1201 new york avenue n.w. | 7th floor | washington, d.c. 20005 | … documents/2017-8 sh firm... ·...

22 Total, full-time attorneys:

15 Partners 7 Associates

2 Senior Counsel 1 Senior Advisor

2 Law Clerks 4 TRADEMARK ATTORNEYS


ATTORNEYS

Staas & Halsey LLP is a Washington, D.C. based law firm dedicated exclusively to intellectual property law. Staas & Halsey has provided IP solutions for businesses around the world for over 45 years. Our attorneys offer in-depth technical and legal expertise with convenient and immediate access to the extensive legal and government resources in the Washington, D.C. area, including the U.S. Patent and Trademark Office, the U.S. Copyright Office, the International Trademark Commission, and the U.S. Court of Appeals for the Federal Circuit. We assist clients in developing a comprehensive intellectual property portfolio to successfully maintain and enhance their competitive position within the marketplace. Through monitoring and evaluation competition, as well as detecting relevant technology trends, we can provide the information needed to make critical decisions and command the leading edge. Through careful coordination with our clients’ management teams, we aid in objectively valuating intellectual property such as patents, trademarks, and copyrights, and we structure licenses to achieve the most beneficial business terms. 1201 New York Avenue N.W. | 7th Floor | Washington, D.C. 20005 | 202.434.1500 | 202.434.1501 | [email protected]

ABOUT US


ABOUT US

In 1971, H.J. Staas and James D. Halsey Jr. decided to form a law firm dedicated to providing the best legal intellectual property service and consulting based on their mutual beliefs of fairness, integrity, honesty, loyalty, and commitment to clients. They decided on an intellectual property law firm called Staas & Halsey LLP. That was the beginning of what today is a Washington, D.C. based law firm dedicated to providing IP solutions to inventors and businesses in the U.S. and around the world.

45th Anniversary of Staas & Halsey LLP


ABOUT US

STAAS & HALSEY IS USUALLY RANKED AMONG THE TOP 20 LAW FIRMS FOR THE NUMBER OF UNITED STATES PATENTS PROCURED FOR CLIENTS:

Ranked 21st by IPWatchdog for total number of U.S. utility patents that issued in 2016 (1,432) Ranked No. 22nd in the number of U.S. utility patents procured in 2015 by the Ant-Like Persistence blog (replacing the now defunct Intellectual Property Today ranking); Ranked in the top 20 of U.S. patent firms for 2014 by Intellectual Property Today Magazine;

RANKED BY THE AVERY INDEX IN THE TOP 15 FIRMS IN WASHINGTON, D.C. FOR MOST PATENT ATTORNEYS; Recipient of the University of Alabama Excellence in Business Top 25 award in 2015 in recognition of Randy Beckers success as a patent partner and alumni of the University of Alabama;

25 Attorneys with Different Technical Degrees, IP Experience, and Industry Backgrounds;

MULTI-LINGUAL CAPABILITIES: Swedish, Korean, Spanish, Italian, German, Hebrew, Thai, Russian;

More than 50 additional Staff Members to support the IP needs of clients;


PRACTICE AREAS

Patents

Trademarks

Copyrights

Licensing and Technology Contracts

Consulting, Training and IP Opinions

Litigation

For more details on the Firm’s Practice, visit our website at www.staasandhalsey.com

http://www.staasandhalsey.com/


STATISTICS

FISCAL YEAR

APPLICATIONS FILED

REGISTRATIONS ISSUED

2017 594,107 (+12%) 327,314 (+6%) 2016 530,270 309,188 2015 503,889 282,091 2014 455,017 279,282 2013 433,654 259,681 2012 415,026 243,459 2011 398,667 237,586 2010 368,939 221,090 2009 352,051 241,637 2008 401,392 274,250 2007 394,368 194,327

0

100,000

200,000

300,000

400,000

500,000

600,000

700,000

2007

20

08

2009

20

10

2011

20

12

2013

20

14

2015

20

16

2017

APPLICATIONS FILED

REGISTRATIONS ISSUED

USPTO TRADEMARK STATISTICS Fiscal Year 2016-17 (October 1 - September 30)


STATISTICS


Applications and their Pendency by Filing Method - FY 2017

No. of Applications 1st Action Pendency (Months)

Total Pendency (Months)

REPs 57,443 0.5 10.4 TEAS 13,206 2.9 13.3 TEAS-RF 295,442 2.9 9.7 TEAS-Plus 227,491 3.0 8.6 Paper Filed 525 3.2 13 Total 594,107 --- ---

Madrid REPs = “Requests for Extensions of Protection” from an application or registration filed in a foreign country that seeks registration of the same mark and goods in the U.S. under the Madrid Protocol treaty.

TEAS, TEAS-RF and TEAS-Plus = “Trademark Electronic Application System.” The electronic trademark application form on the web site of the U.S. Patent and Trademark Office which transmits applications to the USPTO through this web page. TEAS-Plus refers to the reduced filing fee ($225 per Class) application when the application is filed without requiring any additional amendments (including to the identification of goods/services because using an ID in the USPTO’s ID Manual). TEAS-RF refers to a semi-reduced filing fee ($275 per Class) application when the applicant agrees to receive solely electronic communications from the USPTO.


STATISTICS


TRADEMARK TRIAL AND APPEAL BOARD Incoming Filings & Performance Measures- Fiscal Year 2017

TYPE OF FILING

FY15 (% +/- FY14)

FY16 (% +/- FY15)

FY17 (% +/- FY16)

Appeals 2,992 (+7%) 3,121 (+4.3%) 3,158 (+1.2%)

Extensions of time to oppose

17,132 (-1%) 19,055 (+11.2%) 18,490 (-3%)

Oppositions 5,290 (-4%) 5,881 (+11.2%) 6,156 (+4.7%)

Cancellations 1,763 (+2.3%) 1,848 (+4.8%) 2,101 (+13.7%)


STATISTICS



COMMENCEMENT TO COMPLETION PROCESSING TIMES

FY15

(% +/- FY14) FY16

(% +/- FY15) FY17

(% +/- FY16)

Appeals Pendency -AVERAGE

42.7 weeks

(-2.5%) 39.7 weeks

(-7%) 38.8 weeks

(-2.3%) Appeals Pendency - MEDIAN

35 weeks (-2.8%)

34 weeks (-2.9%)

31.5 weeks

(-7.4%) Trial Cases Pendency -AVERAGE

161.2 weeks (-2.4%)

154.3 weeks (-4.3%)

157.2 weeks (+1.9%)

Trial Cases Pendency- MEDIAN

142 weeks (No change)

142 weeks

(no change) 148 weeks (+4.2%)

ACR Trial Cases - AveragePendency* # ACR Cases Decided:

138.6 weeks

(+1.7%) 10 cases

98.4 weeks

(-29%) 23 cases

119.4 weeks

(+21.3%) 17 cases


STATISTICS



CONTESTED MOTIONS FY15

(% +/- FY14) FY16

(% +/- FY15) FY17 (% +/- FY16)

No. Decisions lssued 951 (-2.4%)

1,022 (+7.5%)

991 (-3%)

No. Motions Resolved by Issued Decisions#

1297

(-4.5%) 1,367 (+5.4%)

1238

(-9.4%)

Average Pendency, from Ready for Decision to

Issuance

9.8 weeks

(+8.8%) 8.2 weeks

(-16.3%) 7.8 weeks

(-4.9%)

No. Cases with Motions Awaiting Decision

159 (+17.8%)

117 (-26.4%)

147 (+25.6%)


TRAINING

At Staas & Halsey LLP, we take pride in our vast experience in the intellectual property field; we have held U.S. IP training programs at our firm for various international companies and international law firms for the past 35 years. Such U.S. IP training programs have been as short as two (2) weeks and as long as one and a half (1½) years, depending on the client’s interests. The possible topics and contents of the relevant training program focus on U.S. patent procurement, prosecution, studies and opinions, and licensing by initially building a foundation on U.S. patent prosecution, then expanding to patent evaluations and licensing. The training budget is also moderate in cost. We are always delighted to customize our IP training program in length and content to fit the company’s or international law firm’s needs.


TRAINING

U.S. INTELLECTUAL PROPERTY TRAINING PROGRAM LIST OF TOPICS/ACTIVITIES

1. Role and Construction of U.S. Patents and U.S. Patent Applications 2. Claim Interpretation, including means-plus-function limitations 3. Inventorship 4. Novelty Requirement 5. Obviousness or Non-obviousness 6. Restriction/ Election of Species and Double Patenting 7. Quality Patent Improvement 8. Overview of U.S. Intellectual Property Prosecution and Litigation 9. Preparing Patent Applications 10. Rejection of Claims 11. Effectively and Efficiently Interviewing Inventors and Preparing U.S. Patent Applications 12. Subject Matter Requirements – 35 U.S.C. §101 13. Amendment after Final Practice 14. Petitions and Appeals 15. Brief overview of certification statement in filing information disclosure statements (IDS) 16. Patent Cooperation Treaty (PCT) 17. Ownership Assignment Access to Patent Applications


TRAINING

U.S. INTELLECTUAL PROPERTY TRAINING PROGRAM LIST OF TOPICS/ACTIVITIES (Continued)

18. Continuing Application/RCE Practice 19. Brief Overview of Common Ownership and 35 U.S.C. §103(c) 20. Examination of Nonprovisional US Patent Applications 21. Correction of Issued Patents – Reissue, Certificate of Corrections 22. Patent Marking and Intellectual Property Infringement Indemnification 23. Computer Software/Business Method Patenting and In Re Alice 24. Infringement and Validity Analysis and Reports 25. Ethics, Inequitable Conduct, and Fraud 26. USPTO Post Patent Grant Proceedings (e.g. Inter Partes Review) 27. Managing IP Portfolios 28. Licensing Overview 29. Patent Litigation Overview and Trends 30. Tour of U.S. Patent and Trademark Office (USPTO) 31. Tour of U.S. Court of Appeals for the Federal Circuit (CAFC) (To be determined) 32. Tour of International Trade Commission (ITC) (To Be Determined)


TRAINING

FIRM TRAINEE OFFICE SPACE Each Trainee at Staas & Halsey LLP will be provided their own separate office, computer, internet connection, printer, direct phone line access, and access to administrative support.

Staas & Halsey LLP is located in the heart of Washington, D.C.,

FIRM LOCATION

STAAS & HALSEY LLP Attorneys with Trademark Experience STAAS & HALSEY LLP Attorneys with Trademark Experience

David M. Pitcher John C. Garvey William F. Herbert Alexander H. Butterman

Let Us Tailor an Intellectual Property Solution for Your Business Staas & Halsey LLP

1201 New York Ave., N.W., 7th Floor Washington, D.C. 20005

Telephone: 202.434.1500 Facsimile: 202.434.1501

For More Information, Please Visit: http://www.staasandhalsey.com

mailto:[email protected]





1201 new york avenue n.w. | 7th floor | washington, d.c. 20005 | … documents/2017-8 sh firm... ·...

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