asserted and an abstract.
The most important aspect of patent procurement is the preparation of the patent application. Our lawyers work closely with clients to obtain the necessary information for preparing and filing the patent application.
The USPTO has issued over six million patents. The majority of these patents are of questionable quality and create little or no value for their owners. Many of the Firm’s clients desire to create substantial value for their companies through procurement of quality patents, realizing the importance of patents in the valuation equation in financing transactions, as well as in establishing legal barriers to competitors in the field.
Our lawyers are attuned to the quality issues that are important in creating value for clients. When clients authorize preparation of a regular or non-provisional patent application, we work together to obtain the necessary information to prepare a thorough, high quality patent application.
Following preparation of the application, a filing strategy is developed and implemented. The filing strategy typically includes the filing of a U.S. patent application and/or an international patent application under the Patent Cooperation Treaty. Our lawyers discuss the advantages of the different filing strategies and assist clients in selecting the filing strategy that best serves their objectives.
Stages of patent procurement after a U.S. patent application is filed are called “prosecution.” Patent prosecution is a deadline‑oriented administrative law practice before the USPTO. Our lawyers have extensive experience in all phases of patent prosecution. The USPTO imposes many administrative rules with deadlines designed to keep the prosecution process flowing and delays on the part of the patent applicant or the Patent Office affect the term of the patent. Upon receipt of an Official Action (also called an “Office Action” or an “Examiner’s Action”) from the USPTO, the client promptly is notified of the action. Depending on the client’s goals and instructions, the lawyer will provide comments and recommendations for handling the Office Action.
Actions taken to pursue a patent can include preparation of a legal brief, telephone interviews with the Examiner, face‑to‑face interviews with the Examiner, continuing examination procedures and preparation of affidavits in support of patentability. Our lawyers provide information regarding the risks and costs of available courses of action and counsel clients on which course of action to select.
Our lawyers occasionally are requested to take over the prosecution of a patent application or portfolio of applications in mid‑prosecution. Specific recommendations about the available options will be provided on request.
Despite the best efforts of clients and lawyers, the USPTO sometimes refuses to grant a patent. In circumstances where a patent is denied, an appeal may be filed. Appeals are taken first to the USPTO’s Board of Patent Appeals and Interferences (BPAI) and, if necessary, to the Court of Appeals for the Federal Circuit (CAFC).
Our lawyers have experience in procedures before the BPAI and the CAFC. Procedures typically include preparation and filing of briefs, followed by oral argument.
Once a patent has issued, maintenance fees must be paid at periodic intervals during the life of the patent to keep it in force. These fees are due at the end of 3½, 7½, and 11½ years. The firm dockets the dates for payment of these maintenance fees and provides a reminder to clients of upcoming due dates for payment.
The firm maintains a sophisticated docketing system to keep track of the relevant information about client patent portfolios including dates for response, payment of fees and other similar deadlines.
Upon request, the firm can provide a comprehensive status report about a client’s portfolio, which is often useful for management oversight. These reports typically include the status of application preparation, any outstanding Office Actions and due dates, maintenance fee due dates and patent expiration dates. The content and format of these reports can be customized to meet a client’s informational needs.
Correction of Patents ‑ Reissue and Reexamination
A common reason for patent invalidity is the discovery of prior art that was never considered by the USPTO during prosecution. In some cases, patents can be corrected and therefore re‑validated. Minor errors, typically typographical, can be corrected with a Certificate of Correction application.
A reissue proceeding can be conducted when a patent suffers certain types of errors that occur without deceptive intent. A reexamination proceeding can be conducted when a substantial new question of patentability exists based on unconsidered prior art patents or printed publications. Our lawyers have experience in both forms of patent correction procedures.
Invalidation of Third-Party Patents via Reexamination
In certain cases, patents owned by third parties can be invalidated via a reexamination proceeding. This procedure can be useful when the third party’s patent presents a risk of infringement to the client or the client has already been accused of infringement. When relevant prior art patents or printed publications are discovered that were not considered by the Patent Office during the initial prosecution and such materials raise a substantial new question of patentability, a request for reexamination can be filed. If the materials are compelling enough, some or all of the claims of the patent in question can be canceled.
A request for reexamination, if desired, can be filed anonymously to the client. A new inter partes reexamination proceeding recently was instituted at the USPTO. Under the new inter partes reexamination procedure, a person who believes that a certain patent is invalid may submit prior art to the USPTO and submit arguments and evidence of the patent’s invalidity. In the right circumstances, such an inter partes reexamination can provide for a less expensive resolution of a patent dispute than litigation in the courts.
Our lawyers have successfully invalidated a number of third-party patents that were threats to clients. Some cases involved patents that already were in litigation, while other cases were successful in warding off litigation.
In today’s highly competitive environment, competitors may be seeking patent protection for inventions very similar, if not identical, to a client’s products. Under current U.S. law, the first inventor is entitled to the patent, not the first to file a patent application (which is the rule in most countries). The patent laws provide for an “interference” procedure to determine who is entitled to receive a patent when there is a conflict. Patent interferences are litigation‑like proceedings in the USPTO to determine who is the first inventor where two or more applicants are claiming the same invention.
Fortunately for most clients, interferences are relatively rare - less than one percent of all patent applications are the subject of an interference. Our lawyers have handled a number of patent interferences, some highly contentious and bitterly contested.
Freedom to Operate, Opinions, Validity, and Infringement Studies
Freedom to operate studies help clients find a clear path to making and selling their products and are essential in any patent-intensive industry.
Clients occasionally encounter patents that appear as a roadblock to product development or receive cease-and-desist letters demanding cessation of alleged infringement.
When put “on notice” of possible patent infringement, clients should consider asking our firm to conduct an infringement or invalidity study to provide, if possible, a non-infringement or invalidity opinion. The lack of such an opinion is a major factor considered by courts when deciding to impose increased damages - up to treble damages - for willful infringement.
A non-infringement opinion usually requires review of the subject patent’s file history and involves a detailed consideration of the accused product (whether proposed or present). The firm can assist clients in “designing around” problem patents by making changes to a product to avoid infringement.
An invalidity opinion is usually based on prior art discovered in a validity search (prior patents or technical literature) on prior art in the form of products on sale more than one year, or technical publications over one year old.
Licensing and Other Asset Transactions
Patent portfolios can produce significant revenue streams for clients having commercially valuable technology. Our lawyers have extensive experience in drafting and negotiating license agreements, as well as evaluating and revising license agreements proposed by third parties.
Patents, which are a form of intangible property, can serve as collateral for loans and other types of secured transactions and can be bought and sold. Financial institutions sometimes require patent owners to pledge their IP assets in financial transactions. Our lawyers often assist clients - both lenders and borrowers - in structuring transactions to accomplish their technology asset management objectives.
Our firm can recommend, draft and negotiate all types of licensing and security agreements, including exclusive, non‑exclusive, field‑of‑use, territorial, know‑how, combined patent/copyright (for computer‑based technology) and foreign.
International Patent Services
Some clients elect to pursue patent protection for their technology in foreign countries. Our firm helps clients protect their technology in almost every country having a patent system. In addition, the firm assists companies located outside of the U.S. in filing and pursuing U.S. patents.
Morris, Manning & Martin maintains a network of foreign associate attorneys in all commercially significant countries. When intellectual property advice is needed about the laws of any country, our lawyers often can find the answer internally or can obtain the needed advice by a foreign associate.
Because different countries have different patentability standards, it is important that arguments for patentability made in one country are consistent, to the extent possible, with arguments made in other countries to avoid issues of enforceability. Our lawyers work closely with foreign associates in selected countries to maintain consistency in a client’s patent portfolio.
Most foreign countries have a system of annuities to keep patents and patent applications in force (as contrasted with “maintenance fees” in the U.S.). Our firm utilizes an annuity docketing system and the services of various international annuity payment services to keep track of due dates and payments for foreign patent annuities. Annuities, like foreign filing fees and foreign associate legal fees, must generally be paid in the currency of the foreign country. Our firm offers clients the option of establishing an escrow account for the purpose of paying foreign annuities and other fees, thereby relieving the client of the trouble and expense of making foreign currency payments.
Morris, Manning & Martin also can provide foreign patent searching services in select countries. Searches can be conducted in most commercially significant countries with online patent databases on short turnaround, if needed. In other cases, foreign associates are utilized for searching services.
Intellectual Property Acquisitions - Audits - Due Diligence Reviews
When a company plans to acquire new technology from a third party, our firm can assist in the evaluation process by conducting an intellectual property audit or “due diligence” review.
A review of the intellectual property assets in question often can reveal hidden strengths of the assets, as well as weaknesses that lead to negotiations for a lower purchase price, or indemnity provisions to mitigate risk, or, on occasion, cancellation of the transaction.
Due diligence reviews also are conducted preparatory to public or private offerings of securities, licensing transactions, or secured transactions involving patents as assets. Our lawyers have extensive experience in conducting due diligence reviews and working closely with transactional lawyers on the client’s team to coordinate all aspects of the transaction.
Intellectual Property Valuation Assessment
Companies with intellectual property assets, such as patent portfolios covering critical areas of technologies developed by the company or licensed from third parties, usually enjoy increased valuation in venture capital financing transactions, public securities offerings, and mergers or acquisitions. Valuation of “intellectual capital” includes valuation of both intellectual property and personnel assets. Our lawyers have experience counseling clients in valuation determinations for purposes of negotiating corporate transactions. We work closely with the client and financial advisors, such as accountants, M&A experts, and underwriters to help ensure that the value of the intellectual property assets is taken into account when arriving at a corporate valuation.
Management of Intellectual Property Programs
Our lawyers can assist management in preparing and recommending employment agreements, invention assignments, disclosure document programs, research and development notebooks and other invention records. Our lawyers can present in‑house seminars on procedures involving the development of inventions, searching and analyzing search results, preserving evidence of conception and reduction to practice, preparing patent applications and other aspects of the patent process.
Upon request, our lawyers can prepare and deliver presentations about a client’s patent portfolio, in coordination with R&D managers, to prospective investors, management and boards of directors. Periodic portfolio reviews and presentations can help technology‑based companies maintain a proper focus on the R&D process, as well as a cost-benefit analysis patent program.
Trademark Searching and Watching Services
Morris, Manning and Martin provides comprehensive trademark selection assistance searching and watching services.
Preliminary Trademark Screening Search. Many clients elect to conduct a preliminary trademark screening search as part of their trademark selection process, prior to preparing and filing a trademark application. A preliminary trademark screening search is a limited search, primarily used for locating identical marks and close spellings and eliminating obvious problem marks. This type of search is restricted to a review of the trademark records of the United States Trademark Office.
Preliminary trademark screening searches often are useful in evaluating whether or not to make the additional investment of a comprehensive screening search. Preliminary screening searches can be conducted with very short turn-around times.
Comprehensive Trademark Screening Search. If clients require further assurance regarding the availability of a particular trademark, a comprehensive trademark search is recommended. This type of search includes a review of the U.S. Trademark Office or "commercial" records, individual state trademark registers and various common law sources. A comprehensive trademark search is designed to locate identical trademarks, variant spellings and phonetic equivalents and similar trademarks used in connection with products or services relevant to a product or service. In addition to word marks, designs or logos can be searched.
Merchandising Search. A merchandising search, which cuts across various trademark classes, is a comprehensive search that may be appropriate for certain types of promotions, typically in the music and entertainment industries. Other special searches are also available.
Comprehensive trademark searches are typically conducted after a preliminary trademark screening search, prior to developing an advertising campaign around a particular trademark or prior to filing an application for registration of the trademark. The reports from this search help clients evaluate the risk of infringing the trademarks of third parties and the likelihood of success in obtaining a registration. This type of search also is helpful when selecting a trade name or company name.
Assignee Search. This type of search is intended to locate trademarks owned by a particular company, or in the name of a particular individual. This search can also be used to determine the owner of a particular mark. Our lawyers can conduct these searches using online databases with very fast turn-around to supplement or complement an on-line search. An assignee search can be obtained for foreign registrations, as well as U.S. trademark registrations.
Other Searches. Occasionally, the need arises for additional information about a particular trademark. For example, a client may want to know whether a specific trademark has been abandoned by a competitor or whether it is still being used. An “in-use search” is appropriate for obtaining this type of information. In litigation, it may be necessary to evaluate the strength or weakness of a particular mark. A “dilution search” would provide the needed information. When selecting a company name, a “company name search” or a “corporate name search” is helpful in eliminating names that already are in use by other companies.
Trademark Watching. Oftenclients elect to maintain a watch over marks published in the Trademark Office Official Gazette or URLs on the Internet to assist them with locating potentially infringing marks. International and U.S.-based trademark watching services help companies keep tabs on competitors and protect their trademarks from infringers. Trademark watching services can be conducted on a periodic (e.g. monthly) basis with on-line computer databases or with assistance of professional watching services.
Trademark Application Preparation and Filing
Federal registration of a trademark or service mark creates certain additional rights and benefits not available to the trademark owner under common law. An application for registration of a trademark may be filed after a mark has been in use or before the mark has actually been used in commerce. Our lawyers work closely with clients to obtain the necessary information to prepare and file the trademark application and determine the most appropriate time to file.
Morris, Manning & Martin maintains a network of foreign associate lawyers in all commercially significant countries. Lawyers in the Firm have experience filing and prosecuting trademark applications internationally and many clients of the Firm have substantial international trademark portfolios.
Despite the best efforts of clients and lawyers, the Trademark Office sometimes refuses to register a trademark. When a client disagrees with a Trademark Examining Attorney’s rejection, an appeal may be filed. Appeals from the Examining Attorney’s final rejections are first taken to the Trademark Trial and Appeal Board (TTAB), and then, if necessary, to the Court of Appeals for the Federal Circuit.
Morris, Manning & Martin lawyers are experienced in appeal procedures before the TTAB and the Federal Circuit. Procedures typically include preparation and filing of briefs, followed by oral argument.
After an application for registration of a trademark is examined and approved by the Examining Attorney, the mark is published in the Trademark Office Official Gazette. Publication opens a thirty day period during which an opposition to registration of the mark may be filed. Oppositions are litigation-like proceedings in the Trademark Office that determine whether a mark is entitled to registration.
Morris, Manning & Martin is experienced in opposition procedures before the TTAB. Oppositions typically include discovery, preparation and filing of briefs, followed by oral argument.
Occasionally, a mark is improperly registered or is abandoned after being properly registered. Any party that believes it is or may be damaged by such a registration may file a petition for cancellation of the registration to remove it from the Trademark Register. If contested by the registrant, cancellations - like oppositions - are litigation-like proceedings before the TTAB.
Between the fifth and sixth year after a trademark registration has issued, a trademark owner must file a declaration of continuing use of the trademark or the registration will be canceled. The Firm dockets the due date for this declaration and provides a reminder to active clients of the upcoming due date.
A trademark registration is valid for a period of ten years. A registration may be renewed by filing a renewal application and paying the appropriate fees. The Firm also dockets the renewal date and provides a reminder to active clients, as well as foreign renewal and other relevant foreign due dates.
Upon request, the Firm will provide a comprehensive status report about a client’s intellectual property portfolio, which often is useful for management oversight. These reports typically include the status of application preparation, any outstanding Office Actions and due dates, affidavit and renewal due dates and registration expiration dates. The content and format of these reports can be customized to meet a client’s informational needs.
Licensing and Other Asset Transactions
Our lawyers have experience in drafting and negotiating license agreements, as well as evaluating and revising license agreements presented by third parties. We can recommend, draft and negotiate licensing agreements, including exclusive, non-exclusive, territorial and foreign.
Stages of procuring a trademark registration subsequent to filing the trademark application are called “prosecution.” Lawyers at Morris, Manning & Martin have experience in all phases of prosecuting trademark applications. When a communication is received from the Trademark Office, the client is notified. Depending upon the client’s goals, the attorney usually provides comments and recommendations for response. Actions taken to pursue the trademark registration can include preparation of a response to a communication, telephone interviews with the Examining Attorney and preparation of affidavits in support of registration. Our lawyers provide information about the available courses of action and help the client decide which course of action is the best under the circumstances.
Occasionally, survey evidence is required to establish that a mark is recognized by the public as a trademark to secure a registration. The Firm has relationships with several professional companies that are able to conduct the required surveys.
International Trademark Services
Some clients elect to pursue protection for their trademarks in foreign countries. Morris, Manning & Martin can help clients protect trademarks in almost every country recognizing trademarks and having a trademark registration system. In addition, we can assist companies located outside the U.S. in filing and pursuing U.S. trademark registrations.