DISPUTE RESOLUTION

It would be nice if there were no disputes to resolve and people would just leave your intellectual property alone. But, in fact, you go through the expense to protect intellectual property precisely because things aren’t ideal. For any number of reasons, your IP can be infringed, and you will need to enforce the rights you’ve purchased. The truth is- any rights you have are only as strong as your means to enforce them. To that end, Fish IP™ can help with every level of dispute resolution.

Here is a brief tour of various options.

PTAB PROCEEDINGS

The Patent Trial and Appeal Board (PTAB) is a mini-court within the USPTO. It decides appeals of examiner decisions made during the examination of a patent application, as well as petitions to challenge the validity of an issued patent.  PTAB post-issuance proceedings include inter partes reviews, covered business method reviews, derivative proceedings, and post-grant reviews.  If a matter can be decided by the PTAB, it typically concludes much faster and is less costly that court proceedings. PTAB judges are also required to have a technical undergraduate degree and typically in the same general field as the patent at issue.  However, the PTAB considers only a limited scope of issues, including claim construction, patentability/validity, and inventorship.  Issues of infringement and damages must be determined outside of the PTAB, either in court or through alternative dispute resolution.  PTAB proceedings are a great option for defendants accused of infringing overly broad patents.  PTAB proceedings can also be used by Patent Owners to strengthen claim construction positions and clarify the scope of protection.

Fish IP™ can represent you before the Patent Trials and Appeals Board if this is an option.

You can find more information about the PTAB and what it does here.

TTAB PROCEEDINGS

The Trademark Trial and Appeal Board (TTAB) is another mini-court within the USPTO. The TTAB hears and decides adversary proceedings, including oppositions seeking to block registration of an applied-for mark, and cancellations seeking to extinguish an active registration.  The TTAB also handles appeals of final refusals, interferences, and concurrent use proceedings. 

TTAB procedures for oppositions and cancellations are governed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure, except as otherwise provided in the Trademark Rules of Practice.  Opposition and cancellation proceedings are similar to civil actions in federal district court, and include pleadings, discovery, and trial phases.  However, TTAB proceedings tend to progress more quickly due to their limited scope.  The TTAB is authorized to determine the right to use a federal registration, but does not have authority to decide questions of infringement or unfair competition.  The TTAB follows its own precedential decisions in prior cases and decisions from the Court of Appeals for the Federal Circuit.

Fish IP™ is familiar with the workings of the TTAB and is capable of representing you before the board.

DEMAND LETTERS

If infringement against your IP occurs, one of the first steps is to let infringers know. Infringement can range from accidental to outright piracy. But no matter what the case, it is best to let infringers know that you are serious by using a law firm. Using the correct wording and understanding your rights and communicating the legal implications of infringement are important. Failing to do so may mean not being taken seriously.

If matters can be resolved this way, everyone is happier. If the infringement was accidental, it may lead to ceasing infringement, or maybe even to some sort of licensing agreement. If the infringement was done purposefully, you will be letting them know you are serious and prepared to take the necessary steps.

All of this will be handled competently by Fish IP™.

MEDIATION/ARBITRATION

Fish IP represents clients in a range of alternative dispute resolution (“ADR”) matters, including informal resolution, mediation, and arbitration matters in the U.S. and abroad.

In addition to guiding our clients through formal mediation and arbitration proceedings, Fish IP’s attorneys address the enforceability of underlying alternative dispute resolution agreements.  Most recently, Fish IP obtained favorable rulings in the California Superior Court and California Court of Appeal when the defendant/opposing party attempted to compel the civil case to arbitration.  The firm argued, and the trial court found, that the agreement containing the arbitration provision was void ab initio, and therefore the arbitration clause had no force or effect.  The trial court’s ruling was affirmed on appeal.

In another recent case, the firm’s attorneys won an over $6.3 million arbitration award in Taiwan for one of the firm’s clients, and subsequently obtained enforcement of that award in the Third Circuit’s Eastern District of Pennsylvania.

Fish IP has also successfully helped its small to medium sized business clients resolve commercial disputes in arbitration against industry giants.

Fish IP’s attorneys also regularly work with clients considering and implementing dispute resolution clauses in their agreements, and in connection with creating and updating their website Terms of Use/Service and their website compliance efforts. 

LITIGATION

If it comes down to a court battle, Fish IP™ has experienced litigators that are capable of defending your IP.

This is the last resort, and attempts will be made at various levels before this step. But it’s not unknown to have to defend IP in court and we have the resources and personnel to do it. Our two litigation specialists are John Van Loben Sels and Jennifer Shih. We also have a support team that works with them.