Our Services

At Carstens & Cahoon, we have the technical expertise and legal acumen to provide innovative — yet practical — advice to help you acquire and defend your intellectual property rights around the globe. We are a full-service intellectual property boutique dedicated to listening and responding to each client’s specific needs.

Whether your needs require patent, trademark or copyright protection, we can help.

 

We have a command of the regulations unique to international IP law and experience obtaining IP rights around the world.

In today’s global economy, acquiring foreign intellectual property can be as important as acquiring it at home. This calls for a deep knowledge of intellectual property law and connections with agents around the world. The attorneys at Carstens & Cahoon have a firm command of the regulations unique to international IP law and substantial experience obtaining IP rights around the world.

We are adept at using the Patent Cooperation Treaty (PCT) to obtain patent protection in member countries, and we have the network of agents necessary to enter the national phase of a patent application under the treaty. We have also used the Patent Prosecution Highway, to help speed the issuance of patents in various countries.

Trademark laws do not apply globally — only in their country or jurisdiction. Our attorneys are knowledgeable about the various international trademark laws and their requirements and limitations. Our clients never need to worry about the limitations of territorial application of trademark laws.

Patent litigation is complex and demanding, requiring counsel with the appropriate legal and technical expertise. Understanding the risk associated with litigation of a patent requires an ability to carefully dissect the history of the patent and the scope of its claims, something that our attorneys do virtually every day. Carstens & Cahoon’s arguments concerning validity and infringement have been instrumental in achieving favorable settlements for clients.

In some cases, settlement negotiations may prove unsuccessful. In these situations, the firm has the manpower and trial experience to vigorously pursue litigation through to a jury verdict. Carstens & Cahoon’s litigation team is focused on understanding clients’ business and individual needs. We recognize that not every client is the same, and we tailor our strategy in each case to fit our client’s needs. We use our years of proven litigation success to obtain the best possible outcome for each case.

International disputes can be brought in a variety of forums. For instance, the International Trade Commission (ITC) provides for an exclusion order against the importation of infringing goods into the United States. The ITC is known for being very efficient, but also fast-paced. As with any litigation, preparation is key and will often make the difference between a good outcome and a bad outcome. Our attorneys understand how to prepare for battle for our clients.

The firm has litigated hundreds of cases for clients of every size, in industries ranging from oil and gas to electronics to medical devices. We have filed and defended cases in federal courts around the country. Carstens & Cahoon’s attorneys regularly litigate in the Eastern District of Texas, one of the most popular forums for patent infringement suits. We also have experience in the ITC, which has become more and more popular in recent years as a forum to enforce patent rights. The firm has spent more than a decade building an impressive litigation track record — and more importantly, well-established relationships with clients.

Litigation is not the best course of action in every situation. Carstens & Cahoon works closely with clients well in advance of any litigation, to craft the strategy best suited to each individual client’s needs. The firm’s attorneys listen to the client’s needs, and then analyze the case to develop options.

Litigation alternatives, such as licensing, mediation or arbitration, or a companion proceeding before another court or administrative agency should be considered depending on the particulars of the case, or a client may decide that settlement is the most economical solution. Regardless, the team is dedicated to focusing on what is best for the client.

We can provide the insight to help you make the right business decisions, saving you time and money.

The experienced attorneys at Carstens & Cahoon are well aware of the risks associated with intellectual property — both personal and financial. We can provide the insight to help you make the right business decisions, saving you time and money.

Our attorneys can help you to determine whether it is reasonable to proceed with filing a patent or trademark application. We offer opinions on infringement, validity and freedom to operate, and then help clients plan their next steps. Through experience and extensive research, we are able to provide security and peace of mind.

Understand, quantify and monetize the true value of intellectual property assets.

Valuing intellectual property assets was once as simple as filing a patent application and trying to ensure that third parties did not infringe upon it. All too often, that leads to many patent files, but little in terms in value.

At Carstens & Cahoon, we help companies understand, quantify and monetize the true value of their intellectual property assets around the globe. Our experienced attorneys provide crucial insights and advice for businesses desiring to leverage their IP. We have experience with a wide array of portfolio sizes, having analyzed portfolios as small as a single patent and as large as 5,000 patents.

We can help you build your portfolio through prosecution and acquisition, sale, licensing, settlement and litigation. Patents are what we do.

The firm’s Franchise and Distribution group assists clients in nearly every phase of the franchising process, from business concept refinement and franchise document preparation to regulatory compliance and franchise sales. The group’s attorneys have had experience with direct licensing, multi-unit franchises, sub-franchising, conversion franchises, combination franchises, “niche” (or alternative location or channel) franchises, and joint ventures.

The attorneys have also counseled companies on the impact of laws in particular countries and the range of business terms in individual countries, and they have negotiated agreements and participated in litigation and arbitration proceedings resulting from breach of contract, fraud, the Racketeer Influenced and Corrupt Organizations Act (RICO), trademark and copyright infringement, termination, vicarious liability, encroachment, implied covenant of good faith and fair dealing claims, transfer issues, discrimination claims, enforcement of system standards, antitrust, registration and disclosure violations, restrictive covenants, consumer fraud, product liability and securities fraud.

Our Franchise and Distribution practice is national and international in scope, having represented clients in more than 100 countries, of all sizes, in a wide range of industries, including:

  • Retail clothing
  • Printing
  • Automotive aftermarket services
  • Automobile rental
  • Restaurants
  • Direct sales
  • Health insurance
  • Credit cards
  • Ice cream shops
  • Video tape rental
  • Cosmetics
  • Lodging
  • Convenience stores
  • Computer services
  • Cleaning services
  • Entertainment
  • Food distribution
  • Pubs
  • Tax preparation services
  • Optical services
  • Personnel services
  • Health care
  • Real estate brokerage
  • Travel agencies
  • Publishing
  • Telecommunications

In the aviation field, Carstens & Cahoon represents clients from across the industry spectrum, including product manufacturers, local and national repair stations and fixed-base operators (FBO) and air carriers.

Carstens & Cahoon can also assist clients with transactional aviation needs such as aircraft acquisitions and representing clients in administrative proceedings before the Federal Aviation Administration (FAA). The firm’s aviation practice is led by Vincent Allen, who has represented many of the leaders in the aviation industry, including American Airlines, Rolls Royce, Sikorsky, Southwest Airlines and Teledyne Continental Motors.

A patent provides its owner with the right to exclude others from making, using or selling the claimed invention. Carstens & Cahoon has extensive experience in obtaining patents for inventions in fields as diverse as computer hardware and software, food technology, oil field equipment, medical devices, business methods, telecommunications and aviation. The firm’s experience extends beyond practicing before the U.S. Patent and Trademark Office to include navigating the numerous requirements for obtaining patent protection internationally.

Litigation

Patent litigation is typically complex and demanding, requiring counsel with the appropriate legal and technical expertise. Carstens & Cahoon, LLP brings a high level of experience and competence to the courtroom and has litigated many patent infringement suits successfully. The firm’s arguments concerning validity and infringement have been instrumental in achieving favorable settlements for our clients, and the firm’s expertise in licensing patent portfolios has brought added value to our client’s intellectual property programs. We have the depth, knowledge, experience, expertise to handle any patent litigation matter.

Prosecution

Interacting with the Patent and Trademark Office (PTO) is just part of the process followed to successfully prosecute a patent application to issuance as a patent. Our attorneys are experts at interacting with the inventors and in-house counsel as well. The quality of the patents we obtain is a result of the unique blend of the technical expertise of our attorneys with their excellent communication skills. The technical expertise of our patent attorneys ranges across the spectrum of technical disciplines, including electrical engineering, chemical engineering, and computer science. The firm prides itself in consistently obtaining meaningful patent protection for its clients with a thoughtful combination of efficiency and tenacity.

Counseling

Understanding the risk associated with a patent requires an ability to carefully dissect the history of the patent and the scope of its claims. Our attorneys are experts at counseling clients on whether a product infringes a patent and on issues of patent validity. We can provide right-to-use opinions in advance of product investment, infringement and validity due to diligence in advance of litigation, and infringement and validity analysis in response to cease and desist letters and threatened or actual litigation. Our patent lawyers can also assist clients in developing, marketing, and enforcing patent portfolios.

Carstens & Cahoon, LLP offers a full spectrum of trademark services to our clients. We have the ability to acquire trademark registrations for our clients. We also are experienced in opposing or canceling the applications of our client’s competitors. Understanding the procedures of the Patent and Trademark Office and the nuances of trademark law gives our firm the ability to provide services to our clients in a cost effective manner.

Acquisition

Acquiring a trademark requires an attorney who is experienced enough to initially evaluate its distinctiveness and its availability. We have assisted companies with the acquisition of literally hundreds of valuable trademarks. This involves a careful search of available records to assess the availability of a particular mark and also an understanding born from experience to counsel the client on the distinctiveness of their mark. With those steps completed, our attorneys and paralegals are also expert in the procedural steps of working with the PTO to prosecute an application to registration and to handle post-registration requirements.

Litigation

Litigation of trademark rights usually occurs in either federal courts or before the Trademark Trial and Appeal Board (TTAB). Our attorneys are comfortable and experienced in either forum. Before the TTAB, we have successfully cancelled a great many blocking registrations. Further, we have opposed competitors attempting to register marks that were confusingly similar to our client’s marks.

Copyrights provide the right to prevent others from making additional copies of the copyrighted work and also the right to prevent others from making works that are mere derivatives of the copyrighted work. The value of copyright registrations should not be underestimated, as it allows for the recovery of attorney’s fees and statutory damages in the event of infringement of the copyright.

If a question arises about whether a work is the subject of an existing copyright, Carstens & Cahoon can research the matter, provide authoritative answers, and explain to the client the standards used to determine copyright infringement. Each year the firm handles the filings of many copyright registrations for dramatic works, computer software, artistic designs, broadcasts of radio and television programs, musical performances and the like.

A patent provides its owner with the right to exclude others from making, using or selling the claimed invention. Carstens & Cahoon has extensive experience in obtaining patents for inventions in fields as diverse as computer hardware and software, food technology, oil field equipment, medical devices, business methods, telecommunications and aviation. The firm’s experience extends beyond practicing before the U.S. Patent and Trademark Office to include navigating the numerous requirements for obtaining patent protection internationally.

Litigation

Patent litigation is typically complex and demanding, requiring counsel with the appropriate legal and technical expertise. Carstens & Cahoon, LLP brings a high level of experience and competence to the courtroom and has litigated many patent infringement suits successfully. The firm’s arguments concerning validity and infringement have been instrumental in achieving favorable settlements for our clients, and the firm’s expertise in licensing patent portfolios has brought added value to our client’s intellectual property programs. We have the depth, knowledge, experience, expertise to handle any patent litigation matter.

Prosecution

Interacting with the Patent and Trademark Office (PTO) is just part of the process followed to successfully prosecute a patent application to issuance as a patent. Our attorneys are experts at interacting with the inventors and in-house counsel as well. The quality of the patents we obtain is a result of the unique blend of the technical expertise of our attorneys with their excellent communication skills. The technical expertise of our patent attorneys ranges across the spectrum of technical disciplines, including electrical engineering, chemical engineering, and computer science. The firm prides itself in consistently obtaining meaningful patent protection for its clients with a thoughtful combination of efficiency and tenacity.

Counseling

Understanding the risk associated with a patent requires an ability to carefully dissect the history of the patent and the scope of its claims. Our attorneys are experts at counseling clients on whether a product infringes a patent and on issues of patent validity. We can provide right-to-use opinions in advance of product investment, infringement and validity due to diligence in advance of litigation, and infringement and validity analysis in response to cease and desist letters and threatened or actual litigation. Our patent lawyers can also assist clients in developing, marketing, and enforcing patent portfolios.

What is an IPR?

An IPR is an administrative trial at the USPTO limited to the issue of the validity of patent in view of two specific types of prior art:  patents, and printed publications.  IPR stands for “Inter Partes Review.”  The process starts with the filing of a detailed “Petition” with the USPTO to set out how the cited prior art demonstrates that the claims of the patent at issue are invalid based on anticipation or obviousness.  The Petition is usually supported by the declaration of an expert.  The Patent Owner then has 3 months to file an optional preliminary response, and then the USPTO will either grant the petition and institute the trial as to at least one claim, or deny the petition.  If the petition is granted, then the trial process shown in the diagram below is generally completed in one year from the granting of the petition, culminating in oral argument before a panel of three Administrative Patent Judges within the newly created Patent Trial and Appeal Board (“PTAB”):

The America Invents Act actually created three new post-issuance review proceedings in 2011, which the PTAB practice rules govern: inter partes review (“IPR”); and two additional procedings:  post-grant review (“PGR”) which must be filed within 9 months of the issuance of a patent and may challenge the validity of a patent on any available statutory ground; and the transitional post-grant review for covered business method patents (“CBM”) which is directed primarily to “computer implemented” business method patents in the financial industry.   In addition, the former “interference” proceeding to determine priority of inventorship was transitioned to the “First-to-File” patent regime and became a “Derivation Proceeding” to determine whether a patent applicant had derived the invention from another person, and therefore is not entitled to the patent, even if the patent applicant was “first-to-file” an application for the claimed invention at the USPTO.

How Effective are IPRs?

As of the end of 2014 and into early 2015, statistics were that roughly 75% of Petitions to institute an IPR trial had been granted as to at least one claim of the target patent.  Additional statics recently issued by the USPTO are as follows:

  • As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
  • Of all of the AIA petitions filed so far, 63 percent were filed in the electrical/computer technology centers (TCs), 23 percent in the mechanical/business methods TCs, 9 percent in the bio/pharma TC, and 5 percent in the chemical TC.
  • Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
  • Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable. Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.

How to Win an IPR

The IPR procedure differs from Federal Court litigation in significant ways.  One of the most important is that, unlike Federal Court litigation, the Petitioner must present its primary evidence and legal arguments at the very beginning of the proceeding in the Petition itself, including the expert declaration.  Two key strategies can lead to success:  (1) before the Petition is even filed, make the maximum effort through prior art searches to identify and analyze the very best prior art available; and (2) identify and retain the best possible expert to prepare the expert declaration to increase the persuasive force of the Petition in the eyes of the PTAB Administrative Patent Judges who will generally have technical backgrounds.  The page limit for the Petition is 60 pages, and this is the primary vehicle used to persuade the PTAB judges to initiate the trial on at least one claim.  The petition must therefore be carefully prepared with detailed reasoning to demonstrate the invalidity of at least one claim to the required standard of a “reasonable likelihood.”  After the trial is initiated, the Petitioner’s efforts should be to refute the arguments raised by the Patent Owner in its response or any proposed claim amendments.

Defense Against an IPR

A key defense strategy is to challenge at the Preliminary Response stage whether the trial should be instituted by showing either that the patents or publications relied on by the Petitioner are either:  (1) do not qualify as prior art; or (2) do not show the claim elements that the Petitioner alleges are disclosed by the cited prior art.  An additional strategy involves the Patent Owner seeking to amend the patent claims at issue to avoid the prior art cited by the Petitioner, while also demonstrating the amended claims are patentable over the prior art known to the Patent Owner.  The USPTO has been conducted significant recent rulemaking on the amendment issue.

When Should I Use an IPR?

IPRs can be used offensively and defensively.  If a party is sued for infringement of a patent in Federal Court, a defensive strategy may include filing an IPR in a parallel proceeding at the USPTO.  This forces the patent owner to fight on “two fronts,” and in some circumstances may lead to the Federal Court judge “staying” the litigation in federal court to wait for the USPTO to act on the IPR.

PTAB Trial Resources