Intellectual Property

New York, New Jersey and Pennsylvania Intellectual Property Attorney (Patents, Trademarks, Copyrights, Trade Secrets)
New York City: Brooklyn, Manhattan, Queens, Staten Island, the Bronx and Long Island.

Why do I need intellectual property (IP) protection? Intellectual property (patents, trademarks, copyrights and trade secrets) are extremely valuable assets to any individual and any business, whether established or just starting out. Intellectual property may help you operate in a business environment; it may provide you with income from licensing or sales of your intellectual property assets; it may help you secure venture capital backing for your business; it may help you win monetary damages against infringers; and it may help you prevent your competitors from freely exploiting your creations and inventions or importing infringing goods into the United States.

Please click on the images next to the practice areas to learn more.

I offer counseling and services in the following Intellectual Property areas:

Patents:

  • U.S. Patent prosecution: preparation and filing of all kinds of patent applications and prosecution of these applications before the USPTO (arguing the merits of the inventions).
  • Patentability searches and patentability opinions.
  • Patent infringement and non-infringement ("freedom to operate") opinions.
  • Defensive patent analysis (competitor's patents) and opinions.
  • Due diligence patent analysis for investing in or acquisition of intellectual property (patent portfolio and invalidity analysis).
  • Patent licensing and assignments: negotiating the terms and preparing agreements to license or assign issued patents or patent applications.
  • Patent litigation: enforcing issued U.S. patents against infringers, injunctions, and defending clients against claims of infringement; preventing importation of infringing goods into the United States (ITC proceedings).
  • Litigating trade secret and related actions, ownership of intellectual property.
  • Reissue and Reexamination of patents (reexamination of a competitor's patent can be requested if a significant piece of prior art was overlooked during prosecution).
  • International patent prosecution: filing and prosecuting international (PCT) applications and obtaining non-U.S. patents.
  • Prosecuting false patent marking on behalf of individual plaintiffs (qui tam actions representing the interests of the United States to collect a civil fine for falsely marked products).

Trademarks:

  • U.S. Trademark prosecution: preparation and filing of federal trademark applications and prosecution of these applications before the USPTO.
  • Trademark searches and opinions.
  • Trade dress (product packaging) protection.
  • Trademark licensing: negotiating the terms and preparing agreements to license or assign trademarks or trademark applications.
  • Trademark enforcement: policing trademarks, litigating trademark infringement, counterfeiting, dilution (blurring and tarnishment), injunctions, and defense against claims of trademark infringement (non-infringement, fair use); preventing the importation of infringing goods into the United States.
  • Internet domain name disputes through Uniform Domain-Name Dispute Resolution (UDRP), including UDRP administered by World Intellectual Property Organization (WIPO).
  • False advertising and unfair competition.

Copyrights:

  • Copyright registration.
  • Preregistration of unpublished works (computer programs, movies, music, books and photographs).
  • Ownership of works for hire and joint works.
  • Derivative works and compilations (including collective works).
  • Copyright licensing: negotiating the licensing terms and preparing licensing agreements for copyrighted works; compulsory licensing.
  • Copyright enforcement and defense against claims of copyright infringement (non-infringement, fair use, First Sale Doctrine); preventing the importation of infringing copies into the United States.
  • DMCA (Digital Millennium Copyright Act).
  • Authors' rights (rights of attribution and integrity).

Trade secret protection:

  • Developing plans and procedures to protect confidential company information.
  • Litigating trade secret theft and defending against claims of trade secret misappropriation.
  • Confidentiality, non-disclosure and non-compete agreements.