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Michael Haynes PLC is a law firm dedicated to empowering all aspects of its clients’ intellectual property. I work with every type of Intellectual Property.
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Trade secrets can include any information (including data and knowledge) that provides competitive advantage. Typically, a company’s trade secrets account for the vast majority of its intellectual assets, yet often go unrecognized, unappreciated, and rather poorly protected.
Trade secrets, which are the oldest form of intellectual property protection, are defined as information that is not generally known, provides economic value to its owner, and is kept secret via reasonable measures of security.
Trade secrets can include:
Note, however, that absent an enforceable contract, your company has no right to exclude others from using “proper means” to obtain what your company considers to be its trade secret. Proper means can include independent development, reverse engineering, obtaining the secret information from a third party who has a right to disclose it, or obtaining the secret information from your company without breaching a contractual or other duty, such as when your company has failed to exert reasonable efforts to maintain the secrecy of that information. In contrast, improper means can involve breach of contract, espionage, theft, electronic security breach, wiretapping, fraud, bribery, coercion, etc.
Trade secrets are often protected by by formal written agreements (e.g., Non-Disclosure Agreements, Employment Agreements, Consulting Agreements, etc.), training, physical security, computer security, and/or other well-managed access control practices. Nevertheless, trade secrets frequently fall into the public domain. Thus, many trade secret holders consider patent protection when feasible.
Agreements
The variety of potential business agreements is simply astounding. Nevertheless, certain business scenarios appear with such frequency that tools and rules of thumb for crafting relevant agreements have emerged that often can smooth the way and avoid many potential pitfalls.
I have substantial experience dealing with these, and many other scenarios.
Perhaps the most common scenario is the need to disclose a trade secret to someone outside the control of your company. In this situation, a Confidentiality or Non-Disclosure Agreement (NDA) is frequently relied upon. Key to many such agreements can be a clear identification of what must be kept secret, and what uses are allowable for the secret information.
Closely related is the Employment Agreement (and its cousin, the Consulting Agreement). These agreements typically include confidentiality provisions, as well as requirements for assignment of intellectual property rights, assistance with obtaining and protecting intellectual property rights, and possibly a non-compete and/or non-solicitation clause.
Assignment clauses can require that employees, contractors, and/or business partners assign their intellectual property rights to your company. Yet difficulties can emerge when, for example, the resulting assignment documents are drafted incorrectly, sought at the wrong time, or recorded improperly.
Generally, a patent is written document that:
Visit my Patents page to learn more.
A mark is an identifier of the unique source of a good and/or service. What kind of identifier? Well, a mark can be nearly anything (e.g., one or more words, logos, and/or design details) that is used in commerce with the goods/services and that indicates the single source of those goods/services, thereby distinguishing the goods/services of one source from another.
For example, any of the following can serve as marks:
Visit my Trademarks page to learn more.
The following is a very general overview of copyrights, and is not intended to apply to any particular situation or work. Rather than relying on these generalities, please consult with me about the specifics of your situation.
A copyright arises, by federal statute, at the moment an original “expression”, such as a writing, musical score or recording, carving, sculpture, illustration, painting, photograph, movie, etc, is “fixed” (e.g., recorded, captured, etc.) in a tangible medium (e.g., paper, canvas, wood, marble, audio tape, CD, DVD, electronic file, etc.) of expression.
A copyright provides exclusive rights to control who can:
These rights are divisible, and each one can be allocated for different uses, territories, times, mediums, etc.
More information is available from the U.S. Copyright Office.
Copyrightable works can include:
Pictorial, graphic, and sculptural works can include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.
Copyright law only protects fixed and original works of authorship.
A work can be fixed in several ways, including being painted on a canvas, written on a piece of paper, and stored on a hard drive or smartphone.
Originality requires some amount of creativity by the original author of the work.
Copyright protection is generally available for the life of the author plus 70 years for individuals, or the shorter of 95 years from the date of publication or 120 years from creation for corporations or works for hire.
Copyright protection is not available for de minimis (inconsequential) contributions (words, titles, short phrases, and ornamentation), facts (including research and history), forms (format, layout, and style), color, typeface, photographic subjects, athletic events, “scenes a faire” (common themes and plots), ideas, procedures, processes, systems, methods of operation, concepts, principles, discoveries, and government works.
A copyright notice should be applied to a work to put others on legal notice that the work is subject to copyright.
A proper copyright notice includes the copyright symbol © or the word “copyright”, the year of first publication, and the legal owner (e.g., “© 2007 Joe Smith” or “Copyright 2011 Jane Jones LLC”).
Copyright notice generally should be provided regardless of whether the copyright has been registered.
Copyrights can be lost if a work is published without proper notice.
Proper registration of a copyright can provide many benefits, including:
Secondary benefits of registering the copyright can include:
Application Preparation:
Copyright Office Fees:
Total:
Copyright Office processing:
Caveats:
More information is available from The U.S. Copyright Office.
Generally, the steps for preparing a copyright application are:
Registration: necessary for instituting infringement suits, and for obtaining statutory damages and attorneys’ fees. Delays in registering a work might make obtaining statutory damages and attorney fees impossible (it’s best to register within 90 days of first publication).
Term: copyrights have a long duration, e.g., life of author plus 70 years.
Assignment: requires a written agreement.
Ownership: under the “work for hire” doctrine, paying for a material object (such as a painting, book, CD, etc.) does not necessarily mean the copyright to the work embodied by that object has been purchased. That is, very generally, even if a work is created under a contract with your company, unless specifically designated as a “work for hire” in that contract, a written assignment of copyright typically is needed from any independent contractor, and from any employee working outside the scope of their employment, if the copyright is to be transferred from the creator to your company.
Concepts, Ideas, Prototypes, Models
Know-how, Recipes, Processes, Software, Customers
Brands, Logos, Ads, Jingles
Writings, Photos, Drawings, Artwork, Sculpture, Audio, Video
I have experience with these technologies and more:
Operating systems, controls, applications, databases, user interfaces, embedded systems, automation
Medical devices, automotive, aerospace, defense, construction, machinery, mining, MEMS, tools, consumer products, sporting goods, ballistics, toys, food production, manufacturing processes
Finance, economics, marketing, e-commerce, insurance, statistics
Properties, uses, processing, alloys, coatings
Chelates, catalysts, polymers, inorganics, nano-tech, processing
Medical devices, pharmaceuticals, nutraceuticals, biochips, bioinformatics, bioremediation
Michael Haynes PLC can provide any of the following IP-related services:
For IP Asset owners, my counseling services address:
Additional counseling services target:
A professional IP audit will systematically review how well your company has been respecting its own, and other’s, IP assets by:
IP audits can help empower your company’s IP by:
Utilizing professional patent searchers, I provide:
A basic State-of-the-Art search typically provides copies of in-force patents covering the basic subject matter of interest.
Depending on needs, the search can return a sampling of the patents in the basic subject matter area, or nearly all of those patents plus expired patents (a.k.a., a “collection” search).
Advanced searches can include searching websites, newsgroups, English-language non-patent literature, and/or foreign-language patents, applications, and literature.
A basic patentability search typically begins with brief communications between the searcher and one or more of the inventors to:
A basic search typically includes searching for relevant US patents, US applications, and PCT patent applications.
Advanced searches can include searching websites, newsgroups, English-language non-patent literature, and/or foreign-language patents, applications, and literature.
What is a PCT Patent Application?Nearly every industrialized country (with certain exceptions, e.g., Taiwan, any many Latin American, Middle Eastern, and African countries) is a signatory to the Patent Cooperation Treaty (PCT), which defines a process for the filing, search, and examination of an “international” (or PCT) patent application.A PCT application does not directly result in a patent. Instead, it typically results in a search and a written examiner’s opinion of the patentability of the claimed concepts.
The search and opinion typically are received roughly 19 months from the priority date (the date of filing of the PCT, or of an earlier application from which the PCT application seeks to benefit). The PCT application is then published at roughly 19 months from the priority date.
If examination is requested, an examiner’s report, which sometimes is more detailed than the written opinion, is usually received between 19 and 28 months from the priority date.
By 30 or 31 months from the priority date, we submit a localized “National Stage” patent application to the national patent office of each client-desired country.
The PCT search results, written opinion, and examiner’s report can assist each corresponding national patent examiner with determining if a patent should and will be issued for that country, and when particularly positive, sometimes can inspire an examiner to not perform an additional search or a rigorous additional examination of the claims. Thus, some of the potential benefits of the PCT process are the opportunity to:
- defer the decision to file a patent application in a PCT signatory country;
- obtain a relatively quick search and patentability opinion for the claims;
- obtain an examination report that sometimes will strongly influence at least some of the national patent examiners; and
- all for a relatively modest government fee (considering the potential fees for early filing in a number of foreign patent offices).
The costs of filing “national” patent applications varies considerably from country to country, and is impacted substantially by whether a certified translation of the application is required by a given country (in other words, whether they will accept an English language application).
In some situations, if no delay and less than 4 countries are desired, it can be advantageous to file directly in those countries and skip the PCT process. This decision should be discussed with me as early as possible.
Before a product or service is brought to market, most well-counseled entities obtain clearance searches and opinions to avoid infringing the patent rights of others, and/or to insulate against allegations of willful infringement.
A basic clearance search typically includes searching the most related technology areas for in-force (and possibly expired) US patents with claims of interest.
Advanced clearance searches can include searching for US patents classified beyond the technology area of the product of interest, and/or obtaining the prosecution history of any relevant patents.
Upon suspicion or notification that a patent owner might or has alleged that a product or service infringes the owner’s patent, most well-counseled entities obtain a non-infringement search and opinion to determine if the infringement claim has merit, and/or to insulate against an allegation of willful infringement.
A basic non-infringement search typically includes searching the most related technology areas for in-force (and sometimes expired) US patents with claims of interest.
Advanced non-infringement searches can include searching for US patents classified beyond the technology area of the product of interest, for patents having “blocking” claims, and/or obtaining the prosecution history of any relevant patents.
When most well-counseled organizations suspect that their product or service might fall within a claim of another’s patent, they obtain an invalidity search and opinion to determine if the patent’s claims are valid, and/or to insulate against an allegation of willful infringement.
A basic invalidity search typically is preceded by obtaining a copy of the patent of interest along with a copy of its prosecution history (the entire collection of correspondence between the applicant and the USPTO). Also, any patents or printed publications cited on the face of the patent can be obtained.
If the search is still needed, the searcher can review and obtain copies of additional relevant references, such as uncited US patents, English-language foreign patents, and English-language non-patent literature, that can serve as prior art against the patent of interest.
Advanced searches can include searching websites, newsgroups, English-language non-patent literature, and/or foreign-language patents, applications, and literature.
If necessary, copies of uncited non-English-language patents and non-patent literature can be searched and obtained.
In certain cases, additional investigation might be necessary to identify invalidating prior art and/or activity.
I provide searches of both word and design marks that can identify:
I can also provide information useful for determining:
Patent publications can signal many things, including emergent technologies, companies, and competitors. Various analytical and visualization techniques are available to help spot those signals more easily. For example, I offer a “watch” service that can provide you with periodic reports of new patent publications that mention a specific keyword, are classified within an identified technical field, and/or are associated with a particular company, inventor, or earlier patent publication. Comparing visualizations for different points in time can allow important changes to be identified, such as emergent technical trends, inventors, and/or patent owners.
For example, by tracking inventors associated with patent documents linked to a given patent owner over time, I can identify not only that company’s most prolific inventors, but also its emerging ones. I can even determine who in that company probably knows the most about a given concept. Such insights can be invaluable when seeking to attract the “best and brightest” to join your company.
As another example, by tracking the concepts described in a competitor’s patent publications, I can discern that company’s strategic initiatives, including those of greatest threat to your company, often long before those strategies become apparent in the marketplace. Such timely awareness can allow your company to take appropriate counter-measures, such as innovating blocking concepts and filing patent applications that “wall-off” the competitor, potentially encouraging them to abandon their threatening research and development efforts.
By tracking recent entrants to a field of particular interest to your company, we can help you spot innovative start-ups and small competitors that might make good acquisition or investment targets. Partnering with and/or purchasing such businesses, or licensing their innovations, can help you rapidly improve your product and/or service offerings, with much lower risks of R&D failures. Investing in such firms can provide you with opportunities to guide nascent technologies while earning above-market returns.
Analyzing the patent publications of potential suppliers can help your company learn of potential solutions to longstanding market needs long before those suppliers are ready to offer completed solutions to the marketplace, including your competitors. Thus, by joining forces with such suppliers while they are still honing their innovations for the marketplace, you can guide the supplier to providing an optimized solution for your needs and those of your customers. Moreover, you potentially can secure an exclusive licensing arrangement with that supplier, such that your competitors are locked-out from accessing that supplier’s valuable innovations or competing directly against your solutions.
A careful review of the relevant patent landscape can help you identify those patents that your current and/or potential products and/or services might infringe. With such patents identified, further analysis, such as via my powerful, patent-pending, document analysis tool, can identify whether any patents of concern have sufficient vulnerabilities to allow you to proceed with much reduced infringement liability risk, or whether cost-effective design-arounds, or possibly taking a license, might be the more prudent approach. I also can research the litigation history of a given patent owner, to learn whether they are likely to ignore, negotiate with, or attack perceived infringers.
Nearly every business activity (particularly those involving IP assets) is motivated by a desire to obtain an acceptable financial profit (i.e., “return”) on the expenses invested in that activity. This desire can be quantified, and is often referred to as a Return on Investment (or ROI).
Yet every such business activity is also accompanied by one or more risks that, if realized, will financially impact the costs of the activity and/or the return from that activity. These risks or probabilities can be quantified as a percentage. The impact of each risk can be expressed as a risk-adjusted return value.
By comparing risk-adjusted return values for different scenarios and/or intellectual assets, your company can determine which scenarios and IP assets to pursue.
Although an analysis of other metrics, such as break-even time and free cash flow, is sometimes critical, they are tightly correlated with risk-adjusted return, and can be easily determined from the same fundamentals used to assess it.
Given that costs, returns, and risks can all be quantified, and their approximate timing estimated, relying on your input and my legal, technical, and business background, I can determine a range of Risk-Adjusted REturn on Investment values, which we refer to as RARE values, as well as risk-adjusted Net Present Values, for the implementation of each of your mission-critical IP assets. Comparing these values to ROI thresholds for the corresponding development stage of the innovation can provide a reasonable foundation for you to decide whether to continue or cease investing in that innovation. With your input, I periodically update each innovation’s RARE valuation so that you can easily decide which path optimizes your investment in that IP asset.
In the patent realm:
A basic State-of-the-Art opinion typically describes the coverage of in-force patents covering the basic subject matter of interest, and can identify apparently unexplored areas that might be ripe for innovation and patenting.
Depending on needs, the opinion can describe the coverage of a sampling of the patents in the basic subject matter area, or nearly all of those patents plus expired patents (a.k.a., a “collection” opinion).
Advanced opinions can also describe the coverage of information disclosed via websites, newsgroups, English-language non-patent literature, and/or foreign-language patents, applications, and literature.
A basic patentability opinion typically identifies whether any single reference (or a legally allowable combination of references) discloses or suggests the invention of interest, thereby defeating the patentability requirements for inventions.
Advanced opinions can explore with the client and/or inventors possible avenues for enhancing or extending the invention to move it toward patentability.
A basic clearance opinion typically briefly distinguishes those patent claims that are most closely related to the major or critical features of the product or service of interest.
Advanced clearance opinions can include suggestions for permissibly “designing around” troublesome claims. Also, when designing around is undesirable, a non-infringement or invalidity opinion often can be provided.
For clients concerned that their product or service might infringe another’s patent, I often can provide a non-infringement opinion that relieves the concern and/or insulates against an allegation of willful infringement.
A basic non-infringement opinion typically distinguishes those patent claims that are most closely related to the major or critical features of the product or service of interest.
Advanced non-infringement opinions often dwell deeply into the prosecution history of troublesome claims, and in certain situations might rely upon well-respected literature (such as dictionaries and/or treatises) and/or technical experts. Other advanced non-infringement opinions can include suggestions for permissibly “designing around” troublesome claims.
When needed, an invalidity opinion can be provided as well.
For clients concerned that their product or service might fall within the claim of another’s patent, I often can provide an invalidity opinion that relieves the concern and/or insulates against an allegation of willful infringement.
A basic invalidity opinion typically depends upon references that are prior art to the patent claim of concern, and/or the prosecution history of that claim, to identify why the claim fails to legally meet the patentability requirements.
A more advanced opinion might rely upon evidence of prior art activities and/or statutory bar activities.
In some situations, the opinion can explore potentially illegal activities by those associated with the patent that might lead a well-informed court to issue a judgment that all of the claims of the patent are unenforceable.
In the trademark realm:
In the copyright realm:
With the exception of trade secrets and know-how, each form of intellectual property can be protected via preparing and filing an application with the appropriate federal agency.
Although it is possible for the layperson to prepare a patent or trademark application, usually such an approach is not recommended, since the laws and procedures can be very complex and have changed frequently in recent years.
How is a Patent Application Typically Prepared?
Working closely with the inventor(s), I often can relatively rapidly prepare and file a patent application that not only is met with approval by the Patent Examiner, but also results in an issued patent that is highly likely to survive the rigors of litigation, and thus will be respected by competitors without the need to litigate.
What are the Steps for Preparing a Patent Application?
Generally, the steps for preparing such a patent application are, preferably with the invention disclosure and the results of the patentability search in hand, and with inventor assistance and feedback:
I often can relatively rapidly determine if a mark is likely to be deemed federally registerable, and prepare and file a suitable trademark application.
Generally, the steps for preparing a federal trademark application are:
Generally, the steps for preparing a copyright application are:
Patent applications and trademark applications are generally “prosecuted” or advanced, before the appropriate governmental agency, such as the Patent and Trademark Office in the United States. Without substantial skill and legal training, numerous strategic and/or legal errors can be made during prosecution, potentially deeply undermining or limiting the legal rights embodied in any eventually issued patent or trademark registration.
How is a Patent Application Typically Prosecuted?
Once a patent application is filed, it enters the “prosecution” stage, during which it is examined (usually after considerable delay) by the assigned Patent Examiner, who often challenges the originally-filed claims using various rejections, some of which can be based on alleged prior art references. Via the Patent Attorney’s skilled amendment, rebuttal, and/or negotiation with the Examiner, the application can eventually emerge as an issued patent.
Along the way, the application might be amended and/or re-filed (keeping the benefit of its original filing date). In some cases, a final decision of the Examiner might be appealed, if appropriate. In a minority of situations, the client might decide to abandon further prosecution of the application. There are numerous other possibilities, thereby making a detailed explanation of the prosecution stage rather long and tedious.
The general process for prosecuting a U.S. patent application is:
1. The USPTO checks the filed application for compliance with numerous formalities.
2. Once all formalities are met, the USPTO sends the application to an “Art Unit”, which assigns it to one of its many Examiners.
3. After a substantial delay (typically 9 to 30 months while the Examiner addresses a mountain of earlier-filed applications), the Examiner performs a search for prior art publications (typically published patents and patent applications) that reasonably relate to the claims of the filed application.
4. The Examiner prepares and mails an “Office Action” explaining why the Examiner believes the claims to be unpatentable.
5. The Patent Attorney reviews the Office Action, and with input from the inventors (if necessary), carefully prepares a Response to the Office Action. The Response might rebut the Examiner’s approach, amend the specification, drawings, and/or claims; and/or present legal and/or technical arguments challenging the Examiner’s position. Any written communication with the USPTO is carefully scrutinized to avoid providing potential “ammunition” to later opponents of the patent (whether licensees or litigants).
6. Typically, after several rounds of Office Actions and Responses, the Examiner becomes comfortable with the claims and issues a “Notice of Allowance and Issue Fee Due”.
7. Assuming that the allowed claims and reasons for allowance are acceptable, the required Issue Fee is paid. Quite frequently, a follow-up patent application is filed that claims subject matter described in the earlier application, but not captured by the allowed claims. This “continuation” application should be filed no later than the date the Issue Fee is paid on the allowed “parent” application.
8. The USPTO issues, publishes, and mails a United States Patent, complete with gold seal and red ribbon.
Once a trademark application is filed, it enters the “prosecution” stage, during which it is examined by the Trademark Examiner, who might challenge the application for any of a number of reasons.
Via the Attorney’s skilled rebuttal, argument, amendments, and/or negotiation with the Examiner, the Examiner’s challenges are typically overcome, and the application is published for Opposition, during which third parties can (but rarely do) provoke a litigation-like procedure to prevent registration of the mark. Assuming the mark survives the Opposition phase (as the vast majority do), the Examiner will issue either a Certificate of Registration or a Notice of Allowance. In a rare few cases, a final refusal by the Examiner might be appealed. There are numerous other contingencies possible, thereby making a detailed explanation of the prosecution stage rather long and tedious.
The general prosecution process for a trademark application is:
1. The USPTO checks the filed application for conformance with all formalities.
2. The USPTO forwards the application to an Examiner.
3. After a substantial delay (typically 6 to 12 months), the Examiner reviews the application. That review typically includes a search for whether a conflict (i.e., a likelihood of confusion) exists between the mark in the application and another mark that is registered or pending in the USPTO.
4. The Examiner prepares and mails an “Office Action” explaining why the Examiner believes the mark to be unregisterable, for example, because the mark:
5. The USPTO’s Trademark Manual of Examining Procedure (TMEP) describes other potential objections, including:
6. The Applicant’s Attorney reviews the Office Action, and skillfully prepares a Response to the Office Action. The Response might rebut the Examiner’s approach, amend the application, and/or present arguments challenging the Examiner’s position.
7. Once the Examiner becomes comfortable with the application, the Examiner approves the mark for Publication by the USPTO in its Official Gazette. Upon Publication, anyone who believes they will be damaged by registration of the mark can file an Opposition to the registration. If an Opposition is filed (which is rare), an Opposition proceeding is held before the Trademark Trial and Appeal Board.
8. Assuming the mark survived the Opposition phase (as most do), if the application is based on Use, within about 12 weeks from Publication, the USPTO registers the mark and issues a Certificate of Registration. At this point, the owner of the mark can use the symbol ® with the mark.
9. Assuming the mark survived the Opposition phase (as most do), if the application is based on an Intent to Use, within about 12 weeks from Publication, the USPTO issues a Notice of Allowance. The Applicant then has 6 months to either use the mark in interstate commerce and submit a Statement of Use (including the required specimens), or request a 6 month Extension of time to file the Statement of Use. Additional Extensions can be sought every 6 months to obtain a maximum of 30 months (the original 6 months plus 24 months of extensions) from the Notice of Allowance to file the Statement of Use. If a satisfactory Statement of Use is not then filed, the application becomes abandoned.
10. Assuming the Examiner approves the Statement of Use, the USPTO registers the mark and issues a Certificate of Registration. At this point, the owner of the mark can use the symbol ® with the mark.
The need for negotiations and dispute resolution relating to intellectual assets can arise in any of numerous contexts, such as when:
Through my knowledge, experience, and proven techniques, I help my clients achieve their primary objectives, while preserving the business relationship, and optimizing the return from the intellectual assets.
The variety of potential business agreements is undoubtedly huge. Nevertheless, certain business scenarios appear with such frequency that tools and rules of thumb have emerged for smoothing the way and avoiding many potential pitfalls. I have substantial experience dealing with these, and many other scenarios.
Before describing some of the most common scenarios, it is helpful to note that rights in an intellectual property asset generally arise in the creator of that asset. Thus, it is common for a company to need a written agreement to ensure that rights in an employee-created IP asset are transfered to that company. Rights in jointly-created IP assets can sometimes raise difficult issues. For example, a company might need to buy-out a joint owner to completely control the rights in an IP asset.
Perhaps the most common scenario requiring a written agreement relating to IP assets arises when there is a need to disclose a trade secret, know-how, or other confidential information to someone outside the control of the secret-holder’s entity. In this situation, a Confidentiality or Non-Disclosure Agreement (NDA) is frequently utilized. Key to many such agreements can be a clear identification of what in particular must be kept secret, and what uses are allowable for the secret information.
Closely related to the NDA is the Employment Agreement. These agreements typically include confidentiality provisions, as well as requirements for assignment of intellectual property rights, assistance with obtaining and protecting intellectual property rights, and possibly, a non-compete clause.
Once an entity obtains intellectual property rights, it can license others to exploit those rights via a Licensing Agreement. Such agreements can vary substantially depending on, e.g., business needs, the type of intellectual property, the specific rights licensed, and/or the industry.
Included in many such agreements, Assignment clauses can require that employees, contractors, and/or business partners assign their intellectual property rights to a company. Yet difficulties sometimes emerge when, for example, the resulting assignment documents are incorrectly drafted, untimely sought, or improperly recorded.
Michael N. Haynes has been working in the field of intellectual property for roughly 30 years. Mr. Haynes is a registered U.S. patent attorney whose practice encompasses all aspects of intellectual property, including procurement, counseling, licensing, and litigation.
In his procurement practice, Mr. Haynes has prepared over 1000 U.S. and international patent applications, and prosecuted over 1500, in a diverse range of technologies that include electronics, computer hardware and software, optics, telecommunications, business methods, medical devices, machinery, and chemical compositions. In his counseling practice, Mr. Haynes has rendered numerous strategic, patentability, non-infringement, invalidity, and due diligence opinions. Moreover, Mr. Haynes has drafted, reviewed, and negotiated dozens of licensing, confidentiality, and employment agreements. He has litigated 12 U.S. and several foreign patent infringement cases, and several other intellectual property cases, filed in various U.S. district and appellate courts.
Mr. Haynes brings over a decade of engineering and management experiences to his intellectual property law practice. After providing engineering support for 2 years in a large Dominion Resources power generating facility, he worked for 9 years for The Dow Chemical Company in a variety of roles, including project manager, computer aided engineering specialist, and senior mechanical engineer. He also served Dow as a manufacturing quality supervisor, interacting with major clients including GM, Ford, Honda, Whirlpool, and 3M to solve technically challenging quality problems involving injection molded plastics. Moreover, Mr. Haynes been assisting businesses in assessing and implementing computer hardware and software technologies since 1983.
Early in his legal career, Mr. Haynes served as a partner for LeClair Ryan in Charlottesville, Virginia, and as a patent associate with Kenyon & Kenyon and with Howrey & Simon, both in Washington, DC. He began drafting patent applications in 1994 and became registered to practice before the USPTO in 1995.
Mr. Haynes graduated in 1996 in the top 10 percent of his class at Franklin Pierce Law Center (which is now part of the University of New Hampshire), which did and continues to offer one of the strongest intellectual property law programs in the world. He also earned a BS in Mechanical Engineering in 1984 from Virginia Tech, an MBA in 1990 from Central Michigan University, and an MS in Electrical and Computer Engineering in 2003 from Johns Hopkins University.
Mike lives with his wife and children in Northern Virginia.
It’s probably fair to say that Mike Haynes is broadly experienced. Now in his 27th year in the intellectual property field, Mike has been degreed as a patent lawyer since 1996, a manager since 1989, and an engineer since 1984.
Mike started very young. He has been an entrepreneur since 1970, a computer programmer since 1975, and a systems architect since 1984.
Speaking of experience, as many companies eventually learn to their great dismay, some patent attorneys who prepare and prosecute patent applications have little to no experience with patent or trademark litigation. Yet Mike has deep and broad real-world experience and formal education in both patent and trademark litigation, including very heavy involvement in 12 patent litigations (8 U.S. and 4 foreign), along with lighter involvement in many more IP litigations.
Because of his solid patent litigation background, Mike knows and appreciates how patent law is developing. For example, above and beyond his formal legal education, Mike has read nearly every Federal Circuit and Supreme Court patent decision issued within the past 20+ years (roughly 5000 decisions). These are the courts that have the final say on U.S. patent law, and when they change directions, Mike Haynes knows it, and changes direction as needed, right away.
Mike also has extensive experience with agreements, licensing, and opinions. Mike has drafted and negotiated hundreds of employment, non-disclosure, assignment, and other agreements, including dozens of licensing agreements, some valued at well over $100,000,000. In his counseling practice, Mike has rendered numerous strategic, patentability, non-infringement, invalidity, and due diligence opinions.
Mike has integrated his vast experience into the preparation of over 1100 patent applications, of which over 1000 were U.S. patent applications. He also has prosecuted over 2000 patent applications, at least 1500 of which were U.S. patent applications. And his work has been fruitful. Over 1500 patents have issued based in some part on Mike’s preparation and prosecution work, in over 45 countries, in a highly diverse range of technologies.
And the bounty isn’t limited to patents. Mike has filed over 125 U.S. trademark registration applications, and prosecuted an equal number. Currently, at least 150 registered trademarks are related to Mike’s work.
Mike’s business skills are rock solid. Although most patent attorneys have little to no formal business education, Mike Haynes holds an MBA with course work in finance, marketing, strategy, accounting, information systems, human resources, economics, statistics, and management.
Likewise, while most patent attorneys have not planned, started-up, or managed a business, Mike Haynes has a deep and broad real-world experience in each of those areas, along with: product research, innovating, and product development; business development, marketing, and sales; capitalization, taxation, and accounting; manufacturing, operations, and administration; and finally, management information systems.
And in contrast with most patent attorneys who have personally brought no products to market, Mike has developed, produced, and/or marketed businesses based on legal services, software development, plastic resins, specialized consumer products, rare coins, print media, food products, and more. He has created and run 3 profitable businesses on his own, and has a fourth currently incubating.
Mike gained his legal skills through assignments that have included:
Starting in 1994, during his initial year of law school, Mike learned to draft patent applications first-hand while working for a very bright, experienced, local patent attorney. Mike earned his patent registration number in 1995, and continued learning the details of patent drafting and prosecution from some of the best in the business while working for premier, world-renowned patent and litigation firms.
Prior to embarking into the world of intellectual property, Mike spent over a decade gaining real-world technical experiences. For example, he spent 9 years with The Dow Chemical Company in a variety of engineering and managerial roles. Also, Mike worked 2 years in technical roles in the electrical power industry starting in 1980. Moreover, Mike has assisted businesses in researching, assessing, and implementing computer technologies for well over 40 years.
Among patent attorneys, Michael N. Haynes has an unmatched formal education, including graduating in 1996 with a Juris Doctorate (JD) in the top 10% of his class at the Franklin Pierce Law Center, which continues to offer one of the highest-ranked intellectual property law programs in the country.
In addition to his law degree, Mike has earned a Master of Science in Electrical & Computer Engineering from The Johns Hopkins University (3.6 GPA), a Master of Business Administration from Central Michigan University (3.6 GPA), and a Bachelor of Science in Mechanical Engineering from Virginia Tech (3.6 GPA in his major).
Since joining the legal profession, Mike has served many in the Fortune Global 1000, including such well-known companies as AT&T, Siemens, Intel, Apple, Sony, Sun, Nokia, Samsung, Black & Decker, Procter & Gamble, Tyson Foods, Boston Scientific, Wells Fargo, Lockheed Martin, Texaco, Tyco, Beckman, Monsanto, Mattel, Toyota, LucasArts, Daimler-Benz, Fisher-Price, and Huffy. His clients have also included many smaller businesses, start-ups, and even a major university.
To even better serve his clients, in 2002, Mike launched and continues to run his own law firm, Michael Haynes PLC. Mike and his entire team are deeply committed to providing peerless client service.
For example, to accelerate responsiveness and drive down clients’ costs, Mike has extended his vast legal, management, and technical experiences while developing powerful office processes and innovative software that his superbly talented team relies on each day. Based on Mike’s software, his team files nearly every patent and trademark submission electronically. Mike’s fully paper-less office allows for immediate and secure access to any relevant client information, thereby avoiding delays, lost paperwork, and paper storage costs. Going further, Mike requires foreign counsel to send all communications and documents electronically, thereby avoiding unnecessary delays and charges for paper handling, filing, scanning, postage, and couriers, etc. In return, his firm pays over 99% of its bills within 3 business days of receipt. As a result of Mike’s commitment to efficient paperless operations, nearly all of his correspondence is sent electronically, saving his clients time and money.
As another example, no matter whether large or small, rather than dumping any client on a new, under-trained, or inexperienced attorney, Michael Haynes PLC instead provides every client with direct and prompt access to a dedicated, deeply-experienced patent attorney – Mike himself. And instead of sticking clients with substantial overhead costs for: prestigious high-rent downtown addresses in New York or DC; opulent atriums, polished marble flooring, and fine wood paneling; or hordes of under-utilized staff, Michael Haynes PLC is dedicated to incurring minimal overhead. For example, the firm has no expensive downtown office space at all. What’s more, it has no reception areas, conference rooms, libraries, or even file rooms! And as explained above, because the firm utilizes highly efficient paperless operations, except in extreme cases, there are no separate charges for copies, postage, couriers, etc.
Mike and his firm focus exclusively on empowering each client’s IP portfolio. For example, so that his clients stay well-informed, Mike periodically provides his clients with free IP Progress Reports listing the status of their intellectual assets and other matters. He also timely sends monthly invoices providing detailed descriptions of all work performed. For those clients who desire it, Mike can periodically generate updated valuations of each of the client’s mission-critical intellectual assets, estimating expected investments, risks, and returns for any desired scenario, so that the client can easily determine when further investment appears unjustified given a desired risk-adjusted return threshold. In addition, he can periodically audit a client’s intellectual assets, IP portfolio, and related processes, prioritize those that are truly critical to the mission of the company, and teach his client how it can better manage those mission-critical items.
The 2nd edition of my book, “Empowering Intellectual Property – Best Practices for Innovators, Managers, and Investors,” is now available on Amazon.
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