Register a US trade mark, protect patents

A US patent application undergoes an examination procedure at the United States Patent and Trademark Office (USPTO) which differs from the German and European procedures in terms of its process and the logic of the evidence: The examiner raises objections via an Office Action – a notice of rejection which may relate to novelty, inventive step or formal requirements, and to which a response must be submitted within a specified time limit. Anyone who misses the deadline forfeits the application or must revive it by paying additional fees. The disclosure requirements vis-à-vis the USPTO also differ from the European requirements.

We handle the application process from the drafting of the claims right through to grant, and respond to every Office Action within the prescribed time limits. Should your US patent be infringed or should opposition proceedings be brought, we will represent your position with your entire portfolio in mind.

Unlike under German trade mark law, simply filing an application with the USPTO is often not sufficient under the US system: In addition to the ‘first-to-file’ principle, US law frequently requires proof of use for final registration, meaning that a trademark used earlier but not registered could jeopardise your own application. We therefore check for any conflicting US trade marks before filing an application. If an opposition is lodged against your application, the Trademark Trial and Appeal Board (TTAB) will rule on the matter – a separate procedure with its own deadlines and rules of evidence, which differs significantly from the opposition proceedings before the DPMA.

We will file your trade mark with the USPTO, carry out a preliminary search for conflicts and represent you in opposition proceedings before the TTAB. In doing so, we will align your US trade mark with your German and international trade mark strategy.

Licence models under US law govern liability, termination and warranties differently from standard German contracts: Limits on liability, termination rights and exclusions of warranty follow their own principles under US contract law, and a German contract template adopted without due consideration often shifts risks to the detriment of the licensor. Furthermore, the transfer of IP rights – the ‘assignment’ – must meet certain formal requirements under US law in order to be enforceable against third parties and in US courts.

We draft licence agreements and assignments that protect your intellectual property in the US market rather than diluting it – from licence fees and termination rights to warranties. We review existing German contracts to assess their validity under US law.

Patents, trade marks and licences only realise their full value when aligned with your business strategy: a portfolio that is effective in Germany may have gaps in the US market, for example if competitors have filed similar intellectual property rights earlier. Before entering the US market or launching a product there, we therefore carry out a freedom-to-operate analysis to check whether your project infringes any existing US intellectual property rights held by third parties.

We develop an IP strategy tailored to your specific US business model – not to a standard portfolio. We produce the freedom-to-operate report in good time before market entry, so that you can make decisions with a clear understanding of the risks involved.