Practice Areas – Patent Counsel Group

Patent Counsel Group Practice Areas

The Patent Counsel Group is a Intellectual Property Law Boutique specializing in representing clients before the Patent &Trademark Office. Our approach is to assist clients in defining their technology and proprietary know-how and then obtaining the relevant intellectual property protection. We currently represent primarily mid size companies as well as entrepreneurial ventures.

We have extensive knowledge of U.S. Patent and Trademark Office Practice and our members, including John Gladstone Mills III and Don Cress Reiley together with Robert Highley have written extensively on patent practice and procedures. Their Apple treatises on this subject have been quoted by the United States Supreme Court and many other federal courts as authority in this complex legal area.

Our approach is provide the best possible service for achieving the grant of patent and trademark rights. Together, our attorneys have over 120 years of experience in the patent and trademark field and we leverage that experience to the benefit our clients. In view our extensive knowledge of patent office procedures, we expedite the application process for the most cost effective result.

Patents Trademarks Copyrights

Patents

The attorneys of Patent Counsel Group have extensive experience in drafting and prosecuting patent applications for clients seeing patent protection to establish or solidify their market position.

We handle the following patent services: drafting and prosecuting patent applications for computer hardware and software, medical devices, oil and gas applications, and chemical engineering. In conjunction with these services we also give patent validity opinions and patent infringement opinions.

In enforcing patent rights, we give patent infringement opinions and negotiate patent licenses with prospective users of our client’s patented technology. We also have experience in post grant review proceedings before the U.S. Patent & Trademark Office, including interferences which have now become derivation proceedings.

As may be required, we are prepared to litigate a client’s patent claims either in the U.S. District Courts or on appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC). The attorneys of Patent Counsel Group have had extensive experience in litigating patent rights of federal agencies including the U.S. Navy.

John Gladstone Mills has an active appellate practice coauthoring briefs in appeals before the United States Supreme Court, including Alice Corp. v. CLS Bank Corp. (concerning computer software patents), Kimble v. Marvel (concerning extinguishing patent license rights), and Cuozzo Speed Technology v. Lee (concerning the standard for construing patent claims).

For full text of these appellate briefs filed on behalf of the New York City Bar, see Court Briefs tab in the menu.

Trademarks

The attorneys of Patent Counsel Group have extensive resources to draft and prosecute our client’s prospective trademark and trade dress applications before the U.S. Patent and Trademark Office.

We handle the following trademark services: drafting and prosecuting trademark applications for diverse industries and entrepreneurial ventures.
We conduct trademark and service mark searches in the U.S. Patent and Trademark Office and from Computerized Databases.

In counseling our clients on trademark matters before the U.S. trademark office, we render trademark and service mark use opinions, federal registration opinions.

In counseling clients on enforcement of trademark rights, we render trademark and service mark infringement opinions and potential licensing opinions.

Through our work with U.S. federal agencies, including the U.S. Navy, we are experienced in handling inter-party trademark proceedings before the U.S. Patent and Trademark Office, including trademark opposition and cancellation proceedings.

As may be required, we are prepared to litigate our clients’ trademark claims in the U.S. District Courts and on appeal to the U.S. Courts of Appeals. We also have experience in arbitration proceedings to resolve contested matters and avoid the potential expense of court litigation.

Copyrights

The attorneys of Patent Counsel Group have extensive resources to register and protect our clients’ prospective copyrights with the U.S. Copyright Office.

We handle the following copyright services: procurement of federal copyright protection before the U.S. Copyright Office, including electronic databases, product designs, and software programs. We also handle the registration of semiconductor masks before the U.S. Copyright Office under the Semiconductor Chip Protection Act of 1984.

In negotiating our clients’ copyright protection, we render copyright use opinions, copyright infringement opinions, and copyright licensing opinions.

From our extensive experience in administering copyrights for federal agencies including the U.S. Department of Commerce and the U.S. Navy, we also negotiate and draft copyright licenses.

As may be required, we are prepared to defend and as well as assert our clients’ copyright interests against alleged infringers in the U.S. District Courts as well as on appeal to the U.S. Courts of Appeal. We also have experience in arbitration proceedings to resolve contested matters and avoid the potential expense of court litigation.