Intellectual Property Matters

Patents. A United States patent prevents others from making, using, or selling a patented invention in the United States. The United States Patent & Trademark Office grants patents for three categories of inventions: utility patents, design patents, and plant patents.

Regarding patents, we can assist you with:

• patentability searching
• patent preparation, prosecution and maintenance
• consultation to other law firms in support of patent litigation and litigation appeals
• licensing and assignment agreements
• employee and independent contractor invention disclosure and confidentiality agreements
• technology development agreements

Trademarks. Trademarks and service marks include any word, name, logo, phrase or symbol used to identify the origin of goods or services. Trademarks can include a company name, the name of a service or product, or a product’s non-functional packaging, design or color.

Regarding trademarks, we can assist you with:

• trademark selection counseling
• preliminary and full trademark clearance research
• registration with the USPTO or state trademark offices
• post-registration trademark maintenance
• counseling regarding the proper care and feeding of trademarks
• serving as coordinating counsel for obtaining and maintaining trademark registrations in other countries; we can assist you with finding and hiring appropriate trademark counsel in other countries and can coordinate the activities they take on your behalf; we act as your single point of contact
• applying for trademark registration in countries other than the U.S. that also are members of the Madrid Protocol (John Farmer wrote columns on November 25, 2002, and October 27, 2003, about using the Madrid Protocol)
• watching for potentially infringing federal trademark applications submitted by others and for infringing trademarks used by others
• litigation representation in cases involving trademark infringement, unfair competition or false advertising; we can serve as your sole litigation counsel, or serve as coaches or co-counsel to your litigation counsel
• trademark licensing, trademark assignments, security interests in trademarks, trademark aspects of franchise agreements, and commercializing products that include trademarks
• Web domain name protection via trademark registration and auditing Web sites (for both trademark issues and for other intellectual property and other technology law issues).

Copyrights. Copyright law protects original works of authorship fixed in a tangible medium of expression. Copyrightable works may include books and articles, software programs, Web sites, photographs, songs, plays, drawings, motion pictures and architectural designs.

Regarding copyrights, we can assist you with:

• counseling regarding copyright law
• registration of works with the U.S. Copyright Office
• securing copyright ownership vis-à-vis employees and independent contractors
• licensing and assignment agreements (such as software licensing)
• counseling regarding open source software issues (John Farmer wrote a column published on May 24, 2004, on this issue)
• related Internet agreements (such as Web site development agreements)
• protection of Web site content (John Farmer wrote columns published on January 26, 2004, and January 27, 2003, on this issue)
• unsolicited submission policies
• infringement litigation and appellate matters.

Trade Secrets. Trade secrets are information that (1) is not generally known to the public, (2) has economic value because it has been kept confidential, and (3) has been subject to reasonable efforts to maintain its secrecy. Trade secrets may include software source code, production processes, marketing plans, customer lists, vendor lists, product and service ideas, business methods and financial information.

Regarding trade secrets, we can assist you with:

• trade secret identification and general protection
• creating trade secret protection policies
• “clean room” policies for research and development areas
• employee education
• confidentiality, non-compete and non-solicitation agreements for employees
• confidentiality agreements for independent contractors
• pre-negotiation non-disclosure agreements
• licensing and assignment agreements
• unsolicited submission policies
• misappropriation litigation and appellate matters

Other Matters. Often your intellectual property needs don’t fit into just one intellectual property category. We also can assist you with these issues:

• counseling regarding open source software issues
• software licensing, maintenance and escrow agreements
• software implementation and consulting agreements
• trade dress protection
• product development and manufacturing agreements
• intellectual property audits
• employment agreements
• employee education programs
• false advertising issues
• overall intellectual property policy development
• litigation and appellate matters regarding software issues

E-Commerce Matters

UCITA. Virginia enacted the Uniform Computer Information Transactions Act in 2001. John Farmer frequently speaks on UCITA at seminars. UCITA is an intricate statute that governs transactions in “computer information,” such as software. We can advise you on how it affects you, and how to comply with and take advantage of it.

Privacy. Every commercial Web site should have a privacy policy that complies with Federal Trade Commission guidelines and any relevant privacy laws and industry standards. Even if existing privacy laws don’t govern your company, failure to comply now with privacy guidelines could cause future problems with your use of data gathered online if privacy laws change.

Web Domain Name Protection. Your domain name may be your most valuable Web asset. We can assist with protecting your domain names through trademarking and with maximizing your ability to obtain new, desirable domain names (such as when new, top-level domain names are made available). We can assist you in recovering domain names from cyberpirates that should belong to you and with defending against illegitimate efforts to take your domain names.

Web Site Audits. The law affecting e-commerce changes and grows daily, and successful Web sites evolve constantly. We can perform a periodic legal audit of your site, so problems can be detected and remedies implemented before major liabilities arise.

Electronic Signatures. Federal and state laws authorize the use of electronic signatures for some agreements. We can guide you through the detailed requirements created by these laws.

Content Protection. We can register the copyrightable content of your Web site, to protect against misappropriation. We recommend a regular program of update registrations, in order to capture the evolving nature of your content.

Terms Of Use and Clickwraps. The law has evolved quickly on how to make online contractual terms enforceable. We can assist you in keeping up with the latest requirements.

Getting Connected. We can assist in negotiating Web development and hosting agreements, linking agreements, Web advertising agreements, and alliances and joint ventures.

Getting Noticed - Legally. Intellectual Property and unfair competition laws place some limits on technologies used for building Web traffic – use of spiders or bots, deep linking, spamming, metatags, framing, pay-for-play search engine listing, and ad-linking. We can advise you on the legality of such technologies and on how to defend against prejudicial use of them against you.

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