Practice Profile

Notaro, Michalos & Zaccaria P.C. provides its clients with a wide range of domestic and foreign intellectual property legal services and counseling.

Patent and Technology Searching
Invention novelty/patentability searches.
• Right to use searches for new products and processes.
• Patent infringement searches.
• Patent validity searches.
• State of the art patent searches.
• Technical literature and database searching of proprietary databases, various library resources and Internet searching. Through long-established international relationships, we are able to provide foreign patent searches. With the support of computerized information databases, significant legal, scientific, general and specialized library resources in New York and Washington, D.C., we provide in-depth technical, business and legal information on a wide variety of subjects.
• Counseling and opinions on patentability, validity, right to use new products and processes, infringement opinions and infringement avoidance counseling.

Patent Procurement
• Preparation and filing of United States design and utility patent applications, mechanical, electrical and chemical applications, Internet and e-commerce related patent applications and business method patent applications.
• Prosecuting utility patent and design patent applications.
• Filing counterpart foreign patent applications, PCT (Patent Cooperation Treaty) applications and regional European Patent Office filings through associates in Europe and other foreign jurisdictions.
• Appeals to the Patent Office Board Of Appeals.
• Patent interference practice.

Related Patent And Invention Services
• Counseling, inventors and businesses in all aspects of patent protection including inventorship, co-inventorship, invention ownership, shop rights, purchase, sale and licensing of inventions and patent rights, business method patents, idea submissions, development and collaborative agreements, international patent protection and patent procurement strategies and portfolio management.
• United States patent reissue and reexamination.
• Maintenance of issued patents.
• Preparing and negotiating invention, patent, know-how and trade secret licenses.
• Patent ownership agreements.
• Patent assignments.
• Preparing and responding to patent cease and desist letters.
• Litigating patent infringement claims.
• Preparing confidential disclosure agreements, non-confidential disclosure agreements, reciprocal confidential exchange agreements, and related advice and counseling.
• Preparing unsolicited idea and invention submission policies.
• Patent-related provisions of employment agreements, consultant agreements, development of employee invention incentive, invention disclosure programs and pre-invention assignment agreements.
• Patent vigilance and surveillance by topic, competitor vigilance and patent class surveillance for patents of interest.
• Patented product development and distribution agreements, patent related contract provisions for sales agreements, and patent warranty and indemnification agreements.

Trademark Searching
• Preliminary/screening knock-out searches.
• Searches of federal trademark registrations and pending applications.
• Searches of state trademark registrations.
• Common law searches.
• Internet domain name searches.
• Internet subject matter searching.
• Foreign trademark clearances.
• Pre-use and pre-application trademark counseling.
• Opinions on the availability of proposed marks for use and registration, right to use, infringement and trademark dilution.

Trademark Procurement
• Preparing and filing United States trademark and service mark applications based on prior use of the trademark or service mark, based on intent-to-use the trademark, based on claims to the priority of a corresponding foreign trademark application and based on foreign registrations.
• Preparing and filing state trademark applications.
• Filing counterpart foreign trademark protection through associates in foreign countries and in foreign regional systems such as the European Community trademark system.
• Prosecution of United States trademark applications including amendments, amendments to allege use, statements of use, disclaimers, and consents of individuals.
• Receiving, counseling and prosecution of extensions of the United States Madrid Protocol applications.
• Appeals to the Trademark Trial and Appeal Board.

Other Trademark Services
• Recordal of registered trademarks and trade names with United States Customs Service & Border Protection.
• Declarations of use and incontestability.
• Renewal applications.
• Trademark opposition and cancellation proceedings.
• Trademark Official Gazette vigilance, domestic and foreign, and Internet trademark vigilance.
• Trademark consent and co-existence agreements.
• Trade name agreements.
• Preparing and responding to trademark with trade dress cease and desist letters.
• Negotiating and preparing trademark purchase and assignment agreements.
• Negotiating and preparing trademark licenses, assignments, merchandising agreements, infomercial agreements and trademark driven distribution agreements.
• Preparing trademark proper use manuals and style sheets.
• Trademark and trade dress infringement, unfair competition and dilution litigation.

• Copyright counseling.
• Procuring copyright registrations.
• Recordal of copyright registrations with United States Customs & Border Protection.
• Securing and litigating copyrights, negotiation of licenses, work for hire agreements, independent contractor agreements, ownership transfer agreement, designer agreements and computer contracts.
• Preparing and responding to copyright cease and desist letters.
• Pre-litigation strategy and counseling.
• Copyright infringement litigation and defense.

• Infringement investigations.
• Asserting and defending patent, trademark, trade dress, copyright, trade secret and unfair competition claims, trademark oppositions and cancellations and representing and counseling clients in related arbitration proceedings.
• Preparing applications for temporary restraining orders and defending against such applications.
• Federal litigation involving patents, trademarks, copyrights, trade secrets and unfair competition.
• Counseling and handling claims and litigation regarding false designation of origin, deceptive trade practices, dilution, false advertising, rights of privacy and publicity, trade secrets and other intangible rights.

• Counseling business and individuals regarding identifications and protection of trade secrets, proprietary information and know-how.
• Preparation and review of non-disclosure agreements.
• Counseling pertaining to new idea submission.
• Preparation of outside submission policies and agreements.
• Preparation of employee non-disclosure and pre-invention assignment agreements.

• Federal litigation involving trademark misuse on the Internet including unauthorized use of trademarks in domain names, hijacking of websites, cybersmearing, and other domain name disputes.
• Uniform Domain Name Dispute resolution proceedings.
• Internet use Policies.
• Domain name strategies counseling.
• Domain name registrations and transfers, website development agreements, web hosting agreements, web linking agreements, click-wrap licenses, website intellectual property audits.

• Preparation of license agreements for patents, trademark and copyrights, multimedia agreements and merchandising rights.
• In-depth analysis, negotiations and counseling concerning license agreements.
• Litigation and arbitration of license disputes.

• Customized intellectual property educational presentations to business executives, IP liaisons, buyer, designers, inventors and creative groups.
• Intellectual property aspects of acquisitions and divestitures, including preparing contractual provisions and conducting related due diligence, trade secret protection, protection of inventions and know-how developed by employees, deals with consultants and independent persons and organizations, development agreements, collaborative research and development agreements, designer agreements, consultant agreements, joint venture, and related contractual agreements.
• Initiating and defending arbitration proceedings pertaining to intellectual property claims and agreements.
• Mould maker and mould user agreements for products covered by patents, trademarks and copyrights.
• Proprietary information notices.
• Preparation of corporate policy statements concerning intellectual property.
• Review and advice regarding existing business policies pertaining to patents, trademarks, copyrights, trade secrets and related matters.
• Patent and trademark watching services.
• Providing client alerts and client newsletter.
• Providing services in intellectual property matters to general law firms, acting as co-counsel and experts in intellectual property litigations.