Marketplace / Intellectual Property
Counsel for the ideas your business is built on.
Hire intellectual property lawyers for brands, inventions, content, and confidential information. Scope the registration, agreement, or dispute work you need.
Scope of support
What intellectual property lawyers
can help with
01Trademarks and patents
Scope registration, portfolio work and disputes for brands and inventions.
02Copyrights and trade secrets
Review rights, confidentiality arrangements, employee guidance and alleged infringement or misuse.
03Licensing and assignments
Draft and negotiate licenses, transfers and IP provisions in business agreements.
04Digital brand and content disputes
Address domain-name disputes, social-media brand issues and online content claims.
05IP diligence
Review the IP assets and risks relevant to an acquisition, investment or financing.
Patent review preparation
Scope review of an existing patent filing draft
Having a draft ready gives a patent practitioner something concrete to review. Describe the work as review of the draft and the relevant application record, with any revision and filing steps agreed separately. Let the practitioner determine what review is needed before taking responsibility for a submission.
For U.S. patent work, check that the practitioner has active registration appropriate to the matter in the USPTO register, and discuss experience with the technology and stage of the matter. Agree how to share application documents securely before sending them.
A fictional handoff
Example Company has a draft response for a pending patent application. Its coordinator prepares this note for the practitioner. The company, documents and statuses below are fictional.
The record
the application identifier and copies of the documents already filed, together with the office correspondence being addressed. The latest notice refers to an attachment that is missing from the packet. The coordinator flags the gap and asks the practitioner what is needed to assess the matter.
The draft
a working response labeled version 3, plus a separate list of changes the inventor wants reviewed. This is a proposed response; the coordinator has not marked it approved or ready to file.
The timing
the notice and its date are included. The coordinator asks the practitioner to confirm the applicable deadline and whether the requested work can be undertaken in time, rather than supplying a deadline calculated from a summary.
The requested output
advice on what must change, the revised documents within the agreed scope, and a clear decision about any submission. Confirm who authorizes the final version, who submits it and who handles later correspondence. Ask for the professional fee and any official fees to be identified separately.
Agree what the filing handoff will contain
If submission is included in the engagement, ask for a copy of the documents actually submitted and the electronic acknowledgement receipt, plus an explanation of any remaining action. The USPTO explains that this receipt records what it received. It does not establish that the intended documents were all sent or that an application has been accepted as complete. Review the receipt with the practitioner instead of treating it as a patent grant or the end of the matter.
Sources: USPTO guidance on electronic correspondence and application numbers and filing receipts.
Before you get started
A few useful
hiring questions.
What should a software consultant bring to an IP ownership review?
Bring a component list alongside the draft agreement. “The client owns the software” does not tell counsel which parts you intend to transfer, retain or obtain from someone else. For each component, record its source, how it is used, what the client needs to do with it and the documents supporting any claimed rights. Mark missing evidence rather than assuming that possession of the files settles ownership.
Fictional example: a developer is delivering a customer dashboard. The project contains a dashboard built for this client, a reporting utility the developer says predates the project, and a third-party charting library. The proposed handoff says “all source code,” while the developer expects to reuse the reporting utility. Put those facts beside each other for counsel; do not resolve the conflict by relabeling the whole project “custom work.”
A useful first inventory has three entries: dashboard — built for this project; intended client use: operate and modify it; creator agreements still to be checked. Reporting utility — developer reports earlier use and wants to reuse it on other projects; confirm what use or modification the client and a replacement maintainer need; earlier versions and relevant agreements to be supplied. Charting library — third-party component; intended client use: part of the deployed dashboard; exact version and applicable license terms to be supplied. These are evidence and permission questions, not conclusions about who owns each item. Include modifications and dependencies the client will need after handoff.
Give counsel the inventory, current MSA and statement of work, proposed delivery list, relevant contributor agreements and third-party terms through the agreed secure channel. Explain who will maintain the software and whether the client or a replacement provider needs to modify it. Ask counsel to reconcile ownership, permissions, delivery and ongoing support across the documents, identify unresolved rights, and prepare the agreed revisions.
What if the work spans more than one country?
Identify the jurisdictions involved and discuss the relevant experience required. Confirm the scope with the professional before proceeding.
How are IP engagements scoped and priced?
Agree on the work and billing structure upfront. Scope can differ between a filing, a licensing project and ongoing portfolio work.
The next step
Start with the work
your team needs.
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