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Michael Haynes PLC is a law firm dedicated to empowering all aspects of its clients’ intellectual property. I work with every type of Intellectual Property.
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Trade secrets are the oldest and most widespread type of intellectual property.
Information qualifies as a trade secret if that information is not generally known, provides independent economic value to its owner, and is kept secret via reasonable measures of security. Typically, a company’s trade secrets account for the vast majority of its intellectual properties, yet often go unrecognized, unappreciated, and rather poorly protected.
That’s right. Most companies protect their most valuable secrets inappropriately, and too often, simply incompetently!
But why is that?
First, let’s note that simply keeping information confidential is insufficient. Instead, to qualify as a trade secret, confidential information must provide its owner with a competitive advantage due to its secrecy. So, the starting point in managing your company’s trade secrets is to determine what confidential information provides your company with competitive advantages.
Considered from a different angle, to what extent could your company’s business be damaged if competitors acquired any given trade secret?
Trade secrets can be any type of information (including data and knowledge), such as:
Note, however, that absent an enforceable contract, your company has no right to exclude others from using “proper means” to obtain what your company considers to be its trade secret. Proper means can include independent development, reverse engineering, obtaining the secret information from a third party who has a right to disclose it, or obtaining the secret information from your company without breaching a contractual or other duty, such as when your company has failed to exert reasonable efforts to maintain the secrecy of that information. In contrast, improper means can involve breach of contract, espionage, theft, electronic security breach, wiretapping, fraud, bribery, coercion, etc.
Trade secrets are often protected by formal written agreements (e.g., Non-Disclosure Agreements, Employment Agreements, Consulting Agreements, etc.), training, physical security, computer security, and/or other well-managed access control practices. Nevertheless, trade secrets frequently fall into the public domain. Thus, many trade secret holders consider patent protection when feasible.
The variety of potential business agreements involving intellectual assets and/or the property rights in such assets is simply astounding. Nevertheless, certain business scenarios appear with such frequency that tools and rules of thumb for crafting relevant agreements have emerged that often can smooth the way and avoid many potential pitfalls.
I have substantial experience dealing with these, and many other scenarios.
Perhaps the most common scenario is the need to disclose confidential information (which might be a trade secret) to someone outside the control of your company. In this situation, a Confidentiality or Non-Disclosure Agreement (NDA) is frequently relied upon. Key to many such agreements can be a clear identification of what confidential information must be kept secret, and what uses are allowable for that information. Other strategic considerations include requiring the disclosing party to mark all written materials as “confidential” and to summarize all confidential information disclosed verbally within a specific time frame after disclosure.
Closely related is the Employment Agreement (and its cousin, the Consulting Agreement). These agreements typically include confidentiality provisions, as well as requirements for assignment of intellectual property rights, assistance with obtaining and protecting intellectual property rights, and possibly a non-compete and/or non-solicitation clause.
Assignment clauses can require that founders, employees, contractors, and/or business partners assign their intellectual property rights to your company. Yet difficulties can emerge when, for example, the resulting assignment documents are drafted incorrectly, sought at the wrong time, or recorded improperly.
When entities agree to work together to research and/or develop technologies and/or products, they typically enter a Joint Development Agreement, which, in addition to the provisions described above, usually spells-out how jointly created innovations, discoveries, and information will be owned and handled.
Once an entity obtains intellectual property rights, it can retain those rights, yet authorize others to exploit some of them, via a Licensing Agreement (or “License Agreement”). The terms of such agreements can vary substantially depending on, for example, business needs, the type of intellectual property involved, the specific rights licensed, and/or the industry. An “exclusive” license allows only a single licensee to exploit the identified right, while a “non-exclusive” license allows each of multiple licensees to do so.
Disputes can arise, for example, in the process of negotiating an agreement involving intellectual property rights, or after such an agreement is in place. Yet careful agreement drafting, and reliance on professional dispute resolution techniques, can avoid litigation while preserving the business relationship and maximizing the value of the intellectual property rights.
Generally, a patent is written document that:
Visit my Patents page to learn more.
Broadly, a mark is a symbol, which can be a character, word, phrase, logo, design), color, sound, and/or scent, that is used in commerce, denotes a good and/or service, indicates the unique source of that good/service, and distinguishes that good/service from those of other sources.
For example, any one or combination of the following can serve as marks:
Visit my Trademarks page to learn more.
A domain name is a portion of an internet “address”, or more precisely, a portion of a Uniform Resource Location (“URL”) that is unique to a website. As an example, for the URL “https://www.MichaelHaynes.com”, the domain name is “MichaelHaynes.com”.
Although sometimes considered to be a type of mark, I treat domain names as a separate form of intellectual asset. Each domain name is registered to only one holder worldwide by an owner-selected accredited domain name registrar, each of whom typically charges a fee for their registration services. Registrations expire after a pre-specified period and must be re-registered beforehand (with any desired registrar), otherwise another party could register that same domain name, and thereby obtain rights in that domain name.
The Internet Corporation for Assigned Names and Numbers (ICANN) has promulgated a Uniform Domain Name Dispute Resolution Policy with which most registrars comply, and WIPO touts itself as the leading ICANN-accredited domain name dispute resolution service provider.
Although domain names qualify as a form of intellectual asset, issues involving them are not often brought to the attention of IP attorneys, except, for example, when litigation is needed to protect a mark.
Domain names often don’t make good marks, particularly when they describe the goods/services offered by a company. Such domain names might very well lead to higher-ranking online search results, which is great from a marketing perspective. But it is precisely that descriptive nature that can make a domain name a poor source identifier and thus, not capable of functioning as a mark.
Unless separate trademark rights are established through use and formally registered and maintained, a descriptive domain name likely won’t provide much, if any, protection against competitors using confusingly similar domain names.
U.S. federal registration of a domain name as a mark is possible only if your company provides goods/services via the corresponding website. Your company’s website must not be incidental to its main business purpose or only provide information and/or means to contact your company.
Likewise, and as suggested above, registration of your domain name with the USPTO generally is possible only if it is not descriptive of the goods/services provided on your website. Keep in mind that to be considered legally descriptive (and thus potentially federally unregistrable as a mark), the domain name only must describe an ingredient, quality, characteristic, function, feature, purpose, or use of your company’s offered goods/services. In certain circumstances, descriptive domain names that have acquired secondary meaning are registrable. But proving secondary meaning can be a tough road to trudge. For example, it took a trip to the Supreme Court for the mark BOOKING.COM to be ruled protectable because consumers perceive it as distinctive among providers of hotel reservation services.
In other words, like all other marks, your domain name must truly function as a mark to obtain the protection provided by U.S. federal registration.
The International Trademark Association (INTA) offers this additional insight:
“Key in determining if use of a domain name rises to the level of a trademark usage is whether it is viewed by consumers as a symbol of origin separate and apart from anything else.”
The following is a very general overview of copyrights and is not intended to apply to any particular situation or work. Rather than relying on these generalities, please consult with me or another competent patent attorney about the specifics of your situation.
A copyright arises, by federal statute, at the moment an original “expression”, such as a writing, musical score or recording, carving, sculpture, illustration, painting, photograph, movie, etc, is “fixed” (e.g., recorded, captured, etc.) in a tangible medium (e.g., paper, canvas, wood, marble, audio tape, CD, DVD, electronic file, etc.) of expression.
A copyright provides exclusive rights to control who can:
These rights are divisible, meaning that each one can be allocated for different uses, territories, times, mediums, etc.
More information is available from the U.S. Copyright Office at www.copyright.gov.
Copyrightable works can include:
Pictorial, graphic, and sculptural works can include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.
Copyright law only protects fixed and original works of authorship.
A work can be fixed in several ways, including being painted on a canvas, written on a piece of paper, or stored on a hard drive or smartphone.
Originality requires some amount of creativity by the original author of the work where that creativity distinguishes the work from prior works.
Copyright protection is generally available for the life of the author plus 70 years for individuals, or the shorter of 95 years from the date of publication or 120 years from creation for corporations or works for hire.
Copyright protection is not available for de minimis (inconsequential) contributions (words, titles, short phrases, and ornamentation), facts (including research and history), forms (format, layout, and style), color, typeface, photographic subjects, athletic events, “scenes a faire” (common themes and plots), ideas, procedures, processes, systems, methods of operation, innovative concepts, principles, discoveries, and government works.
A copyright notice should be applied to a work to put others on legal notice that the work is subject to copyright.
A proper copyright notice includes the copyright symbol © or the word “copyright”, the year of first publication, and the legal owner (e.g., “© 2007 Joe Smith” or “Copyright 2011 Jane Jones LLC”).
Copyright notice generally should be provided regardless of whether the copyright has been registered.
Copyrights can be lost if a work is published without proper notice.
Proper registration of a copyright can provide many benefits, including:
Secondary benefits of registering the copyright can include:
Application Preparation:
Copyright Office Fees:
Total:
Copyright Office processing:
Caveats:
Compared to protecting other intellectual assets, registering a copyright is relatively easy. Often, your company can successfully register its copyright without any help at all from an attorney.
More information is available from The U.S. Copyright Office at www.copyright.gov/help/faq/.
Note that there is no international copyright registration system. Instead, works are automatically protected without formal registration in over 180 countries (thanks to the Berne Convention). But your company might still want to consider formally registering in national copyright offices where available.
Generally, the steps for preparing a copyright application are:
Registration: necessary for instituting infringement suits, and for obtaining statutory damages and attorneys’ fees. Delays in registering a work might make obtaining statutory damages and attorney fees impossible (it’s best to register within 90 days of first publication).
Term: copyrights have a long duration, e.g., life of author plus 70 years.
Assignment: requires a written agreement.
Ownership: under the “work for hire” doctrine, paying for a material object (such as a painting, book, CD, etc.) does not necessarily mean the copyright to the work embodied by that object has been purchased. That is, very generally, even if a work is created under a contract with your company, unless specifically designated as a “work for hire” in that contract, a written assignment of copyright typically is needed from any independent contractor, and from any employee working outside the scope of their employment, if the copyright is to be transferred from the creator to your company.
Fair use: under the “fair use” doctrine, others are allowed to copy limited portions of your company’s works to create derivative works such as scholarly/news reports, commentary, and criticism, without your company’s permission. How much of a work is permitted to be copied under fair use depends upon the specific circumstances and takes into account the use’s purpose and the impact on the market for the original work.
Concepts, Ideas, Prototypes, Models
Know-how, Recipes, Processes, Software, Customers
Brands, Logos, Ads, Jingles
Writings, Photos, Drawings, Artwork, Sculpture, Audio, Video
I have experience with these technologies and more:
Operating systems, controls, applications, databases, user interfaces, embedded systems, automation
Medical devices, automotive, aerospace, defense, construction, machinery, mining, MEMS, tools, consumer products, sporting goods, ballistics, toys, food production, manufacturing processes
Finance, economics, marketing, e-commerce, insurance, statistics
Properties, uses, processing, alloys, coatings
Chelates, catalysts, polymers, inorganics, nano-tech, processing
Medical devices, pharmaceuticals, nutraceuticals, biochips, bioinformatics, bioremediation
Michael Haynes PLC can provide any of the following IP-related services:
For IP Asset owners, my counseling services address:
Additional counseling services target:
Upon completing a professional IP audit, your company will gain a thorough understanding of the status of its IP (and potentially, all of its intellectual assets). In particular, a professional IP audit will systematically review how well your company has been respecting its own IP and other’s IP by:
Such a professional IP audit can help optimize your company’s IP power by:
Utilizing professional patent searchers, I provide:
A basic State-of-the-Art search typically provides copies of in-force patents covering the basic subject matter of interest.
Depending on needs, the search can return a sampling of the patents in the basic subject matter area, or nearly all of those patents plus expired patents (a.k.a., a “collection” search).
Advanced searches can include searching websites, newsgroups, English-language non-patent literature, and/or foreign-language patents, applications, and literature.
A basic patentability search typically begins with brief communications between the searcher and one or more of the innovators to:
A basic search typically includes searching for relevant U.S. patents, U.S. applications, and PCT patent applications. By relevant, I mean published documents that potentially describe how to implement the innovative concept your company wants to claim (and therefore own).
Advanced searches can include searching websites, newsgroups, English-language non-patent literature, and/or foreign-language patents, applications, and literature.
Before a product or service is brought to market, most well-counseled entities obtain clearance searches and opinions to avoid infringing the patent rights of others, and/or to insulate against allegations of willful infringement.
A basic clearance search typically includes searching the most related technology areas for in-force (and possibly expired) U.S. patents with claims of interest.
Advanced clearance searches can include searching for U.S. patents classified beyond the technology area of the product of interest, and/or obtaining the prosecution history of any relevant patents.
Upon suspicion or notification that a patent owner might or has alleged that a product or service infringes the owner’s patent, most well-counseled entities obtain a non-infringement search and opinion to determine if the infringement claim has merit, and/or to insulate against an allegation of willful infringement.
A basic non-infringement search typically includes searching the most related technology areas for in-force (and sometimes expired) U.S. patents with claims of interest.
Advanced non-infringement searches can include searching for U.S. patents classified beyond the technology area of the product of interest, for patents having “blocking” claims, and/or obtaining the prosecution history of any relevant patents.
When most well-counseled organizations suspect that their product or service might fall within a claim of another’s patent, they obtain an invalidity search and opinion to determine if the patent’s claims are valid, and/or to insulate against an allegation of willful infringement.
A basic invalidity search typically is preceded by obtaining a copy of the patent of interest along with a copy of its prosecution history (the entire collection of correspondence between the applicant and the USPTO). Also, any patents or printed publications cited on the face of the patent can be obtained.
If the search is still needed, the searcher can review and obtain copies of additional relevant references, such as uncited U.S. patents, English-language foreign patents, and English-language non-patent literature, that can serve as prior art against the patent of interest.
Advanced searches can include searching websites, newsgroups, English-language non-patent literature, and/or foreign-language patents, applications, and literature.
If necessary, copies of uncited non-English-language patents and non-patent literature can be searched and obtained.
In certain cases, additional investigation might be necessary to identify invalidating prior art and/or activity.
I provide searches of both word and logo marks that can identify:
I can also provide information useful for determining:
Patent publications can serve as signals of emergent technologies, companies, and competitors. Fortunately, various analytical and visualization techniques have evolved to help spot those signals relatively easily. For example, similar to patent search software mentioned above, monitoring services are offered that can provide your company with periodic reports of new patent publications that mention a specific keyword, are classified within an identified technical field, and/or are associated with a particular company, innovator, or earlier patent publication.
Similarly, visualizations can be provided that compare information from patent publications across different points in time, thereby allowing important changes to be identified, such as trends regarding technologies, innovators, and/or patent owners. For example, by tracking innovators associated with patent documents linked to a given patent owner over time, your company can identify not only that company’s most prolific innovators, but also its emerging ones. Your company can even determine who in that company probably knows the most about a given concept. Such insights can be invaluable when seeking to attract the “best and brightest” to join your company or when trying to assess vulnerabilities in a competitor, such as when they lose a key innovator to retirement.
As another example, by tracking the concepts described in a competitor’s patent publications, your company can discern that company’s strategic initiatives, including those of greatest threat to your company, often long before those strategies become apparent in the marketplace. Such timely awareness can allow your company to take appropriate counter-measures, such as innovating blocking concepts and filing patent applications that “wall-off” the competitor, potentially encouraging them to abandon their threatening research and development efforts.
By tracking recent entrants to a field of particular interest to your company, we can help you spot innovative startups and small competitors that might make good acquisition or investment targets. Partnering with and/or purchasing such businesses, or buying or licensing their innovations, can help you rapidly improve your company’s product offerings, with much lower risks of R&D failures. Similarly, investing in such firms can provide your company with opportunities to guide nascent technologies while earning above-average returns.
As another example, analyzing the patent publications of potential suppliers can help your company learn of potential solutions to long-standing market needs well before those suppliers are ready to offer completed solutions to the marketplace (including to your competitors). Thus, by joining forces with such suppliers while they are still honing their innovations for the marketplace, your company can guide the supplier to providing an optimized solution for the needs of your company and its customers. Moreover, by gaining advanced notice of its supplier’s innovations, your company potentially can secure an exclusive licensing arrangement with that supplier, possibly locking-out competitors from accessing that supplier’s most important innovations or from competing directly against your company’s solutions that implement those innovations. The supplier might even be willing to sell to your company their patent(s) to the innovation, or even its entire development team.
A careful review of the relevant patent landscape can help your company identify those patents that your current and/or potential product offerings might infringe. With such patents identified, further analysis can identify whether any patents of concern have sufficient vulnerabilities to allow your company to proceed with much reduced infringement liability risk, or whether cost-effective design-arounds, or possibly taking a license, might be the more prudent approach. I also can research the litigation history of a given patent owner, to learn whether they are likely to ignore, negotiate with, or attack perceived infringers.
Nearly every business activity (particularly those involving IP) is motivated by a desire to obtain an acceptable financial profit (or “return”) on the expenses invested in that activity.
Yet every such business activity is also accompanied by one or more risks that, if realized, will financially impact the costs of the activity and/or the return from that activity.
A desired profit can be quantified as a Return on Investment (or ROI), and its accompanying risks can be quantified as a percentage that discounts or adjusts the ROI to reflect the impact of these risks. The result is a risk-adjusted return on investment.
By comparing risk-adjusted return values for different scenarios and/or intellectual properties, your company can determine which scenarios and intellectual properties to pursue.
Although an analysis of other metrics, such as break-even time and free cash flow, is sometimes critical, such metrics are tightly correlated with risk-adjusted return, and easily can be determined based on the same fundamentals used to determine risk-adjusted return.
Given that costs, returns, and risks can be quantified, and their approximate timing estimated, relying on your company’s input and my legal, technical, and business background, I can determine a range of Risk-Adjusted REturn on Investment (“RARE”) values, associated with protecting and exploiting each of your company’s intellectual assets. Comparing these RARE values to ROI thresholds for the corresponding type and/or development stage of the IP and/or business can provide a reasonable quantitative foundation for your company to decide whether to continue or cease investing in any given intellectual property. Your company should periodically update each intellectual property’s RARE valuation so that your company can easily decide which path optimizes your company’s investment in that IP.
In the patent realm:
A basic State-of-the-Art opinion typically describes the coverage of in-force patents covering the basic subject matter of interest. The opinion also can identify apparently unexplored areas that might be ripe for innovation and patenting.
Depending on needs, the opinion can describe the coverage of a sampling of the patents in the basic subject matter area, or nearly all of those patents plus expired patents (a.k.a., a “collection” opinion).
Advanced opinions can also describe the coverage of information disclosed via websites, newsgroups, English-language non-patent literature, and/or foreign-language patents, applications, and literature.
A basic patentability opinion typically identifies whether any single reference (or a legally allowable combination of references) discloses or suggests the invention of interest, thereby defeating the patentability requirements for inventions.
Advanced opinions can be coupled with exploring with the client and/or innovators possible avenues for enhancing or extending the invention to move it toward patentability.
A basic clearance opinion typically briefly distinguishes those patent claims that are most closely related to the major or critical features of the product or service of interest.
Advanced clearance opinions can include suggestions for permissibly “designing around” troublesome claims. Also, when designing around is undesirable, a non-infringement or invalidity opinion often can be provided.
For clients concerned that their product or service might infringe another’s patent, I often can provide a non-infringement opinion that relieves the concern and/or insulates against an allegation of willful infringement.
A basic non-infringement opinion typically distinguishes those patent claims that are most closely related to the major or critical features of the product or service of interest.
Advanced non-infringement opinions often dwell deeply into the prosecution history of troublesome claims, and in certain situations might rely upon well-respected literature (such as dictionaries and/or treatises) and/or technical experts. Other advanced non-infringement opinions can include suggestions for permissibly “designing around” troublesome claims.
When needed, an invalidity opinion can be provided as well.
For clients concerned that their product or service might fall within the claim of another’s patent, I often can provide an invalidity opinion that relieves the concern and/or insulates against an allegation of willful infringement.
A basic invalidity opinion typically depends upon references that are prior art to the patent claim of concern, and/or the prosecution history of that claim, to identify why the claim fails to legally meet the patentability requirements.
A more advanced opinion might rely upon evidence of prior art activities and/or statutory bar activities.
In some situations, the opinion can explore potentially illegal activities by those associated with the patent that might lead a well-informed court to issue a judgment that all of the claims of the patent are unenforceable.
In the trademark realm:
In the copyright realm:
With the exception of trade secrets, each form of intellectual property can be protected via preparing and filing an application with the appropriate federal agency.
Although it is possible for the layperson to prepare a patent or trademark application, usually such an approach is not recommended, since the laws and procedures can be very complex and have changed frequently in recent years.
How is a Patent Application Typically Prepared?
With a solid innovation disclosure and a strong patentability search report in hand, and working closely with the innovator(s), I often can relatively rapidly prepare and file a non-provisional patent application that not only will meet with eventual approval by the relevant patent office, but also will result in an issued patent that is easily recognized as being highly likely to survive the rigors of litigation, and thus will be respected by competitors without the need to litigate over infringement, validity, or enforceability.
What are the Steps for Preparing a Patent Application?
With a well-written innovation disclosure and solid patentability search in hand, and working closely with the innovator(s), a highly experienced and competent patent attorney often will be able to relatively rapidly prepare and file a patent application that not only will meet with eventual approval by the relevant patent office, but also will result in an issued patent that is easily recognized as being highly likely to survive the rigors of litigation, and thus will be respected by competitors without the need to litigate.
To prepare such a strong non-provisional patent application, these are the general steps that your patent attorney will typically follow:
I often can relatively rapidly determine if a mark is likely to be deemed federally registerable, and prepare and file a suitable registration application.
Generally, the steps for preparing a federal trademark application are:
Generally, the steps for preparing a copyright application are:
Patent applications and registration applications are generally “prosecuted” or advanced, before the appropriate governmental agency, such as the Patent and Trademark Office in the U.S. Without substantial skill and legal training, numerous strategic and/or legal errors can be made during prosecution, potentially deeply undermining or limiting the legal rights embodied in any eventually issued patent or mark registration.
How is a Patent Application Typically Prosecuted?
Once a non-provisional patent application is filed with the USPTO, it enters the “prosecution” stage, during which it is examined (usually after considerable delay) by an “examiner”, who often challenges the validity of the originally-filed claims using various “rejections”, some of which can be based on alleged prior art references. Via the patent attorney’s skilled amendment, rebuttal, and/or negotiation with the examiner, the application can eventually emerge as an issued patent.
During prosecution, the application might be amended and/or re-filed (yet keep the benefit of its original filing date). When appropriate, a final decision of the examiner might be appealed. For a minority of applications, the applicant might decide to abandon further prosecution. There are numerous other contingencies possible, thereby making a detailed explanation of the prosecution stage rather long and tedious.
The general process for prosecuting a U.S. patent application is:
Once a registration application is filed, it enters the “prosecution” stage, during which it is examined by the USPTO-assigned Examining Attorney (“examiner”), who might challenge the application for any of a number of reasons.
Via the attorney’s skilled rebuttal, argument, amendments, and/or negotiation with the examiner, the examiner’s challenges are typically overcome, and the application is published for Opposition, during which third parties can (but rarely do) provoke a litigation-like procedure to prevent registration of the mark. Assuming the mark survives the Opposition phase (as the vast majority do), the examiner will issue either a Certificate of Registration or a Notice of Allowance. In rare cases, a final refusal by the examiner might be appealed. There are numerous other contingencies possible, thereby making a detailed explanation of the prosecution stage rather long and tedious.
The general prosecution process for a registration application is:
1. The USPTO checks the application for conformance with all formalities.
2. The USPTO forwards the application to an examiner.
3. After a substantial delay (typically 6 to 12 months), the examiner reviews the application. That review typically includes a search for whether a conflict (i.e., a likelihood of confusion) exists between the mark in the application and another mark that is registered or pending in the USPTO.
4. The examiner prepares and mails an “Office Action” explaining why the examiner believes the mark to be unregisterable, for example, because the mark:
Creates a likelihood of confusion with another mark;
Is primarily merely descriptive of the goods/services;
Is deceptively misdescriptive of the goods/services;
Is geographically descriptive or misdescriptive of the goods/services;
Is primarily merely a surname; and/or
Is ornamental.
5. The USPTO’s Trademark Manual of Examining Procedure (TMEP) describes other potential objections, including:
The identification of the goods/services is indefinite;
The classification is incorrect; and/or
The specimen is defective.
6. The Applicant’s attorney reviews the Office Action, and skillfully prepares a Response to the Office Action. The Response might rebut the examiner’s approach, amend the application, and/or present arguments challenging the examiner’s position.
7. Once the examiner becomes comfortable with the application, the examiner approves the mark for publication by the USPTO in its Official Gazette. Upon publication, anyone who believes they will be damaged by registration of the mark can file an Opposition to the registration. If an Opposition is filed (which is rare), an Opposition proceeding is held before the Trademark Trial and Appeal Board.
8. Assuming the mark survived the Opposition phase (as most do), if the application is based on Use, within about 12 weeks from Publication, the USPTO registers the mark and issues a Certificate of Registration. At this point, the owner of the mark can use the symbol ® with the mark.
9. Assuming the mark survived the Opposition phase (as most do), if the application is based on an Intent to Use, within about 12 weeks from Publication, the USPTO issues a Notice of Allowance. The Applicant then has 6 months to either use the mark in interstate commerce and submit a Statement of Use (including the required specimens), or request a 6 month Extension of time to file the Statement of Use. Additional Extensions can be sought every 6 months to obtain a maximum of 30 months (the original 6 months plus 24 months of extensions) from the Notice of Allowance to file the Statement of Use. If a satisfactory Statement of Use is not then filed, the application becomes abandoned.
10. Assuming the examiner approves the Statement of Use, the USPTO registers the mark and issues a Certificate of Registration. At this point, the owner of the mark can use the symbol ® with the mark.
The need for negotiations and dispute resolution relating to intellectual assets can arise in any of numerous contexts, such as when:
Through my knowledge, experience, and proven techniques, I help my clients achieve their primary objectives, while preserving the business relationship, and optimizing the return from the intellectual assets.
The variety of potential business agreements involving intellectual assets and/or the property rights in such assets is simply astounding. Nevertheless, certain business scenarios appear with such frequency that tools and rules of thumb for crafting relevant agreements have emerged that often can smooth the way and avoid many potential pitfalls. I have substantial experience dealing with these, and many other scenarios.
Before describing some of the most common scenarios, it is helpful to note that rights in an intellectual property asset generally arise in the creator of that asset. Thus, it is common for a company to need a written agreement to ensure that rights in an employee-created IP asset are transferred to that company. Rights in jointly-created IP assets can sometimes raise difficult issues. For example, a company might need to buy-out a joint owner to completely control the rights in an IP asset.
Perhaps the most common scenario is the need to disclose a trade secret or confidential information to someone outside the control of your company. In this situation, a Confidentiality or Non-Disclosure Agreement (NDA) is frequently relied upon. Key to many such agreements can be a clear identification of what confidential information must be kept secret, and what uses are allowable for that information. Other strategic considerations include requiring the disclosing party to mark all written materials as “confidential” and to summarize all confidential information disclosed verbally within a specific time frame after disclosure.
Closely related is the Employment Agreement (and its cousin, the Consulting Agreement). These agreements typically include confidentiality provisions, as well as requirements for assignment of intellectual property rights, assistance with obtaining and protecting intellectual property rights, and possibly a non-compete and/or non-solicitation clause.
Assignment clauses can require that founders, employees, contractors, and/or business partners assign their intellectual property rights to your company. Yet difficulties can emerge when, for example, the resulting assignment documents are drafted incorrectly, sought at the wrong time, or recorded improperly.
When entities agree to work together to research and/or develop technologies and/or products, they typically enter a Joint Development Agreement, which, in addition to the provisions described above, usually spells-out how jointly created innovations, discoveries, and information will be owned and handled.
Once an entity obtains intellectual property rights, it can retain those rights, yet authorize others to exploit some of them, via a Licensing Agreement (or “License Agreement”). The terms of such agreements can vary substantially depending on, for example, business needs, the type of intellectual property involved, the specific rights licensed, and/or the industry. An “exclusive” license allows only a single licensee to exploit the identified right, while a “non-exclusive” license allows each of multiple licensees to do so.
Disputes can arise, for example, in the process of negotiating an agreement involving intellectual property rights, or after such an agreement is in place. Yet careful agreement drafting, and reliance on professional dispute resolution techniques, can avoid litigation while preserving the business relationship and maximizing the value of the intellectual property rights.
Michael N. Haynes has been working in the field of intellectual property for over 30 years. Mr. Haynes is a registered U.S. patent attorney whose practice encompasses all aspects of intellectual property, including procurement, counseling, licensing, and litigation.
In his procurement practice, Mr. Haynes has prepared over 1000 U.S. and international patent applications, and prosecuted over 1500, in a diverse range of technologies that include electronics, computer hardware and software, optics, telecommunications, business methods, medical devices, machinery, pharmaceuticals, and chemical compositions. In his counseling practice, he has rendered numerous strategic, patentability, non-infringement, invalidity, and due diligence opinions. Moreover, Mr. Haynes has drafted, reviewed, and negotiated many dozens of licensing, confidentiality, and employment agreements. He has litigated 12 U.S. and several foreign patent infringement cases, and a handful of other intellectual property cases, filed in various U.S. district and appellate courts.
Mr. Haynes brings over a decade of engineering and management experiences to his intellectual property law practice. After providing engineering support for 2 years in a large Dominion Resources power generating facility, he worked for 9 years for The Dow Chemical Company in a variety of roles, including project manager, computer aided engineering specialist, and senior mechanical engineer. He also served Dow as a manufacturing quality supervisor, interacting with major clients including GM, Ford, Honda, Whirlpool, and 3M to solve technically challenging quality problems involving injection molded plastics. Moreover, Mr. Haynes been assisting businesses in assessing and implementing computer hardware and software technologies since 1983.
Early in his legal career, Mr. Haynes served as a partner for LeClair Ryan in Charlottesville, Virginia, and as a patent associate with Kenyon & Kenyon and with Howrey & Simon, both in Washington, DC. He began drafting patent applications in 1994 and became registered to practice before the USPTO in 1995.
Mr. Haynes graduated in 1996 in the top 10 percent of his class at Franklin Pierce Law Center (which is now part of the University of New Hampshire), which then and now offers one of the strongest intellectual property law programs in the world. He also earned a BS in Mechanical Engineering in 1984 from Virginia Tech, an MBA in 1990 from Central Michigan University, and an MS in Electrical and Computer Engineering in 2003 from Johns Hopkins University.
Mike lives with his wife and children in Northern Virginia.
It’s probably fair to say that Mike Haynes is broadly experienced. Now in his 31st year in the intellectual property field, Mike has been degreed as a patent lawyer since 1996, a manager since 1989, and an engineer since 1984.
Mike started very young. He has been an entrepreneur since 1970, a computer programmer since 1975, and a systems architect since 1984.
Speaking of experience, as many companies eventually learn to their great dismay, some patent attorneys who prepare and prosecute patent applications have little to no experience with patent or trademark litigation. Yet Mike has deep and broad real-world experience and formal education in both patent and trademark litigation, including very heavy involvement in 12 patent litigations (8 U.S. and 4 foreign), along with lighter involvement in many more IP litigations.
Because of his solid patent litigation background, Mike knows and appreciates how patent law is developing. For example, above and beyond his formal legal education, Mike has read nearly every Federal Circuit and Supreme Court patent decision issued within the past 20+ years (roughly 5000 decisions). These are the courts that have the final say on U.S. patent law, and when they change directions, Mike Haynes knows it, and changes direction as needed, right away.
Mike also has extensive experience with agreements, licensing, and opinions. Mike has drafted and negotiated hundreds of employment, non-disclosure, assignment, and other agreements, including dozens of licensing agreements, some valued at well over $100,000,000. In his counseling practice, Mike has rendered numerous strategic, patentability, non-infringement, invalidity, and due diligence opinions.
Mike has integrated his vast experience into the preparation of over 1100 patent applications, of which over 1000 were U.S. patent applications. He also has prosecuted over 2000 patent applications, at least 1500 of which were U.S. patent applications. And his work has been fruitful. Over 1500 patents have issued based in some part on Mike’s preparation and prosecution work, in over 45 countries, in a highly diverse range of technologies.
And the bounty isn’t limited to patents. Mike has filed over 125 U.S. trademark registration applications, and prosecuted an equal number. Currently, at least 150 registered trademarks are related to Mike’s work.
Secured by Mike’s valuable IP work, a number of his startup and early-stage clients have been very successful, achieving successful multi-million dollar exits that netted those clients over $250,000,000 in total.
Mike’s business skills are rock solid. Although most patent attorneys have little to no formal business education, Mike Haynes holds an MBA with course work in finance, marketing, strategy, accounting, information systems, human resources, economics, statistics, and management.
Likewise, while most patent attorneys have not planned, started-up, or managed a business, Mike Haynes has a deep and broad real-world experience in each of those areas, along with: product research, innovating, and product development; business development, marketing, and sales; capitalization, taxation, and accounting; manufacturing, operations, and administration; and finally, management information systems.
And in contrast with most patent attorneys who have personally brought no products to market, Mike has developed, produced, and/or marketed businesses based on legal services, software development, plastic resins, specialized consumer products, rare coins, print media, food products, and more. He has created and run 3 profitable businesses on his own, and has a fourth currently incubating.
Mike gained his legal skills through assignments that have included:
Starting in 1994, during his initial year of law school, Mike learned to draft patent applications first-hand while working for a very bright, experienced, local patent attorney. Mike earned his patent registration number in 1995, and continued learning the details of patent drafting and prosecution from some of the best in the business while working for premier, world-renowned patent and litigation firms.
Prior to embarking into the world of intellectual property, Mike spent over a decade gaining real-world technical experiences. For example, he spent 9 years with The Dow Chemical Company in a variety of engineering and managerial roles. Also, Mike worked 2 years in technical roles in the electrical power industry starting in 1980. Moreover, Mike has assisted businesses in researching, assessing, and implementing computer technologies for over 40 years.
Among patent attorneys, Michael N. Haynes has an unmatched formal education, including graduating in 1996 with a Juris Doctorate (JD) in the top 10% of his class at the Franklin Pierce Law Center, which continues to offer one of the highest-ranked intellectual property law programs in the country.
In addition to his law degree, Mike has earned a Master of Science in Electrical & Computer Engineering from The Johns Hopkins University (3.6 GPA), a Master of Business Administration from Central Michigan University (3.6 GPA), and a Bachelor of Science in Mechanical Engineering from Virginia Tech (3.6 GPA in his major).
Since joining the legal profession, Mike has served many in the Fortune Global 1000, including such well-known companies as AT&T, Siemens, Intel, Apple, Sony, Sun, Nokia, Samsung, Black & Decker, Procter & Gamble, Tyson Foods, Boston Scientific, Wells Fargo, Lockheed Martin, Texaco, Tyco, Beckman, Monsanto, Mattel, Toyota, LucasArts, Daimler-Benz, Fisher-Price, and Huffy. His clients have also included many smaller businesses, start-ups, and even a major university.
To even better serve his clients, in 2002, Mike launched and continues to run his own law firm, Michael Haynes PLC. Mike and his entire team are deeply committed to providing peerless client service.
For example, to accelerate responsiveness and drive down clients’ costs, Mike has extended his vast legal, management, and technical experiences while developing powerful office processes and innovative software that his superbly talented team relies on each day. Mike’s fully paper-less office allows for immediate and secure access to any relevant client information, thereby avoiding delays, lost paperwork, and paper storage costs. Going further, Mike requires foreign counsel to send all communications and documents electronically, thereby avoiding unnecessary delays and charges for paper handling, filing, scanning, postage, and couriers, etc. In return, his firm pays over 99% of its bills within 3 business days of receipt.
As another example, no matter whether large or small, rather than dumping any client on a new, under-trained, or inexperienced attorney, Michael Haynes PLC instead provides every client with direct and prompt access to a dedicated, deeply-experienced patent attorney – Mike himself. And instead of sticking clients with substantial overhead costs for: prestigious high-rent downtown addresses in New York or DC; opulent atriums, polished marble flooring, and fine wood paneling; or hordes of under-utilized staff, Michael Haynes PLC is dedicated to incurring minimal overhead. For example, the firm runs entirely virtually and remotely, and therefor has no reception areas, conference rooms, libraries, or even file rooms. In fact, the firm utilizes no commercial office space at all. And as explained above, because the firm runs on highly efficient paperless operations, except in extreme cases, there are no separate charges for copies, postage, couriers, etc.
Mike and his firm focus exclusively on empowering each client’s IP portfolio. For example, so that his clients stay well-informed, Mike periodically provides his clients with free IP Progress Reports listing the status of their intellectual assets and other matters. He also timely sends monthly invoices providing detailed descriptions of all work performed. For those clients who desire it, Mike can periodically generate updated valuations of each of the client’s mission-critical intellectual assets, estimating expected investments, risks, and returns for any desired scenario, so that the client can easily determine when further investment appears unjustified given a desired risk-adjusted return threshold. In addition, he can periodically audit a client’s intellectual assets, IP portfolio, and related processes, prioritize those that are truly critical to the mission of the company, and teach his client how it can better manage those mission-critical items.
I am excited to announce that the third edition of my book, “Empowering Intellectual Property – Best Practices for Innovators, Entrepreneurs, and Investors” is available on Amazon.
This extensively updated and expanded edition presents a rather complete summary of best practices that can help position your company to extract the maximum return from its IP, avoid wasting thousands of dollars and hundreds of hours, and bypass unnecessary risks that can destroy value.
Some early reviews of this edition include:
“Comprehensive, Integrated, and Excellent! The IP equivalent to the Physicians Desk Reference.”
– Michael Appleby, Founder & Former CEO,
Mikro Systems, Inc.
“Very helpful to first-time inventors.”
– Hazel Szeto, MD, PhD, Professor of Pharmacology,
Weill Medical College of Cornell University;
Founder, Stealth Biotherapeutics
“Transcends basic advice, equipping you with essential tools to minimize risks and enhance value throughout the IP process.”
– Neil Jackson, Founder & CEO,
N Brereton Medical Technologies LLC
“Not only for those who are making their first foray into intellectual property, but also a great resource for experienced inventors and entrepreneurs.”
– Victor Iannello, PhD, Founder & CEO,
Synchrony, Chorda Pharma, & Radiant Physics
“Anyone contemplating starting a business, or identifying, creating, or protecting IP, should buy this book.”
– Robert A. Cooke, Co-Founder & Director,
Improving Global Health, Inc.
“Provides a 360-degree view of IP, how to protect it, and how to use it to business advantage.”
– Kumar Kandasamy, PhD, Founder & CEO
Enabled Engineering
I’ve also published two companion titles, “Empowering Patents” and “Empowering Marks” highlighting some of the fundamental ideas from the more comprehensive “Empowering Intellectual Property” volume.
If you enjoy the book(s), please leave a rating and/or review on Amazon – it would mean a lot to me.
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