Implementing sound IP strategy starts with a clear understanding of the landscape. Our attorneys are equipped to advise our clients on various matters relating to IP. Company leaders count on our expertise to help them navigate complex issues and make informed decisions. Some of our counseling services include:

Portfolio Management

In addition to our notable patent procurement services, we partner with organizations to assist in the successful management of its IP portfolio.  Our systems and review processes allow us to continue to issue the highest quality patents and trademarks.

With the utilization of paperless digital filing systems by the USPTO, it has become easier to provide direct client access to client-related matters and timely report such matters.  If desired, we can work with clients to establish client-specific Customer Numbers and set up access to Private PAIR so our clients can access and review the current status of pending matters in their IP portfolios.

In addition, our firm uses a redundant docketing system through advanced software.  Docketed matters are continuously backed-up between multiple in-house offices, and on a daily basis, software extracts customer-specific data from PAIR, thereby keeping the docketing system up-to-date.  We adapt our docketing and reporting procedures to our client’s specific needs.

We are used to providing detailed reports for our clients.  By utilizing sophisticated software with extensive reporting capabilities, we can cull data and generate reports in a variety of formats and with short notice.  Our attorneys are equipped to analyze the data and draw conclusions that can be relied on to make executive level decisions on particular IP filing strategies.

Due Diligence

Conducting legal due diligence is an essential step for any company prior to finalizing major financial and business transactions.  IP Due diligence includes legal review and counsel on IP matters related to mergers and acquisitions, pre-suit investigations for infringement lawsuits, joint ventures, ownership transfer, validity analysis, product launches, and IP Audits.

We take pride in delivering accurate and reliable advice, which has helped our clients intelligently move forward in the marketplace.  It is no wonder why some of the world’s largest companies look to the attorneys at Schmeiser, Olsen & Watts LLP to navigate them through complex IP issues.  Feel free to contact us for a consultation.

Opinions Of Counsel

Business decisions sometimes require a legal opinion from a trusted professional. Our attorneys provide reliable and accurate legal opinions on various legal issues to assist your decisions.

Provided below are some common Opinions of Counsel we provide to our clients:

  • Patentability Opinion – a determination on the patentability of your invention based on a careful and detailed review of prior art references returned in a global search of the invention. Our quality Patentability Opinions outline a potential claim scope so that you fully understand the breadth of the patentability of your invention
  • Trademark Clearance – an opinion on whether your proposed trademark is registerable with the USPTO, based on a review of existing marks. Our Trademark Clearance Opinions are relied on by businesses so that they can confidently invest marketing and advertising resources in promoting their proposed mark before it is registered by the USPTO
  • Freedom-To-Operate (FTO) – an opinion on whether your company may proceed with selling a proposed good or practicing a method without infringing identified, relevant patents. The FTO assessment involves examining the claims and prosecution history of the relevant patents
  • State-of-the-Art Search – an analysis of the current landscape of a particular technology or industry, based on results from a global search of prior art and publications. The State-of-the-Art Search can be helpful for businesses to determine whether they should expand into a new field, plan a design around, or help predict trends in a particular industry
  • Invalidity Opinion – an opinion on whether a particular patent is invalid in view of prior art and other statutory bars. For more details, please visit our Invalidity Analysis page
  • Infringement Opinion –a detailed analysis and opinion whether an accused infringing device of method infringes your patent(s). To learn more about how we can evaluate infringement by a third party of your patent, please visit our Due Diligence page
  • Inventorship Determination – an investigation and report regarding the individuals who should be listed as inventors on a patent application. We know what critical questions to ask when determining who is legally considered an inventor
  • Ownership Issues – a legal analysis to determine ownership of a patent or patent application when filed with joint inventors or under a joint development agreement

We understand that various other IP issues arise during the course of conducting business that requires a legal opinion. Our attorneys are well-equipped to deal with those issues and provide you valuable legal counsel you can count on. Contact us if you require an Opinion of Counsel

IP Audit

A clear understanding of your company’s IP assets is critical. Our IP Audit services provide that understanding through evaluation of the IP assets owned by your company to help you learn how the IP is being used and to ensure that the best strategies are in place for managing and utilizing the IP.

Our IP Audit will examine factors such as ownership, lapsed rights, level of utilization of IP assets, validity of key patents, value and importance in the industry, life expectancy of the IP, and licensing and/or contract duties and obligations. The factors listed here and other factors to be examined depend on the scope of the IP Audit.

The skilled attorneys at Schmeiser, Olsen & Watts LLP can assist with an IP Audit of your company, providing legal insight specifically focused on IP strategy. Successful IP Audits require a blend of your business professionals and our IP attorneys, whom have the legal and technical background to quickly familiarize themselves with your core technology, and provide valuable conclusions. Please contact us if you are interested in performing an IP Audit.

Startup Counseling

We understand that early stage startup companies and emerging businesses must carefully budget the amount spent on protecting their innovation. This often dictates patent and trademark filing strategies domestically and even abroad.

We take pride in our ability to work with startup companies to develop filing strategies to best protect their innovation on a limited budget. Our attorneys have decades of experience successfully navigating startup companies during the early stages of IP protection. Please contact us to discuss economical ways to obtain a filing date prior to publicly disclosing your ideas.

IP Program Development

Every organization has its own IP culture with varying IP portfolio sizes. While some companies have sophisticated invention practices and procedures, others seek to improve or implement a procedure for cultivating innovation to enlarge their IP portfolio. We offer professional services and advice to help start or refine the process from conception to filing. This process may include educating your personnel on IP and legal issues, including detailed remote or in-person presentations, drafting documents for internal use, such as invention disclosure forms, and developing a ratings system for evaluating inventions and determining filing strategies. Each aspect of the program development is tailored to the specific needs and requirements of your company to realize your company’s goals in starting or growing an IP culture. Contact us to discuss how we can help.