IP Lawyers

A patent is a federal government-approved monopoly that provides exclusive rights to practice an invention in the U.S. for a limited period of time (20 years from filing of the application). Patents provide critical economic incentive for innovation. Patents consist of a specification, drawings (where necessary to understand the invention), and claims. The “specification” must contain a detailed description of the invention and must specifically describe the advance over what was previously known. Drawings, while not, strictly speaking, necessary in all instances, are very helpful to ensure that the invention is fully and adequately described. Every patent must contain at least one claim. A claim is a sentence, appearing at the end of the patent, after the specification, precisely defining exactly what the invention is, legally speaking. Further, the claims must be adequately supported by the specification. This requires that the description of the invention set forth in the specification enables a person possessing an ordinary level of skill in the pertinent field to make and use in the invention without having to engage in undue experimentation.

Patents are not self-executing (though simply possessing the patent may have some deterrent effect with regard to would-be infringers). Accordingly, much of a patent’s value depends upon the ability and willingness (both actual and perceived) of the patent owner to enforce the patent rights if necessary. Enforcement in this regard refers to initiating a patent infringement lawsuit in U.S. federal district court. While a full patent infringement litigation can be costly, most such actions settle prior to going to trial. As part of that settlement, the accused infringer may take a license under the asserted patent(s). Another consideration to bear in mind, however, when deciding whether or not to initiate a patent infringement lawsuit, is that, in the vast majority of cases, the accused infringer will challenge the validity of the asserted patent(s). Such validity challenges may be based upon, among other grounds, an argument that the patent should not have issued because it is not new, or while new would nonetheless have been obvious, or that the invention is not adequately described by the specification. Many patents that are asserted in litigation are held to be invalid. It, therefore, very much behooves patent applicants to take steps to help ensure that they are obtaining the strongest possible patent up-front.

The Chicago IP attorneys at Chiacchio IP, LLC have substantial experience handling the following sorts of matters relating to patents:

• Preparing and prosecuting U.S. patent applications (and coordinating with foreign counsel where the client wishes to procure patent protection in foreign jurisdictions as well). Ted has recently prepared and/or prosecuted patent applications relating to several different mechanical technologies, electrical technology, and artificial intelligence.
• Preparing formal Opinion Letters, and otherwise advising clients, regarding issues such as patentability, patent validity, patent infringement, patent enforceability, and freedom to operate.
• Preparing patent landscape analyses.
• Preparing cease-and-desist letters and responses to such letters.
• Patent infringement litigation. Mr. Chiacchio has litigated patent infringement actions throughout most of his career. He has been actively involved with five patent infringement trials in U.S. federal district court. He has extensive experience in all aspects of patent infringement litigation. Mr. Chiacchio has extensive experience on the front lines securing favorable results in a number of high-stakes patent cases with hundreds of millions of dollars in sales at stake. Such actions have related to pharmaceutical technologies as well as computer software-related technologies.
• Preparing and negotiating licenses of patent rights.
• Analyzing employment agreements that include provisions concerning patent ownership.
• Conducting due diligence investigations in advance of potential corporate mergers and acquisitions.
• Partnering with clients to monetize their patents.
• Challenging the validity of patents before the Patent Trial and Appeal Board and defending against such challenges.

A trademark is a word or symbol that serves as a unique identifier of a source of goods or services. Trademark protection is critical in business because it protects against competitors improperly benefiting from a business’ goodwill in the marketplace and strong business reputation.

Trademark rights result from one’s being the first to use a mark in commerce. Federal registration is not a prerequisite to obtaining trademark rights in the U.S. There are, however, benefits to federal trademark registration. Where a trademark is registered on the Principal Register maintained by the U.S. Patent and Trademark Office, these benefits include, among others, providing constructive notice to the public, including would-be infringers, of one’s trademark ownership claim; entitlement to a presumption of ownership of the trademark and to the exclusive right to use the mark nationwide; and inclusion in the federal trademark database, which will be searched by the trademark examiner when deciding whether to allow others’ trademark applications.

Where a party chooses to file a trademark infringement action to enforce their trademark rights, they will need to establish a likelihood of consumer confusion as between the trademarks at issue. Opposition proceedings are administrative proceedings presided over by the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office and may be initiated by those seeking to have a pending trademark application rejected (for example, based on likelihood of confusion with another mark). Cancellation proceedings are very similar to opposition proceedings procedurally but involve requests to cancel the federal registration of already-registered trademarks. While the recourse available to a party initiating an opposition or cancellation proceeding is limited to rejection or cancellation of the trademark application/registered trademark, much broader potential recourse is available in litigation in the courts. Courts have the authority to award monetary damages as well as an injunction preventing continued use of a mark.

Chiacchio IP, LLC frequently handles the following matters relating to trademarks:

• Preparing and prosecuting trademark applications.
• Advising clients concerning matters relating to likelihood of confusion between trademarks, priority of trademark use, the strength or weakness of particular trademarks, dilution of famous trademarks, and false advertising,
• Preparing cease-and-desist letters and responses to cease-and-desist letters.
• Opposition and cancellation proceedings on behalf of both trademark applicants/registrants and petitioners pursuing rejection or cancelation of an application/registered trademark.
• Trademark infringement litigation in the federal courts. Mr. Chiacchio currently serves as lead trial counsel in a trademark battle involving parallel opposition proceedings before the TTAB and litigation in federal district court. Mr. Chiacchio recently successfully settled a trademark dispute on behalf of the trademark owner wherein the settlement provided for the applicant/defendant withdrawing their trademark application and rebranding.

With regard to the distinct but related area of law concerning rights to one’s name and likeness, Mr. Chiacchio has significant experience counseling clients regarding such matters and preparing cease-and-desist letter addressing such matters.

Copyright protects original, creative, expressive content that has been fixed in a tangible form. The categories of work eligible for copyright protection include, generally, the following: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural plans. Copyright owners possess the exclusive right to reproduce/copy the work, to distribute the work publicly, to publicly display the work, to prepare derivative works, to perform the work publicly (where applicable), and to publicly perform sound recordings of the work through digital audio transmissions (where applicable).

Chiacchio IP, LLC routinely handles the following matters relating to copyright for its clients:

• Securing copyright registrations from the U.S. Copyright Office.
• Drafting and negotiating copyright licenses.
• Advising clients concerning matters such as copyrightability, copyright ownership, implied non-exclusive copyright licenses, copyright infringement and related strategy matters, work-for-hire provisions in employment agreements (or lack thereof), and authorship.
• Litigating copyright disputes in the federal courts. Mr. Chiacchio currently serves as lead trial counsel for a successful author in her action in U.S. federal district court against former colleagues that, among other things, seeks to establish authorship and copyright ownership of six culinary-related manuscripts. Mr. Chiacchio recently prevailed in securing dismissal of a fraud counterclaim asserted against his client in response to the client’s assertion of her copyright ownership rights.

Where highly sensitive information/technology is involved, careful consideration is required regarding the pros and cons of pursuing trade secret protection versus other forms of intellectual property protection, patent protection in particular. These two forms of intellectual property protection are mutually exclusive because in order to obtain a patent, one must disclose their invention to the public (i.e., in the patent itself); while trade secret protection requires that the trade secret not be disclosed.

More specifically with regard to trade secrets, the following three elements are required in order for information to qualify as a trade secret:

1. The information is not generally known and not reasonably ascertainable;
2. Steps are taken to maintain such secrecy; and
3. The information possesses economic value that derives from the secrecy.

Trade secrets may take the form of a formula, practice, process, design, instrument, pattern, commercial method, or compilation of information. As long as appropriate steps are taken to maintain the secrecy of such information, trade secret protection may extend indefinitely. Further, aside from measures such as non-disclosure/non-dissemination agreements and security precautions to preserve the confidentiality of the trade secret, obtaining trade secret protection does not entail any independent costs. Rather, if the criteria referenced above are met, such information will be deemed a protectable trade secret.

Notwithstanding these benefits to trade secret protection, there are drawbacks as well. The drawbacks include that there is no recourse under trade secret law for reverse engineering by others or if someone else independently develops the same trade secret. For these reasons, there is no such thing as a trade secret infringement claim (as provided for under patent, copyright, and trademark law). Rather, the only enforcement mechanism for trade secrets is a claim for misappropriation (i.e., theft) of the trade secret where possession was obtained improperly.

The Chicago IP lawyers at Chiacchio IP, LLC regularly render the following services relating to trade secrets:

• Advising concerning measures that should be taken to help preserve the confidentiality of trade secret information that are specific to each client’s operations, industry, and infrastructure.
• Analyzing and advising regarding employment agreements that include provisions concerning trade secret ownership.
• Advising regarding the pros and cons of electing trade secret protection relative to patent or copyright protection.
• Advising regarding steps to take when one’s trade secrets have been misappropriated.
• Preparing demand letters addressing alleged trade secret misappropriation and responses to demand letters.
• Litigating trade secret misappropriation and related matters. Mr. Chiacchio currently serves as lead trial counsel in a litigation pending in federal district court asserting trade secret misappropriation claims under the federal Defend Trade Secrets Act as well as under Illinois state law; and a claim for alleged hacking brought pursuant to the Computer Fraud and Abuse Act.

Over the course of over 15 years of practicing intellectual property law, Chiacchio IP’s founder Theodore J. Chiacchio (“Ted”) has developed a diverse set of technical competencies. Such technical competencies have been developed through his spending thousands of hours entrenched in the technology at issue in the matters that he has handled and working extensively with inventors and world-class experts in the technological fields involved. Ted’s technical competence encompasses, among other fields, mechanical, Life Sciences (medical, pharmaceutical, chemistry, biology, biochemistry), computer hardware and software, LED lighting, sensor/tracking technology, digital media networks, heating systems, and machine learning visualization platforms. Ted also has significant experience handling matters involving business method patents.

Chiacchio IP, LLC makes an effort to keep overhead expenses low. This is why we are in a position to provide cost-effectiveness that large law firms simply cannot (or will not) provide. Critically, however, the quality of service is on-par with (or, in most cases, superior to) that which you will get with any firm. Ted began his career by gaining years of comprehensive training and experience with two top international law firms. Ted, more recently, practiced for just short of a decade with a law firm that is consistently ranked by multiple publications as a Tier 1 (nationally) intellectual property law firm (a classification that includes less than 10 firms). This combination of low overhead and top-tier training and experience allows for an immense value-add for clients.

Chiacchio IP, LLC offers customized billing options for all of its clients. While certain clients choose a traditional hourly-based billing model, many others prefer project-based, flat fee billing options. Ted appreciates that the certainty provided for by flat fee billing oftentimes can be an attractive option for many businesses and individuals. Depending on the specific nuances of a particular matter, however, hourly billing may be a better option in certain instances (for example, where there is a high degree of uncertainty as to how a matter may unfold). For all matters, Ted strives to be efficient and provides detailed monthly statements setting forth all activity undertaken. Ted believes strongly that full transparency is a key tool for effective attorney-client communication.