Intellectual Property

General Duties

• Research and compile information pertaining to

• national and international intellectual property rights;
• procedural matters and case law, including Lanham Act and Restatement of Torts; and
• unfair competition and copyright infringement actions.
• Prepare status summary reports for attorneys and clients.
• Coordinate international filings with foreign law offices and/or other foreign entities.
• Maintain docket system of due dates for actions, including responses, renewals, oppositions, Section 8 and 15 affidavits, use affidavits, Patent Cooperation Treaty requirements, and payments of patent annuities in foreign countries.
• Assist in intellectual property-related litigation.
• Assist in oppositions, interferences and cancellations; draft necessary pleadings for use in these inter partes proceedings.

Trademarks

• Perform on-line searches of Patent and Trademark Office (PTO) records, industry databases and general legal research.
• Conduct searches for information regarding trademarks.
• File applications, statements of use, renewal applications, affidavits of use, and assignments.
• Draft responses to PTO actions and oppositions.
• Police client's trademarks to guard against potential infringements.
• Review all products, advertising, and packaging to ensure proper use of client's trademarks.
• Maintain foreign trademarks, which includes corresponding directly with foreign associates and instructing them to search trademarks and to file applications, renewals, affidavits of use and oppositions.
• Obtain legalizations and certifications for filing foreign trademarks.

Patents

• Some duties as outlined for trademarks; however, duties also include devising a filing strategy for each invention, which saves the client money and provides the best protection of the patent throughout the world.

Copyright

• Draft and file renewal applications and infringement letters.
• Draft licensing agreements and review proposed licensing agreements.
• Review client's materials and supervise placements of copyright notices on products and materials to ensure that the client does not unintentionally copy someone else's presentation.
• Research and compile information about notice requirements, longevity of enforcement, and renewal options.

Note- Some of the information contained in the Litigation section of this publication also includes work performed in the Intellectual Property specialty area.