Your inventions will create more profit for you if you patent claims are mapped to your product features. Too often, the attorney drafting the claims ignores the commercial application of the patent claims.
Be sure to ask your attorney to incorporate all valuable marketplace product features into your patent claims.
Patent Management Accomplishments
Created Patent Database
Employees throughout the world needed to have prompt access to full company patent information. Led the effort to create an electronic database to store the company’s full patent records, including drawings. System was successfully installed on time and on budget.
Tennis Racquet License
Led team that secured the worldwide HAMMER® tennis racquet patents and know-how license. Negotiated and drafted the license. Technology increased market share from 15% to 50%, thereby regaining market dominance. Thereafter, enforced the patents successfully against numerous worldwide competitors. Resolved several contract disputes with inventor.
Anti-Counterfeit Team and Department of Customs
Participated in unprecedented industry-wide cooperative anti-counterfeit effort. We persuaded U.S. Department of Customs to increase port of entry scrutiny of imported golf clubs for trademark and trade dress law violations. Effort was successful and resulted in the U.S. government seizing foreign golf clubs worth millions of dollars.
Worldwide Patent and Intellectual Property Protection Study
Conducted worldwide study to identify industrial design and patent opportunities for Wilson Sporting Goods. Studied scope of protection, procedures and costs in current and proposed countries. Study revealed opportunities to improve protection at less cost. Implemented policy to improve the patent decision-making in foreign markets. Pruned assets to improve intellectual property ROI.
Drafted Patent and Know-How License
Negotiated and drafted the HAMMER® tennis racquet patent and know-how license. Thereafter, managed the legal team that enforced the patent worldwide in litigation. This technology, and the legal success in preventing low price, infringing uses, increased the Company’s market share from 15% to 50%. In flat growth market, these new sales came at the expense of our competitors, substantially weakening the previous market leader; we overtook #1.
Jury Verdict Stops Competitors’ Infringements
Responsible for preventing infringing the cutting edge ULTRA® golf ball dimple pattern patent. This new technology enables the golf ball to gain marked distance over a golf ball without this dimple technology. A U.S. and Japanese competitor – in a market dominated by only four competitors- infringed this patent. It was important to prevent the market entry of a new competitor and to prevent them from establishing credibility in the market. Aggressively litigated patent infringement against these two competitors in South Carolina. Aggressive case management resulted in a jury verdict for the client, with a willful infringement finding, in 13 months and an expedited Permanent Injunction against these two key competitors.
Drafted Many IP and Trade Secret Protection Programs
These programs catalogue and analyze the intellectual property owned by the company. Then, created rules for internal managers so that the managers use IP correctly. Wrote the materials in practical terms so that the rules are useable by all levels of management. By doing this, the company maximizes the chances it does not inadvertently allow customers and competitors access to their confidential information.
Created Patents Database
Took the entire patent portfolio of client and some competitors and put the portfolio into an electronic database accessible through the company intranet. After this, the clients could view the prior art references, drawings, and claims of the intranet from anywhere. This significantly increased information flow, creating faster product develop decisions. At the time, this was a state-of-the-art capability (1995).
Negotiated and Implemented Patent License with Italian Company
Company needed this technology to improve the performance of its shoes. Negotiated the license to acquire the technology. Added protection clauses so that client would have flexibility if the technology did not demonstrably improve worldwide sales. Managed compliance with contract.
Conducted Worldwide Patent Prior Art Investigation
Interviewed witnesses and obtained information to invalidate competitor’s patent.
- South Africa
- Conducted worldwide patent and design review for products. After studied available opportunities, reduced costs to maximize product ROI.
Worldwide Patent and Intellectual Property Protection Study
Recommended that global branded goods company client assess what patent protection laws existed around the world to determine if we had the right design and patent protection for our products. Conducted worldwide study of industrial design and patent opportunities. Studied legal scope of protection, procedures, and costs in forty (40) current and proposed worldwide markets. Study revealed opportunities to improve protection at less cost. Implemented a policy to better manage decisions on which countries in which to obtain protection. Improved IP asset cost-effectiveness structure and ROI.
Terminated Intellectual Property Criminal Theft
Developed sting operation and halted theft of critical golf ball mold-making technology. Led team that created and executed strategy. We confronted conspirators (competitor and company employees), discharged the employees (in Tennessee), and presented RICO suit to competitor (in Florida)-all on same day. Resulted in immediate cessation of activity and recovery of materials.
Patent Management Testimonials
“I’d like to take this opportunity to thank you for your assistance in helping to resolve the settlement issues related to my previous employment. All of my previous attempts to resolve this issue myself were in vain.
While the settlement was, in the end, resolve by me and my former employer, this dialogue would have never taken place without your firm’s assistance in laying out the facts to them and forcing them to recognize that this was a legitimate claim that they had to deal with. Obviously once the facts and the legal ramifications were laid out to them by you, they were willing to negotiate a settlement.
I sincerely believe that without your firm’s assistance, I wouldn’t have been able to even have a dialogue with my former employer, let alone negotiate a satisfactory settlement agreement.
Thanks again for your help in resolving this.”
– Bill S., Manager, national Manufacturing Company
“As President of [co. name] of Indiana and [co. name] of the Northeast I have been working with Charlie Brown of CorpLaw Associates since 2004. The relationship has been an excellent one for the following reasons.
1. Trademark Application and Protection
Charlie has guided the company through the process of protecting its trademarks as well as enhancing the areas of their uses on an on-going basis. This process has included enlarging the trademark portfolio to include more areas that are consistent with the business as well as enforcing our trademarks against infringers. Charlie has been successful in all cases of forcing the infringing company to cease using our trademark.
2. Protection of Legal Interests
Charlie has the best interest of [co. name] in mind at all times. He pursued the acquisition of [co. name].com through a WIPO proceeding in Geneva, Switzerland which involved dealing with a company located in California that had executive officers located in China. Charlie was able to obtain [co. name].com with minimal expense to our company because of his expertise in the area while dealing outside the United States.
3. Intellectual Property Support
Charlie is well-informed on the uses of the internet and has provided excellent counsel on the best course of to follow to secure the appropriate domain names for the [co. name] companies. He has also guided [co. name] toward appropriate vendors to provide additional help.
Charlie responds quickly and proactively to [co. name] requests. He is very knowledgeable in the field of trademarks and I rely on his expertise to protect the [co. name] trademark portfolio. He and I have recently been working on a trademark Terms Sheet and Trademark Style Guide which will make clear the proper uses of the trademark.
He is a heavy duty lawyer who can do anything.”
– Caroline R., President, Green Energy Company
“I have worked with Charlie Brown and CorpLaw Associates for several years and have always considered Charlie to be the most detail oriented and value added attorney I have worked with. First off, he always returns my calls and emails promptly. I never feel that he is “looking at the clock” when he is speaking with me and he often will ask the extra questions to better understand my issues with the problem, not just from the legal perspective. CorpLaw’s Corporate Maintenance Plan is wonderful. Not only do they handle my corporate minutes and annual report, but they are always there to answer small legal questions that many attorneys leave you feeling like you bothered them by asking.”
– Rich B., CEO, Sales Consulting Firm