Vondran Legal® - Patent Law Services [Registration | Litigation | Arbitration | Licensing]. You have great ideas, we have IP solutions!
Vondran Legal is a full service boutique IP law practice with offices in California and Arizona. We help creators, inventors, technology gurus, creative artists, entertainers, video and film makers and others in a wide variety of intellectual property matters. For example, we have counseled and advised in the following areas:
- Non-disclosure agreements (NDA)
- Work for hire
- Non-compete agreements
- Copyright registration
- Counseling on music law agreements
- Entertainment management contracts
- Copyright infringement litigation (over 200 federal court cases)
- Software audits and licensing disputes (ex. Microsoft, Business Software Alliance, Autodesk, Vero, Siemens, Solidworks)
- Trademark registration
- Breach of contracts
- Boxing piracy settlements and litigation
- Trademark litigation
- Record label agreements
- Counterfeit product disputes
- Strike 3 Holdings, LLC - video infringement defense (BitTorrent litigation)
- Sports contracts
- Nagrastar / Dish infringement
- DMCA take-downs
- Respond to office action letters
- Subpoena response
- Video game unlicensed music disputes
- Jewelry infringement
- Apple infringement
This is just a sample of some of the things we have been doing since our founding in 2004.
Our Patent Law Services
- Our Mission is to help you "NAIL THE LANDING" -
Vondran Legal® provides patent registration*, licensing and litigation services in the following areas:
- Patent searches
- Provisional patents
- Patent application and registration (ex. design patents, software patents, business method, utility patents)
- Patent dispute & enforcement services (ex. arbitration, mediation, litigation) including licensing and "patent troll" defense
Patent Enforcement Services
Vondran Legal® can provide several different types of patent enforcement services, including services that can be customized to your needs and which can help your protect against patent infringement:
- Cease-and-Desist Letters - we can issue and respond to patent infringement cease and desist letters
- Patent infringement takedown notices (ex. to Amazon.com, Etsy, eBay and other online marketplaces, company websites, and even videos that promote or induce infringement).
- Settlement Negotiations - some intellectual property disputes are best settled by private (confidential) agreement or licensing by and between the parties.
Call us to discuss your needs at (877) 276-5084 or email us through our contact form.
Patent Infringement Litigation Defense & Dispute Resolution
If your company has received a patent infringement demand letter (many times from an IP law firm), lawsuit subpoena, summons and complaint or a takedown notice we can help review your case and respond as needed.
Some cases may involve what some people refer to as "patent trolls." These are companies that aggressively pursue enforcement of their exclusive patent rights and patent portfolios and some are referred to as "NPE"s (non-practicing entities - usually more interested in reaching settlements and obtaining licensing fees instead of making or selling patented inventions).
We can help companies and individuals defend patent infringement cases.
Call us if you need help responding to a letter, DMCA takedown, or federal court lawsuit.
Steps to take if you receive an infringement notice
Here is our general approach to responding to IP infringement letters (steps and responses may vary depending upon the circumstances of the case):
1. Do not ignore the demand letter. Do not call them, do not email them. Ignoring the issue many times does not deter the party seeking a settlement.
2. Hire IP legal counsel to review and analyze your case and potential defenses (ex. estoppel, not a valid patent (subject to cancellation)
NOTE: The US Patent Trial and Appeal Board (PTAB) can invalidate patents if it determines the claims of a patent are unpatentable. PTAB allows for a petition for "inter parties review" (“IPR”) to request cancellation of claims in a U.S. patent.
This is a potential option that should be analyzed.
3. Provide a thoughtful written response (request evidence, request proof of prior licensing, request an element-by-element explanation of their claims vs. alleged infringement, etc.)
4. Negotiate as may be required with opposing party
5. Defend in Court or consider a PTAB filing to cancel the patent if appropriate.
If you are dealing with a "Patent Pirate" or "Patent Troll" case contact us to discuss at (877) 276-5084 or email us through our contact form.
What is a Provisional Patent?
According to the United States Patent and Trademark Office ("USPTO"):
"A provisional patent application (PPA) is a patent application that can be used by a patent applicant to secure a filing date while avoiding the costs associated with the filing and prosecution of a non-provisional patent application. More specifically, if a non-provisional application is filed within one year from the filing date of a PPA, the nonprovisional application may claim the benefit of the filing date of the PPA. (Why filing dates for patent applications are important will be discussed below.) Because a PPA is not examined, an applicant can also avoid the costs typically associated with nonprovisional patent prosecution (certain attorney's fees, for example) for a year while determining whether his/her invention is commercially viable. Further, because a PPA is not made public unless its application number is noted in a later-published application or patent, the failure by an applicant to file a nonprovisional application based on his/her PPA will not lead to public disclosure of his/her invention.
Securing a provisional patent can be a low cost way of securing rights that allow you to seek to exploit your patent (potentially seek a licensor) and to "test the market" for your invention.
What is a "Business Method" Patent?
A business method patent (utility patent) may be obtained for a novel "way of doing business." For example, where a business method is tied to a technology or computer implementation.
According to Wikipedia:
"Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking and tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations."
Some examples Method Patents can include:
- Single-click eCommerce checkout
- Behavioral profiling
- A system for managing an inventory record by tracking the location of items of inventory in a warehouse
- Prepaid cell calls
- Anti-fraud ATM machine (a method of conducting a secure automated teller transaction with a financial institution by authenticating a customer's identity)
- A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
We offer low cost review of your invention to determine the potential IP protection that may be available.
What is a "Design" Patent?
According to Wikipedia:
"In the United States, a design patent is a form of legal protection granted to the ornamental design of a functional item. Design patents are a type of industrial design right. Ornamental designs of jewelry, furniture, beverage containers (Fig. 1) and computer icons are examples of objects that are covered by design patents."
According to the USPTO, a "Design" is:
Definition of a Design
"A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.
In discharging its patent-related duties, the United States Patent and Trademark Office (USPTO or Office) examines applications and grants patents on inventions when applicants are entitled to them. The patent law provides for the granting of design patents to any person who has invented any new, original and ornamental design for an article of manufacture. A design patent protects only the appearance of the article and not structural or utilitarian features.
They also mention things that DO NOT QUALIFY for a Design patent:
Improper Subject Matter for Design Patents
A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter under 35 U.S.C. 171. Specifically, if at the time the design was created, there was no unique or distinctive shape or appearance to the article not dictated by the function that it performs, the design lacks ornamentality and is not proper subject matter. In addition, 35 U.S.C. 171 requires that a design to be patentable must be "original." Clearly a design that simulates a well-known or naturally occurring object or person is not original as required by the statute. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent application (35 U.S.C. 171 and 37 CFR § 1.3).
Sometimes you will see artistic designs registered as a copyright and an infringement thereof resulting in a copyright infringement lawsuit.
What is the difference between a design patent and utility patent?
Here is an explanation from the USPTO website:
In short, it can be the difference between HOW SOMETHING LOOKS and HOW SOMETHING WORKS!
Can you get patent protection for Software?
Protect your software code
Yes, over the past few decades patent protection for computer software has become extremely important for many companies in the technology space. A few important cases illustrate the scope and limitations of federal patent protection for software:
- Diamond v. Diehr (Patentable claims do not become invalid because they include mathematical formulas)
- Computer Associates v. Altai (For a finding of copyright infringement, the protectable, nonliteral elements of one computer program must be very similar to the same elements in a second computer program).
- Lotus v. Borland (a computer menu command hierarchy is not copyrightable subject matter)
For more information about software patents, call us at (877) 276-5084 or fill out the form below.
What is the difference between a patent and a trademark?
When you think about trademarks, think about LOGOS, SLOGANS and COMPANY NAMES. These are the main things that are protected by Federal Trademark law. A patent is an invention - something new and novel (such as a new toy or sports training device, or a new software program or mobile application the world has never seen before. Inventions are protected by Patents. A patent can also include a Design Patent or a Business Method patent (see below for a further description). To learn more about trademarks, watch the video.
Some examples of types of works that may be subject to Patent protection include:
- video streaming technologies
- mobile application
- wireless telecommunications
- Computer games
- internet technologies
- database encryption
- computer graphics
- Artificial Intelligence software
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Vondran Legal IP News
Niq Howard, Esq. Joins Vondran Legal® Of Counsel
As a registered patent attorney with large law firm experience, Niq acquired experience prosecuting electrical and mechanical patents as well as a variety of other patents. He is a member of the bar in good standing in both Kansas and Missouri.
Call us to discuss your needs. In some cases, we can fix FLAT RATE LEGAL FEES. In other cases, we may be able to structure a working arrangement that is flexible to meet the needs of your company. Call us at (877) 276-5084 or email us through our contact form to have one of our lawyers contact you.