Patent Preparation and Prosecution in San Francisco, CA

The law firm of Dergosits & Noah LLP assists clients throughout the world with domestic and foreign patent preparation and prosecution. We have extensive experience handling provisional, utility and design patent applications from nearly every sector of technology, including life sciences, computer hardware and software, communication networks, artificial intelligence, internet systems and methods, automotive, medical devices and instrumentation, construction technology, consumer electronics, and clean technology research and development.

When a business or inventor creates an innovative process, device, or composition of matter, or they improve upon an existing item in a new and useful way; it is important to perfect patent rights as soon as possible, especially since the U.S. patent laws are now based upon a first to file system. For many of our clients, their patents are among their most important assets, and our goal is to help them maximize the value of this intellectual property in a strategic and efficient manner.

To accomplish this, the lawyers at our intellectual property law firm take the time to understand our clients' business and their financial and technological objectives, helping us to devise cost-effective patent strategies that are in line with their budget, product development timing, and overall goals. We can suggest a variety of options that help our clients defer attorneys’ fees and filing costs until market research justifies the investment in patent protection.

Managing Product Development

In many circumstances, before filing the patent application with the United States Patent and Trademark Office (USPTO), we conduct a thorough prior art search and analysis to determine whether the invention is actually patentable. Once we determine that a patent would likely be granted, we carefully prepare and prosecute the application, describing the invention in such a way that will maximize the protection granted.

In addition to preparing and prosecuting patents, our experienced IP litigation attorneys frequently pursue and defend patent infringement litigation on behalf of our clients. This litigation experience gives us unique insight into how patents can be challenged or avoided, enabling us to prosecute patents better to ensure maximum protection. Our extensive litigation background gives us the ability to handle any problems that arise during the preparation and prosecution process, including appealing adverse patent decisions to the USPTO's Patent Trial and Appeal Board.

Foreign Patents

In addition to prosecuting U.S patents, we frequently work with experienced patent attorneys from around the world to assist clients with securing patent protection outside of the United States. For more information about this aspect of our practice, please see the patent transactions page.

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Trademark Law in San Francisco, CA

Dergosits & Noah LLP assists clients nationally and internationally with clearance searches, trademark applications and registrations, and portfolio management, as well as securing international registrations and enforcement. We represent clients in litigation involving trademark and trade dress infringement throughout the federal courts.

Clearance

Before a trademark can be safely adopted, we perform clearance searches to determine whether the desired mark is available for adoption, use, and registration. By reviewing the search reports thoroughly, we can conclusively determine the extent to which a mark is already being used and whether its use would adversely impact our client's use and registration of the mark.

Licensing

Trademark licensing agreements can be complex, taking months to negotiate and finalize. We have extensive experience drafting agreements on behalf of both licensees and trademark owners. We will protect our clients' trademark rights while allowing them to capitalize on these valuable assets.

Prosecution and Filing

Once we adequately clear a particular mark for adoption, use and registration, we assist clients in preparing all of the necessary documentation and filing and prosecuting the application before the United States Patent and Trademark Office (USPTO), including Intent to Use and Use in Commerce applications.

Our clients often want to ensure their trademarks are protected in countries around the world wehere their products and services are sold. We frequently assist clients with filing trademark applications under the Madrid Protocol, which allows trademark holders to obtain protection in multiple countries by filing a single application. We also work with an extensive network of attorneys around the world to secure registrations in the countries where our clients do business.

Trademark Trial and Appeal Board Matters

Throughout the trademark registration process before the USPTO, other parties can challenge a trademark application or registration by filing an opposition or cancellation.

We regularly appear before the Trademark Trial and Appeal Board (TTAB) to defend opposition proceedings and pursue oppositions on our clients' behalf against other trademark applications. We also pursue and defend cancellation proceedings.

Newsletter

Keep your organization on the leading edge of innovation when you follow the latest intellectual property news in San Francisco, CA. Dergosits & Noah LLP is an IP litigation firm that provides clients with a wealth of resources.

The following news articles might be of interest to you as you research your legal problem. For advice about your legal situation, contact us today.

Patent Transactions in San Francisco, CA

Dergosits & Noah LLP provides clients with comprehensive representation in the full spectrum of patent transactions in San Francisco, CA. In addition to preparing and prosecuting patents, we seek to develop and implement patent portfolios that will help our clients accomplish their long-term business and financial goals.

Non-Infringement Opinions

A properly prepared non-infringement opinion can be a crucial component of new product introduction; it can also provide important documentation should infringement litigation arise later. A non-infringement opinion includes a detailed description of the accused product or process, an analysis of each individual patent claim being asserted, and any applicable case law that might affect the scope of the patent claims for purposes of viable non-infringement or invalidity defenses. An effective opinion must also include an analysis of the doctrine of equivalents that allows a court to hold a party liable for patent infringement whenever a product or process is found to be an equivalent to the patent claims, even if it is not the same as the patent claim.

Freedom to Operate Search

A freedom to operate (FTO) search and analysis can be an essential tool in preventing later claims of patent infringement. We can minimize this risk by thoroughly researching whether a proposed innovation is impacted by the patent rights of others. FTO analysis can also identify opportunities for designing around the patent rights of others in the competitive landscape.

Due Diligence

For investors looking to purchase companies that hold patents and other intellectual property, it is important to perform thorough due diligence before completing the transaction to ensure that the investor or purchaser understands the strength and value of the patents it is obtaining and is aware of any potential problems that may arise.

Licensing

Licensing a patent can be an important tool in maximizing its value. However, drafting and securing the best possible licensing agreement requires more than good negotiation skills. Our patent licensing attorneys have extensive experience in drafting careful agreements and performing transactions to our clients' satisfaction.

Leadership in the Field

Mr. Dergosits is a former President of the San Francisco Intellectual Property Law Association and the Federal Circuit Bar Association, where he also served as a member of the Board of Governors for five years. He was a member of the Cyberspace Law Committee of the California State Bar and the American Intellectual Property Law Association, a board member of the Federal Circuit Historical Society, and a former member of the San Francisco Bay Area Intellectual Property Inns of Court.

A Distinguished Educator

Since 1993, Mr. Dergosits has taught patent law as an adjunct professor of patent law at the University of San Francisco School of Law. In 2005, he was honored as the Distinguished Adjunct Professor of the Year. He frequently speaks and authors publications on intellectual property topics. Some of Mr. Dergosits's litigation experience is detailed in his Avvo profile.

A Broad Base of Knowledge

Mr. Shoiket earned his Bachelor of Arts in Immunology, Microbiology, and Genetics from the University of California, Berkeley. As a Berkeley-educated biotechnology professional with nine years of experience in laboratory and management positions at Bio-Rad Laboratories, Mr. Shoiket has the business and technology perspective needed to represent your interests.

Mr. Shoiket earned his Juris Doctor degree, Magna Cum Laude, from the University of San Francisco School of Law. He is a member of the California Bar and is registered to practice before the U.S. Patent & Trademark Office. He is also admitted to practice before the United States District Courts for the Northern, Eastern, Central, and Southern Districts of California, the U.S. District Court for the Eastern District of Texas, the Ninth Circuit Court of Appeals, and the Court of Appeals of the Federal Circuit.

He has authored publications and made presentations on a number of intellectual property issues and is a member of the American Bar Association, the American Intellectual Property Law Association, the Bar Association of San Francisco, and the San Francisco Intellectual Property Law Association.

A Track Record of Experience

Please see Mr. Shoiket's Avvo and LinkedIn profiles for more detailed information about his litigation work.

Involved in Policy

Mr. Nebb was formerly the Patent Chair of the San Francisco Intellectual Property Law Association, a member of the California bar, and is registered to practice before the U.S. Patent and Trademark Office. He is admitted to practice before the California Supreme Court, the U.S. District Court for the Northern, Eastern and Central Districts of California, and the U.S. Court of Appeals for the Ninth and Federal Circuits.  He is also a member of the San Francisco Intellectual Property Law Association.

An Understanding of Your Industry

Mr. Nebb received a Bachelor of Science in Electrical and Computer Engineering from the University of California, Davis in 1983, and a Juris Doctor from Golden Gate University in 1989, where he was first a writer and then an editor for the Law Review. Mr. Nebb also worked for Procter & Gamble in manufacturing management prior to attending law school.