PRACTICE AREAS

Extensive experience in patent prosecution for corporate firms.

The firm’s expertise in worldwide protection of intellectual property extends to related areas including litigation support, licensing and technology-related agreements, and trade secrets, We provide opinions on patent infringement risk analysis, patent invalidity, scope of patent claims, invention novelty, and patent searches on invention patentability, state-of-the-art that helps clients in their research and development of products for commercial application, and that will assist in the enforcement of patent and intellectual property rights, as well as in defending against such rights. Senior members of the firm are experienced in and are available as expert witnesses in support of IP litigation.

We can advise and help clients in establishing internal intellectual property systems that will facilitate managing their IP assets and enhance their competitive advantage in the marketplace, and recouping financial benefits using their IP rights. The firm also offers assistance in a variety of IP agreements including licensing, consulting, secrecy and non-disclosure, engineering, and assignment of employee IP rights.



Patents

Patents are our strong suit. Patent law is what we do. Our primary emphasis lies in patent prosecution. We at Lerner Greenberg Stemer LLP have years of experience filing and obtaining patents in the United States and around the world. The U.S. patent system distinguishes among three different types of patents:

• Utility Patents are directed to a useful process, a machine, a manufacture, or a composition of matter. Patents may be awarded to improvements. A “process” is the same as a “method.” The term “manufacture” refers to articles which are made.

• Design Patents protect original and ornamental designs for articles of manufacture. Designs do not protect the function but the looks of a thing.

• Plant Patents protect asexually reproduced, distinct varieties of plants, including cultivated spores, mutants, hybrids, newly found seedlings.

Foreign patent systems define additional patent rights. These include the utility model or the German Gebrauchsmuster.

Opinions/Searches:
A considerable part of our work deals with expert opinions. We keep up-to-date on all developments in the intellectual property (IP) law arena, and we are able to provide timely advice concerning all such developments. We prepare infringement opinions. clearance opinions, freedom-to-operate searches, memoranda of IP law...

Patent-Eligibility:
Not everything is patentable. An abstract idea is not patentable. A law of nature is not patentable. Something that is not useful is not patentable and, in some cases, even if something is useful, it may not be patent-eligible. See our detailed memo on "Bilski."

Patents are Defensive in Nature:
A patent to an invention does not give you the right to make or use the invention. A patent is a defensive right. It gives you (i.e., the patent owner) the right to exclude others from making, using, selling, or importing the patented invention in the United States. In contrast with many foreign jurisdictions, there is no requirement for a patent holder in the United States to actually make or use the invention. In other words, a U.S. patent may be used to obstruct the coming to market of an invention during the term of that patent.

Publication:
Patent applications are published 18 months after the filing date. In order to patent an invention, you need to describe it in detail. Since the description of the invention will become public, it is not possible to keep it secret. If you wish to keep your idea to yourself, you should consider squirreling it away in a drawer, or keeping it confidential by way of a Trade Secret.

Provisional Patent Application:
The application may first be filed in the form of a provisional application. This is not really an application for a patent, because it will not be examined and no patent can issue from a provisional. Consider it a time stamp, instead. It will establish two things for you: it will be an official acknowledgement that you had the invention/idea at least as early as when you deposit the provisional application, and it will establish your right of priority with regard to foreign and international applications.

Non-Provisional Patent Application:
This is the real application, the application that will be examined and, hopefully, mature into a patent. The non-provisional patent application is filed together with an oath or declaration by the inventor stating that he/she is indeed the inventor. The application is then subjected to an examination by a patent examiner at the Patent Office.

Examination:
The patent examiner reviews the application in light of the formal requirements (see below). The specification must contain an “enabling” disclosure of the invention and the claims must be clear and definite. The examiner also compares the claimed invention with the prior art (earlier patents and other technical literature). If the invention is not new or it is obvious over the prior art, the patent examiner refuses to issue a patent.

Office Action:
Upon completing her review, the patent examiner issues an Office action – usually a rejection of the application. The most common rejection in the first Office action is based on the patent examiner’s allegation that the claims define something that is not new or something that is an obvious variation of something that is known form the prior art.

Response/Amendment:
The applicant answers the Office action by responding to each of the examiner’s objections, either by pointing out the examiner’s errors or changing the application to satisfy the objections. It is often necessary to add limiting language to the claims so as to remove the prior art rejections. The additions must be within the bounds of the original specification, i.e., no “new matter” can / should be added.

Notice of Allowance/Issue of Patent:
When the patent examiner is satisfied that all requirements have been met, the claims are allowed. Subject to the payment of an issue fee, the Patent Office issues a patent.

Patent Term - Maintenance Fees:
A utility patent may be valid for a maximum of 20 years, counted from the date of the first application. Maintenance fees are due every four years. If these fees are not paid, the patent expires. This means that the public is then free to use the invention. Design patents are valid for 14 years, counted from the date of issue. No maintenance fees are due for design patents.

Trademarks, Trade Dress, Copyright

Our goal is to achieve the best possible protection for our clients. Whether your work is best protected by way of a trademark, trade dress, copyright, or design patent --or even all of these -- we shall advise you with your interests in mind and the objectives of your particular business. Lerner Greenberg Stemer LLP can secure your rights in every aspect of trademark and copyright protection, including all phases of federal and state registration, opposition, cancellation, litigation support, and enforcement procedures. Our experts are fully versed in the application process in the United States, in the international filing systems, and in a multitude of countries around the world.

What is a Trademark/Service Mark?

Any word, name, or symbol qualifies for trademark protection if it is used by a person (or that person has a bona fide intention to use the mark) in commerce to identify and distinguish his goods/services from those made by others and to indicate the source, even if the source is unknown. The purpose of the trademark law is to protect consumers from confusion as to the source of the goods and services by allowing producers exclusive rights in a mark reflecting goodwill and quality reputation they have developed.

By the way, a service mark is also a trademark. Service marks are marks that are used in the context of services. Since many marks are used for goods and for services, the words trademark or mark are generically used for all marks, including service marks.

The trademark owner is the first to use the mark in a given geographic area in connection with particular goods or services. State common law grants ownership by virtue of being the first person to use the trademark. Federal law does not create trademark ownership, nor does federal law preempt state law. The federal Lanham Act, however, provides a federal registration system for trademarks which are used in interstate commerce. In addition, the Lanham Act provides procedural rights and enforcement mechanisms. Any infringement of a trademark must be based on the likelihood of (and actual) consumer confusion.

By the way, a service mark is also a trademark. Service marks are marks that are used in the context of services. Since many marks are used for goods and for services, the words trademark or mark are generically used for all marks, including service marks.

The trademark owner is the first to use the mark in a given geographic area in connection with particular goods or services. State common law grants ownership by virtue of being the first person to use the trademark. Federal law does not create trademark ownership, nor does federal law preempt state law. The federal Lanham Act, however, provides a federal registration system for trademarks which are used in interstate commerce. In addition, the Lanham Act provides procedural rights and enforcement mechanisms. Any infringement of a trademark must be based on the likelihood of (and actual) consumer confusion.

What is the Difference Between a Trademark and a Copyright?

The primary distinction between a trademark and a copyright is as follows: a copyright is established as soon as the work is fixed (pen to paper, music to tape, photograph on film/card, etc.). There's no need to register. The rights attach immediately. Registration is only required if the copyright owner wishes to enforce his/her rights in court. No rights attach to a trademark simply upon creation. In the context of trademarks, use is the key. A trademark need not be original or creative; trademarks do not fall into the public domain after a predefined period of time; and the exclusiveness of use is limited by geographic area and by the type of product and service. For more, check out the FAQ section at the Trademark Office.

Trademark Application / Registration

Do not use the symbol ® or the designation "registered trademark" until the mark is actually registered. If you do, the registration may be refused or it may be taken away.

The United States Trademark Office accepts applications for trademarks that may be based on any of several different filing bases. The four primary categories are:

(1) Based on Use - Section 1(a)

The mark has been used in commerce which the U.S. Congress may regulate, namely, interstate commerce or importation into the U.S. from abroad. The applicant must state that the mark has been used and indicate the exact dates of such use (i.e., the first time that the mark was used anywhere in the world and the first time the mark was used in, or imported into, the United States. The two dates may be the same). More Info...

(2) Intent to Use - Section 1(b)

The mark has not yet been used in commerce, but the applicant has a bona fide intent to use the mark in such commerce. The mark will be registered by the U.S. Trademark Office only after the mark has been used and the applicant files a corresponding declaration. More Info...

(3) Foreign Priority - Section 44

An applicant may claim the priority of a foreign trademark application under § 44(d) if the U.S. application is filed within six months of the foreign filing or the priority of a foreign trademark registration under § 44(e). The applicant is required to state that he/she has a bona fide intent to use the mark in U.S. commerce and the mark will be registered by the U.S. Trademark Office only after a certified copy of the foreign registration has been filed. More Info...

(4) Extension - Section 66(a)

The owner of an international registration may file a request for extension of protection of that registration to the United States. The request for extension to the United States may be included in the international application, or in a subsequent designation made after the International Bureau registers the mark. The request for extension will be electronically transmitted to the U.S. Trademark Office, where the request for extension of protection to the United States will be referred to as a "§66(a) application." More Info...

Classes of Marks
1. Generic Terms - cannot be registered.

A mark is generic when it is a term commonly used as the name or description of a certain kind of good. In determining whether or not the term is generic, one of three factors must be fulfilled: First, the word/expression has such an inherent meaning in ordinary language or the public uses it to identify goods of other producers as well. Second, the term is a compound word which, while not previously used, suggests the content of the description. For instance, the word “screenwipe” connotes the use and the constitution of the goods, if used for articles to be used for wiping screens. Third, the primary significance test ascertains the primary meaning of the term to the prospective purchaser of the product.

A generic term cannot be protected and it cannot become a monopoly. This applies as well to phonetic equivalents (phone = fone) and, in general, to foreign language translations (Bier, birra, cerveza, etc. cannot be registered in class 32 for beer).

2. Merely Descriptive - may or may not be registered.

Where a mark specifically describes a characteristic or ingredient of an article, it is considered descriptive. Such a term may become a valid trademark upon acquiring a secondary meaning: the mark has become distinctive of the producer’s goods and/or the primary significance in the mind of the consumer is not the product but the producer. Here, the mark no longer identifies the product but the producer and his goodwill.

The protection afforded by a descriptive mark is not absolute. Other producers may still use the word in its generic form and to denote generic products. This is a concept similar to the copyright fair use defense. However, the competing producer must not use the mark in its non-generic sense (e.g. Cat Chow® for cat food). A descriptive mark can be registered only after the mark has been used virtually exclusively in the context of the goods for an extended period of time.

In some cases, a mark that has been categorized as "merely descriptive" may be recorded on the Supplemental Register. After five years on the Supplemental Register and after the mark has been used "substantially exclusively" for five years, the "merely descriptive" mark is said to have acquired secondary meaning and the mark may be registered on the Principal Register, subject to the filing of a new trademark application.

3. Suggestive Marks - may be registered

A term which suggests an ingredient or characteristic of the product is suggestive. Upon being exposed to the mark, the observer or listener must use imagination and perception to determine the nature of the goods. Suggestive marks are protectible even if they have not acquired secondary meaning (e.g. Terminix® for pest control).

4. Arbitrary Marks - the best mark of all

The best mark is an arbitrary mark. A word, for instance, which is not defined in a dictionary as having a meaning in a modern language is considered arbitrary. An onomatopoeic expression (a word which phonetically imitates a natural sound) may be considered arbitrary, even if it suggests the product. An arbitrary mark allows the highest level of protection. The word either has no meaning in the language at all (it is “coined”, e.g. Kodak®, Exxon®) or it has no meaning in connection with the goods (e.g. Crest® Toothpaste).

Trademark Filing Information
Required Information

a. Name of Trademark Owner/Applicant:
Name and Nationality, if an individual; or Name of company and state of incorporation.

b. Address of applicant.

c. Telephone Number of the applicant.

d. E-mail address of the applicant.

e. Name of the mark you wish to apply for:
Do you want to apply for a word mark, a logo (design) or both.
If you want to apply for a logo, we need a .jpg or .pdf of the logo exactly as you intend to use it.
Do you wish to claim any of the colors in your logo?

f. List of goods/services use with the mark:
Please list all of the goods/services that you want to use the mark for with their common commercial name. Here's a link to the government’s acceptable identification manual for goods and services. Please note that all goods and services are classified within 50 classes or groups. For each group of goods for which your goods or services fall into, you will be charged a government filing fee (presently $350.00 per class).

g. Are you already using the mark in commerce (e.g. selling or advertising the goods)? We will need the following dates of use:
Date of First Use anywhere; and
Date of First Use in commerce.
Otherwise state your filing basis as an “intent-to-use” filing basis (e.g. reserving a name).

h. If you are claiming use (e.g. sale of goods), you must provide a specimen showing the mark on the goods or in close proximity to the services.
Please refer to our guide How to Select the Right Specimens of Use for your Trademark.

Post Registration Maintenance Matters

An initial trademark registration lasts for 6 years. To extend the life of the trademark registration, a first maintenance filing must be filed between the fifth and sixth years after the date of registration and must include a signed Declaration of Use, at least one specimen per class showing use of the mark, and the approximate government filing fee. A trademark renewal is due between the ninth and tenth years after the registration date and again must include a signed Declaration of Use, at least one specimen per class showing use of the mark and the appropriate government filing fee. Subsequent renewals are due every ten years after the registration date, i.e. as long as a mark is in use in commerce the registration will stay valid assuming you continuously file the proper maintenance forms.