Practice Areas – Kaplan Intellectual Property Law

Patent search reports, analyses, and opinions with regard to novelty and obviousness issues
Patent search reports, analyses, and opinions with regard to validity and infringement issues
Patent field of art searches, reports, analyses, and opinions
Coordination of client research, development, and engineering efforts with legal efforts in order to maximize patent coverage
Non-disclosure/confidentiality agreements
Preparation and filing of initial disclosure documents with the United States Patent and Trademark Office
Preparation and filing of domestic and international patent applications
Prosecution of domestic patent applications before the United States Patent and Trademark Office
Prosecution of international patent applications before the WIPO
Reissue and reexamination of patents
Association of, and cooperative exchange of information with, foreign patent counsel for international cases
Appeals before the United States Patent and Trademark Office and the various appellate courts
Transfer, assignment, and licensing transactions for patent and patent pending properties within and across private, academic, and government sectors

Assistance to clients in development and implementation of branding strategies and enforcement
Trademark search reports, analyses, and opinions with regard to registerability and use issues
Trademark search reports, analyses, and opinions with regard to validity and infringement issues
Preparation and filing of trademark applications
Prosecution of trademark applications before the United States Patent and Trademark Office
Association of, and cooperative exchange of information with, foreign trademark counsel for international cases
Appeals before the United States Patent and Trademark Office and the various appellate courts
Trademark watch and maintenance services
Transfer, assignment and licensing transactions for trademark properties
Trade dress issues
Unfair competition issues

Copyright search services
Preparation and filing of copyright applications
Prosecution of copyright applications before the United States Copyright Office
Association of, and cooperative exchange of information with, foreign copyright counsel for international cases
Transfer, assignment and licensing transactions for copyright properties
Work-for-hire agreements
Copyright ownership enforcement & infringement disputes
Opinions regarding fair use

Patent applications for software, hardware, and business methods
Copyright registrations for software, related documentation, text, graphics and images on the Internet
Trademark registration and enforcement to meet software and hardware branding requirements
Development of client-specific licensing models
Licensing agreements, including shrink-wrap (i.e., software license contract inside box of software), click-through, and negotiated agreements
Software and hardware development, procurement, and implementation agreements within and across private, academic, and government sectors
Legal aspects of e-commerce development, implementation, and transactions; associated agreements
Internet agreements

Non-Disclosure/ confidentiality agreements
Determinations and recommendations as to maintaining confidential information and technologies as trade secret versus seeking patent or copyright protection
Development of business procedures, conducting of audits, and conducting of employee/ staff training seminars for the protection and securing of trade secrets and know-how
Transfer, assignment, and licensing transactions for trade secret properties within and across private, academic, and government sectors
In the area of technological licensing, an integral part of our attorneys’ casework entails:
Due diligence investigations, reports, analyses, and opinions
Development of client-specific licensing models
Development of business procedures, conducting of audits, and conducting of employee/ staff training seminars for the identification of protectable and licensable intellectual properties
Negotiation and preparing transfer, assignment, licensing, and cross-licensing transactions for intellectual properties within and across private, academic, and government sectors
Legal aspects of license compliance and enforcement

E-commerce and Internet agreements
Branding identification, protection, and enforcement in e-commerce environment
Patent applications for software, hardware, and business methods
Copyright registrations for software and related documentation
Development of client-specific licensing models
Licensing agreements, including shrink-wrap (i.e., software license contract inside box of software), click-through, and negotiated agreements.
Software and hardware development, procurement, and implementation agreements within and across private, academic, and government sectors