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Leason Ellis - Intellectual Property Attorneys - Inspired by Insight

All-stars from top patent, trademark and copyright practices in Manhattan have come together in White Plains, New York to form the leading IP law firm in Westchester County.

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Intellectual Property Services

  • Patents
  • Trademarks & Copyrights
  • Litigation
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Patents

Counseling

Leason Ellis’ attorneys have many years of experience guiding individuals and companies on how best to protect their inventions and innovations. When a client comes to us with a new invention, we typically provide advice on the patentability of the invention and the requirements and necessary steps for securing patent protection. We work with our clients to explore and refine their ideas in order to identify the limits and potential applicability of their invention. This approach enables us to formulate and obtain a patent that provides the broadest possible protection for the client. In addition, we offer our clients strategic advice on the potential value of a patent as a means to prevent the unauthorized manufacture, use, or sale of a business’s core product, as a way to restrict entry into the market by others, and as an asset in a company’s overall intellectual property portfolio. We further advise our clients about the various available avenues for pursuing patent protection in the U.S. and worldwide, including provisional patent applications, utility patents, design patents, international patent applications (PCT), and patent applications in foreign jurisdictions.

Filing

Leason Ellis’ patent attorneys have obtained thousands of issued patents. In preparing and filing new patent applications, we work closely with inventors, technical personnel, and management in order to ensure that all aspects, features, and details of the invention are faithfully captured and represented in the application. Based upon our extensive experience, we understand how to frame a patent application to enhance the chances of it being approved by the Patent Office. After filing a patent application, we work diligently to advocate for our clients throughout the patent examination (“prosecution”) process. We maintain ongoing communication with patent examiners through formal correspondence, as well as telephone and in-person communications, to streamline the examination process and ensure that our clients obtain the patent rights to which they are entitled. With foreign patent applications, we take an active role in managing the prosecution conducted by our foreign associates. In doing so, we are able to better manage foreign prosecution costs by avoiding unnecessary duplication of effort while also ensuring that our client’s patent portfolio remains largely consistent across various jurisdictions.

Reexamination

Leason Ellis is one of the foremost firms in the area of patent reexamination. After a patent is granted, patent reexamination can be used as an effective tool to challenge the patent’s validity. The challenges can be made by the client in order to validate the patent over new prior art or by a third party. During reexamination proceedings, the Patent Office only considers newly discovered patents and publications in determining whether a patent was granted improperly. Leason Ellis has a successful track record in connection with high-stakes reexamination matters in a number of technology areas.

Reissue

Like a reexamination, a reissue proceeding can be started in the Patent Office after a patent issues. It can only be started by patent owners, and it can determine the patentability of the claims of the issued patent on grounds beyond prior patents and publications. If filed within two years of issuance, it can result in broader claims. Leason Ellis has significant experience in this type of post-grant Patent Office proceeding.

Market Clearance / Freedom to Operate

During the course of technology and product development, it is frequently advisable to conduct “freedom to operate” searches to ensure that no “in-force” patents will be infringed. After searching, we provide risk assessments relating to the possibility of infringing granted patents and pending applications. Additionally, we can assess the strength of non-patent disclosures in the public domain, which might shield a product from claims of infringement. We also work closely with our clients to design around existing patents in order to avoid potential infringement.

Searching

Before filing a new patent application, it is sometimes advisable to search whether a similar idea has already been described in the patent literature. Our patent attorneys routinely conduct sophisticated computer patent database searches in the U.S. and abroad, and search non-patent technical literature. Our clients benefit from our favorable relationship with outside search companies and we utilize the search results to provide opinions on the patentability of new inventions and how best to tailor the claims of the patent to obtain the broadest protection possible.

Due Diligence

Founding or investing in a new venture can be an exciting, yet risky, endeavor. Our patent attorneys work with companies, investors and corporate attorneys to conduct IP due diligence. We analyze the strength of key patents underlying a client’s prospective new products, technologies and business models and provide advice and perspective on the accompanying business issues. As the result of our diligence, we have been able to help companies avoid making ill-advised investments. We also undertake analysis of entire portfolios held by companies to locate gaps in patent coverage and uncover new opportunities. We provide our clients with valuation services to help determine the proper value of a single patent or an entire portfolio, particularly where the client is seeking to buy the owner.

Litigation

We have significant experience representing both plaintiffs and defendants in complex patent litigation matters across a broad range of technologies. The technical and scientific expertise that our attorneys possess enables us to persuasively advocate for our clients in patent cases that can hinge on a fine technical point or detail.

Settlements

Where settlement best serves the interests of our client, we make every effort to achieve a favorable resolution of the patent-related dispute. As part of those settlement efforts, we are also experienced at negotiating and drafting settlement agreements, assignments, and royalty licenses.

License Agreements

We advise our clients in a range of patent licensing matters from simple license agreements, to agreements in settlement of litigation, to complex product merchandising and cross-licensing agreements. Whether representing the licensee or the licensor, we are able to negotiate and draft practical, business-oriented license agreements.

Patent Watch Services

After a client has secured a patent, or a freedom to operate opinion, our attorneys can continue to monitor the latest developments in a given field or area of technology. We can track competitors’ patent filings and determine if they pose a developing challenge to a client’s business. Additionally, we can keep track of patents and applications directed to technologies of interest, and update the client if they become abandoned, rejected or expired.

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Trademarks

Clearance

Before adopting a new trademark, it is usually advisable to determine its availability for use and registration. Our trademark attorneys can conduct computer database “knock-out” searches in the U.S. and internationally to screen potential new marks. We can also analyze full search reports in order to provide an opinion on the availability of a mark for use and registration in the U.S., and can obtain opinions on availability worldwide in order to assist in adoption of a mark within global reach.

Counseling

When a client comes to us with a new trademark, we typically provide advice on whether the term or device can function as a mark and the protectability of the mark against others. We also advise our clients on the benefits of registration versus common law, unregistered use. We further counsel our clients on a variety of trademark related issues including complex ownership and use structures, fair use, false advertising, and product packaging review.

Filing

Registration confers many benefits to trademark owners in the U.S. and is required in order to use trademarks in many countries abroad. In the U.S., we usually file applications electronically to obtain immediate confirmation of filing and the official application serial number. Internationally, we file applications through a network of experienced foreign colleagues. We also file for foreign protection through various treaties where available in order to provide our clients with cost effective filings solutions and to provide the most effective coverage.

Prosecution

Prior to filing applications, we strive to spot issues and avoid unnecessary prosecution and the associated costs. In those instances where Office Actions issue, we promptly report them to our clients and attempt to minimize cost where possible in responding. With foreign applications, we seek creative solutions to any obstacles that may develop.

Monitoring

Trademark owners should be vigilant in protecting their rights. As part of our policing efforts, we can arrange for trademark watch services for our clients, domestically and/or internationally. In that way, we can receive timely notice of confusingly similar marks and discuss with our clients whether to oppose registration.

Customs Recordation

To prevent importation of counterfeit and infringing goods into the U.S., we can record trademark registrations on behalf of our clients with U.S. Customs and Border Protection (CBP). We also arrange for meetings between our clients and CBP in order to educate Customs officials so that they can more easily recognize goods that infringe our clients’ trademark rights.

Maintenance

We manage trademark portfolios. Between the fifth and sixth year after registration, and every ten years from the registration date, it is necessary to file proof of use of the mark for the covered goods or services with the U.S. Patent and Trademark Office in order to maintain the registration. We docket such maintenance deadlines in our computer database and notify our clients in advance of the deadlines. We also keep track of foreign maintenance deadlines and work with our clients in renewing registration.

Oppositions and Cancellations

In the event that a third party opposes an application or petitions to cancel a registration, Leason Ellis can defend its clients in such proceedings before the Trademark Trial and Appeal Board. We also vigorously pursue such oppositions and cancellations on behalf of our clients where warranted. Internationally, we coordinate oppositions and cancellations with our colleagues to muster evidence and arguments to support our clients’ cases.

Domain Name Disputes

We are a high tech, internet savvy firm that is adept at protecting our clients’ rights online. We can assist our clients in acquiring and registering domain names, filing domain name arbitrations under the Uniform Dispute Resolution Policy, and filing civil actions in federal court for cybersquatting. As a result of our efforts, we have caused numerous infringing websites to be taken down and many domain names to be transferred to our clients.

Licensing

Trademark licenses come in many forms from simple agreements, to agreements in settlement of litigation, to complicated product merchandising agreements. Whether representing the licensee or the licensor, we are able to negotiate and draft practical, business-oriented license agreements.

Copyrights

Registration

The first step to maximizing the value of copyright is to obtain registration, as it provides many important benefits including the election of statutory damages, the ability to recover attorneys fees in an infringement action, the provision of federal court jurisdiction over infringements, and the availability of recordation with U.S. Customs and Border Protection. We routinely file copyright applications with the U.S. Copyright Office and have obtained numerous copyright registrations for our clients. Where litigation is imminent, we can seek registration on an expedited basis. Where cost is an issue, when appropriate, we can apply for a collection of related works.

Licensing, Acquisitions and Sales

We regularly negotiate and draft copyright assignments, as well as simple and complex license agreements including character merchandising agreements. We have specific experience in the computer field including preparing, for example, shrink wrap agreements and click through licenses, as well as agreements relating to programming rights. We also prepare related agreements such as security interests and work-for-hire agreements.

Strategic Advice

Our attorneys have decades of experience advising clients on all aspects of copyright including validity, ownership and title, duration, infringement, and fair use. We advise clients in a wide variety of fields including advertising, architecture, artwork, entertainment, fashion, jewelry, photographs, publishing, software, and toys.

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Litigation

We are a group of seasoned litigators who have successfully handled thousands of intellectual property disputes for a variety of clients from multinational corporations (who want the best advice money can buy) to small, local startups and individuals (who quickly learn that good legal advice is often priceless).  Our victories cover cutting-edge technology, household brand names, and well-known works of creative expression.  We understand that our clients’ IP can represent limitless opportunities for them.  It is why we are so driven to maximize those opportunities by providing the best informed choices and strategic advice available.

We are proud to be a diverse group of men and women with academic degrees and technical backgrounds that range from biochemistry to computer science, engineering to medicine, business to finance.  Our team thrives on the unique challenges conflict can provide and capitalizes on the different perspectives that our diversity supplies.  We temper our practical experience and know-how with industry knowledge and business-savvy to craft comprehensive advice that bridges the gap between legal and practical that most lawyers often overlook.

Our unique approach always starts with understanding our clients’ assets and needs, surveying the internal and external factors driving the conflict, and identifying the various forms that victory can take.  From that vantage, our professionals take a fluid, cost-effective approach to counseling clients on not only how to extract competitive advantage out of IP, but also how to best use that advantage to accomplish their business objectives.  Simply put, understanding how our clients can successfully operate within complex business and legal frameworks is what motivates us.  It is the bedrock upon which we provide efficient, effective, and exceptional advice regarding any given conflict or dispute.

Utility and Design Patent Litigation

We have the science and engineering backgrounds to understand almost any patentable technology on the planet, but patent cases often hinge on not only understanding the technology at issue, but also understanding how to convincingly advocate one’s rights relative to the technology for any given forum.  We have successfully represented patent owners and putative infringers alike in patent infringement and validity litigations in federal courts across the country, securing key wins at every stage of the proceedings, including before the Court of Appeals for the Federal Circuit.  Our patent litigation team also successfully employs post-grant patent review proceedings before the U.S. Patent & Trademark Office.  It is the combination of knowing when, where, and how to best resolve a patent conflict that enables us to obtain favorable results for our clients time after time. Our litigation strategy is so well-respected that our patent litigators are routinely called upon as expert witnesses in other patent cases.

In short, Leason Ellis is uniquely suited to address the complexities and challenges of practically any technology in the courtroom, before the Patent Office, or in the marketplace.

Trademark Litigation

We understand that our clients’ brands are inextricably linked with our own.  Their success in the marketplace is our success.  This simple concept is why we make sure that our clients understand that our best advice to them is never based on our bottom-line, only theirs.  That is why, more often than not, our trademark counseling services are geared toward strategically avoiding disputes or finding viable paths to amicable resolution.  Even so, we realize that even good faith negotiation has its practical limits and some adversaries simply must be beaten  ̶ roundly, soundly, and with enthusiasm  ̶  before they see reason.  Our stable of seasoned trademark litigators are equally adept at making war or peace in furtherance of clients’ needs.  We handle all types of trademark infringement, dilution, and unfair competition cases involving trademarks, service marks, trade names, trade dress, and product configuration. We regularly appear in federal district courts and circuit appellate courts across the country as well as before the USPTO and its Trademark Trial and Appeal Board (TTAB). We are proud to have achieved remarkable results for our clients, including trial victories. We also champion our clients’ trademark interests outside the U.S. and manage international trademark disputes through our counsel network around the world.

Counterfeiting/Gray-Market Goods

Like the answers to many legal questions, the marketplace isn’t always black and white – there is often a lot of gray.  Some channels are legal, but others are unauthorized or unintended. In courts across the U.S., we act swiftly against both manufacturers and distributors to stop the flow of counterfeit and gray market goods and have obtained emergency injunctive relief for our clients. Our attorneys also work with U.S. Customs and Border Protection to detain and seize infringing goods before they enter the stream of commerce.

False Advertising and Unfair Competition

Bragging is one thing. Making false claims is another. Leason Ellis attorneys are up-to-speed and at the starting block when a competitor is making false claims or competing unfairly; we know that time matters. If false statements or deceptive advertising threatens a client’s brand and goodwill then immediate relief is needed. We understand the nuances of false statements, deceptive practices, and consumer confusion, and have achieved swift resolutions for our clients, including through obtaining restraining orders.

Trade Secrets

A key employee leaves your company, gets hired by a competitor, and spills the beans about everything. Senior-level officers and core employees move around a lot, especially in the technology industry, sometimes taking and then using your customer lists, software, and even business agreements. Our practice counsels trade secret owners about those issues. Ideally, we help clients protect their secrets by developing protocols to avoid misappropriating others’ secrets and defend against claims of trade secret misappropriation. In cases where the cat may already be out of the proverbial bag (or on the verge thereof), Leason Ellis has successfully litigated for both plaintiffs and defendants.

Domain Name Litigation and UDRPs

It’s your address. You should be able to live there without squatters. We regularly handle domain name disputes, both in the courts as well as through ICANN’s Uniform Dispute Resolution Policy (UDRP). Cybersquatting and Internet infringement are pervasive, so we recommend to our clients domain name registration strategies to help avoid or minimize more costly enforcement work down the road. Our attorneys also help clients manage and set priorities for enforcement efforts.

Copyright Litigation

Leason Ellis has litigated copyright infringements successfully on behalf of both plaintiffs and defendants in federal district courts across the country.  Copyright cases are often driven by whether the work(s) at issue are covered by a copyright registration prior to copying, in which case, the copyright owner may be entitled to recovery of statutory damages and attorneys’ fees.  We are adept at using the leverage created by the existence of a copyright registration to reach favorable results.  We have also driven the removal of infringing content from websites by submitting take-down notices to internet service providers and through other means.  On behalf of companies accused of copyright infringement, we have also successfully defended against claims by copyright owners who failed to obtain copyright registration prior to filing suit and have obtained dismissals on other grounds and favorable settlements.

Arbitration and Settlement Negotiation

While litigation is an important tool for you to protect or defend your rights, sometimes settlement is the next most important step rather than continuing a fight. In a dispute, you want the most knowledgeable person in your corner—someone you trust to know and represent your best interests. We are your advocates to make sure you receive the most favorable resolution to disputes. When settlement is in your best interest, we work diligently to achieve favorable resolution of patent, trademark and copyright-related disputes. We draw on our depth of experience negotiating and drafting settlement agreements, co-existence agreements, assignments, and licenses to bring disputes to an end so that you can go back to growing your business.

Local Counsel

Leason Ellis operates in a global arena as a full service IP boutique with both an international reputation and hometown familiarity.  We often serve as “local counsel” for other law firms (both larger and smaller) located throughout the United States and abroad in federal cases pending in the United States District Court for the Southern and Eastern Districts of New York.  Indeed, we routinely commence and defend IP lawsuits in Manhattan, Brooklyn, and White Plains on behalf of foreign and domestic clients and have enjoyed great success appearing before the jurists in those forums, including numerous victories on summary judgment, and at trial.

Home Court Familiarity

Almost all of our attorneys worked at large Manhattan-based firms prior to joining Leason Ellis.  When our litigators left Manhattan for Westchester County, they kept in mind the age-old adage that “good lawyers know the law; great lawyers know the judge.”  It is why we are not only meticulous in our litigation of IP cases before the judges assigned to the White Plains Division of the United States District Court for the Southern District of New York (located just a few blocks away from our offices) but equally, if not more, meticulous about monitoring IP cases adjudicated by those judges for litigants we do not represent.  No one can ever know how a judge will apply (or create) precedent for any given case, but our litigation team believes our clients are best served by a home-court familiarity based on a working knowledge of relevant and timely local jurisprudence.