FAQ

FAQ On IP Litigation:

Disputes and litigation over intellectual property (IP), such as patents, trademarks and copyrights can make or break a company’s or entrepreneur’s opportunities for profitability through these assets. Whether you are a plaintiff bringing an infringement claim or a defendant responding to such accusations, Attorney Roland Tong can provide the advice that you need. Below are some questions that clients and potential clients often bring up, along with possible answers. For customized answers applicable to your unique concerns, schedule a consultation.

Question: Will a cease-and-desist letter put a stop to IP infringement? Can such a letter avert the need for litigation?

Answer: Cease-and-desist letters play an important role in many IP infringement cases, but they must be handled with care because they can backfire. A threatening letter raises the possibility that a potential defendant in a different state might drag you into court there, possibly at great cost to you. It’s also a big business distraction to possibly be countersued in a different state. You could open yourself up to a lawsuit you didn’t want.

Question: Are there less risky ways to assert one’s IP rights other than sending cease-and-desist letters to infringers?

Answer: One way would be to send a nonthreatening letter that doesn’t mention anything about a lawsuit. It might say something like this: “I noticed you have a product out there that may resemble our patented product. Please refer to our patent number. This letter serves as a friendly notice.”

Question: What if a defendant in an IP infringement dispute is more aggressive? What might happen?

Answer: A defendant may respond to a cease-and-desist letter by filing a lawsuit against you in their own state, in a venue of their choosing. To prevent this undesirable turn of events, file your lawsuit first but hold off on serving the complaint to the infringer. You can then sendthe cease-and-desist letter. If the other side files in their state, there may be ways to have such a filing removed if you filed your lawsuit first.

Question:  If defending against a lawsuit will be very expensive, are there other resources to help with that defense?

Answer: Look into your business insurance policies. Sometimes, these policies have coverage for advertising injury. You might be able to tap into insurance to help pay for the litigation that you need to protect your intellectual property when advertising is part of the picture. Patent infringement is usually excluded from such insurance policies, but you may be able to get relief for lawsuits alleging advertising injury.

Question: What can you do when you are accused of patent infringement?

Answer: Please see our article on this exact topic, which lists eight possible ways to defend yourself in the event of a patent infringement claim against you.

Indeed, IP litigation – over patents, trademarks, or trade secrets – may be critical to the success or failure of a business venture. Attorney Roland Tong is experienced and effective in asserting his clients’ rights and resolving disputes in ways that fit specific situations. To schedule a consultation, call 949-693-1537, text 949-331-2889 or send an email inquiry.

How Do I Respond To A Cease And Desist Letter:

In the context of intellectual property litigation, a cease-and-desist letter may or may not be based on actual patent infringement or another valid claim; it may be a tactic to gain advantage. A typical letter might not only tell a business to stop making, selling, importing or using a certain product; it might also ask for information about how many products have been produced, sold, imported or used. A common mistake is for a respondent to readily provide the other side with information that will be used as ammunition later on.

Cease and desist letters should be addressed and responded to in a careful, strategic manner with the assistance of an experienced intellectual property litigation attorney. A lawyer with appropriate expertise can review the assertion in the letter and determine whether it is valid. Since litigation may or may not be necessary, a great deal of time and money can be saved by dealing wisely with a cease and desist letter.

Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

Orange County cease and desist attorney Roland Tong represents parties in a variety of complex patent matters. He helps his clients answer critical questions like:

  • How can I determine whether my product infringes on someone else’s patent?
  • What if my product doesn’t actually infringe?
  • What information should I provide to the other side, and when? What kinds of information could be used against my company or client?
  • What if I received a cease and desist letter from out of state?
  • How do you compare the patent claims with the accused product?
  • How do I file a declaratory relief action in order to move litigation to a preferred venue?
  • Did any inequitable conduct occur during the patent application process? Should the patent in question have even been granted?

If your business received a cease and desist letter, there are steps you can take to protect your interests. Attorney Roland Tong can help you plan those steps.

If you are seeking a Southern California lawyer with a history of success in patent litigation, complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule an appointment. Attorney Roland Tong offers a free initial consultation, competitive rates and alternative fee structures.

Patent Infringement Litigation:

The basis of patent infringement litigation is one party’s assertion that another party is violating its legal rights with regard to intellectual property. Particularly in cases in which a violation is found to be willful, the penalty for patent infringement can be harsh enough to sink a smaller company or significantly damage a larger company. Serious patent infringement matters call for serious representation from an attorney with the necessary technical and legal expertise.

An experienced patent attorney can protect a company’s interests in pre-emptive or reactive ways. The former tend to involve careful evaluation of patent claims and the prevention of litigation, while the latter may involve working strategically to mitigate the impact on a respondent in patent litigation.

Orange County patent infringement attorney Roland Tong has exceptional experience and resources in the area of patent infringement litigation. Equipped with a strong track record in court and a proven commitment to client service, he represents parties in patent matters involving:

  • Willful infringement: Respondents wishing to avoid maximum penalties through findings of willful infringement — these are often known as treble damages — need experienced counsel.
  • The need for noninfringement opinions and counseling, services that help a business understand conclusively whether patent infringement has occurred
  • Literal infringement, contributory infringement, infringement by inducement and cases involving multiple patents
  • Clearance opinions: Also known as a clearance investigation and a freedom to operate opinion, a clearance opinion can be invaluable for a company wishing to avoid patent disputes or prevent exacerbation of an existing problem. To that end, I facilitate thorough patent searches and formulate opinions regarding the launch of new products
  • Injunctions and Declaratory Judgments
  • Patent Defenses such as the First Sale Doctrine or Patent Exhaustion, Inventorship, Patent Invalidity, Patent Misuse, Laches and Inequitable Conduct
  • Claim Construction and Markman Hearing
  • Local Patent Rules
  • Court of Appeals for the Federal Circuit (CAFC)
  • Calculation of Patent Damages

If you are seeking a Southern California lawyer with patent litigation expertise, complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule an appointment. 

Patents:

A patent is a government-granted ability to exclude others from making, selling or offering for sale a patented invention. Any process, machine, composition of matter or manufactured item can be patented so long as it is new and useful. A utility patent application protects rights to the functionality and features of what is patented, as well as the way a product is made. A design application protects rights to the appearance and ornamental features of the product.

For help with patents, intellectual property litigation and all other intellectual property matters, complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule an initial consultation with an Irvine area lawyer.

Attorney Roland Tong is a true patent practitioner. Unlike other intellectual property attorneys who are not admitted to practice before the USPTO, he can represent individuals and businesses before a patent examiner and can assist with all aspects of patent law. As examples of his past work in this are, he has done the following:

  • Represented many startup companies and assisted them in getting patent pending status, which helped them obtain funding.
  • Represented slot machine and gaming machine manufacturers and assisted them in building their patent portfolios.
  • Assisted a supplier of printer cartridge after-market parts in building and managing their patent portfolio. This provided the products with a competitive edge and made the whole portfolio more attractive, resulting in those products being purchased by a large multinational company.
  • Represented a dental prosthesis manufacturer and assisted in obtaining patents.
  • Assisted others in obtaining patents for a variety of medical devices
  • Obtained patents for various software applications.
  • Assisted various table wagering game developers in obtaining patents.

If you have an idea or item that you would like to patent, Attorney Roland Tong can guide you through patent prosecution, beginning with a patent search. Once you are sure that your product is unique, he can handle the application process from start to finish and ensure that the application complies with patent statutes and regulations. Upon filing the application, you will be provided with an automatic patent pending status. This is especially important for startup companies that want to pitch their product or service to investors who look for this status to ensure that barriers to entry are in place and the product is safe from being stolen or copied by others.

If you are in a technology company or an innovative business employing engineers and scientists to invent on a daily basis, Roland Tong, Patent Attorney for Manning, & Kass, Ellrod, Ramirez, Trester LLP can help your company secure ownership of each invention. Attorney Roland Tong has taught various research and development personnel how to properly document the conception of their ideas, and how to obtain priority claim over their inventions.

In many cases, companies fail to capitalize on their inventions and the inventions just remain in the notebooks of their engineers or scientists. Even worse, competitors obtain patent rights on the same invention or one that is similar preventing companies from exercising the invention, even if their employees may have invented it first. Mr. Tong can ensure that the inventions are “harvested” in a timely manner and that the associated exclusive rights are obtained, which can be powerful in the marketplace.

Attorney Roland Tong provides full-service IP counsel to companies in matters related to trade secret protection, public disclosure prevention before the filing of patents and more, as described below.

Employee theft of proprietary technology is rampant and is a big concern, especially when employees bring over the technology to competing companies. Companies have relied on Roland Tong to ensure that the intellectual property rights are owned by the company as opposed to the employee inventor and are assigned to the company. Attorney Roland Tong has also helped companies secure their trade secrets.

Many companies have relied on Roland Tong to make sure they preserve their intellectual property rights both in the United States and abroad over products they display during trade shows. Certain countries are absolute novelty countries, which means that if a public disclosure happens before a patent application is filed, the patent rights over the invention are lost. Attorney Roland Tong has helped many companies file provisional applications, utility applications or Patent Cooperation Treaty applications, all of which are geared toward preserving intellectual property rights in the United States and overseas.

Attorney Roland Tong answers questions about patents and assists entrepreneurs and businesses in Orange County, California, and nationwide. Complete an online contact form, call 949-693-1537 or text 949-331-2889.

Trade Secrets And Unfair Competition:

A trade secret is like a special family recipe — it is unique and valuable — but often with much greater commercial value. A trade secret can be defined as information that derives value from being confidential. It can take the form of a technology, a process, a method, an algorithm or a formula that is not available to everyone.

In the business world, competition can be a good thing. Unfair competition generally refers to illegal forms of commercial competition that can create an unjust advantage — an unbalanced playing field — for one company over another. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

Orange County trade secrets attorney Roland Tong is committed to providing effective representation in complex intellectual property litigation involving trade secrets and unfair competition. Equipped with a strong track record in court and a proven commitment to client service, he represents parties in matters involving:

  • Misappropriation of trade secrets and other unauthorized uses of proprietary information
  • Breaches of confidentiality and nondisclosure agreements
  • Labels, stamps and marks
  • Customer lists, formulas, manufacturing processes and other secrets
  • False advertising
  • Related claims in state courts
  • Rights of publicity

As an attorney who concentrates on intellectual property law, he has extensive experience with trade secret matters and unfair competition cases related to computer technologies, gaming devices, mechanical devices, medical devices, nutritional supplements, pet products and other products and services.

If you are seeking a Southern California lawyer with a proven track record in the areas of trade secrets and unfair competition, complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule an appointment. Attorney Roland Tong offers a free initial consultation, competitive rates and alternative fee structures.

Trademark Litigation:

Trademarks and trade dress may have enormous inherent value for a business. Trademark litigation usually boils down to the protection of marks and the preservation of successful ways of doing business — or defending against assertions that infringement or other wrongdoing has occurred.

Trademark litigation that threatens a company’s success calls for expert legal guidance. It calls for focused representation that is as cost-effective as possible. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

Orange County trademark litigation lawyer Roland Tong provides advice and result-oriented counsel in trademark disputes. He represents parties in complex trademark litigation involving:

  • Trade dress infringement
  • Seizure of counterfeit goods
  • Cancellation of trademarks that violate (or allegedly violate) existing trademarks
  • Opposition, a process that typically involves one party trying to stop another party seeking registration of a trademark
  • Concurrent use rights
  • Trademark Trial and Appeal Board (TTAB) proceedings, which can address competition and concurrent use agreements
  • Domestic and international trademarks

Equipped with extensive legal and technical knowledge and a proven commitment to responsive client service, he provides solutions to very difficult problems involving intellectual property.

If you are seeking a Southern California attorney with significant trademark litigation experience, complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule an appointment. 

Computer Patents:

Attorney Roland Tong focuses a large portion of their his practice on computer related patents and their patent attorney works with clients to register, protect, enforce and defend all United States and international rights. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

Attorney Roland Tong can assist in such diverse technologies as:

  • Consumer electronics
  • Communication devices and methods
  • Software programs and computer equipment, including hardware, internet technologies, MPEG & DVD related devices
  • Computer accessories, including new media, media storage, new cables, new connectors, new audio and video players
  • Gaming devices and slot machines
  • Electrical and electronic equipment
  • Mechanical and optics software
  • Medical products software

Attorney Roland Tong can prepare applications for software patents and offer clients legal advice and counsel in software development, helping to define and properly register a claim with the broadest scope of protection possible.

If you need patent legal services for your software or hardware, complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule an initial consultation.

Design Patents:

A design patent application is an application that seeks to patent and protect an ornamental feature of an invention. Not all inventions can be a subject of a design application. It is best that you consult with a registered patent attorney to determine whether a design patent application is appropriate for your invention. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

The following products may have protectable ornamental or design features:

  • Exercise equipment
  • Golf putter head designs
  • Automotive accessories
  • Shoes
  • Household gadgets
  • Automobile and Motorcycle Wheels

Attorney Roland Tong handles patent, trademark, and other intellectual property needs for clients in Irvine and throughout Southern California. For further information about intellectual property law, please complete an online contact form, call 949-693-1537 or text 949-331-2889 today.

FAQ on Patents:

The following are just a sample of the variety of questions that clients and potential clients bring to the attention of Attorney Roland Tong. For more information, explore this website, including blog posts, or request a consultation.

Question: What is patentable?

Answer: A patent protects rights to an inventor’s “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” according to federal law. A utility patent protects structural features and/or functional features of an invention. A design patent protects rights to ornamental or decorative features of an investigation. A plant patent refers to protection over a plant (a living thing). A patent holder possesses “the right to exclude others from making, using, offering for sale or selling” the invention.

Question: What is the difference between a patent and a copyright? Or between a patent and a trademark?

Answer: Each of these terms – patent, copyright and trademark – defines a type of intellectual property. As mentioned above, a patent protects an invention, such as a process, machine or manufactured object, a composition of matter or the new and useful improvement of an already existing invention. Copyright, on the other hand, protects an original artistic or literary work. A trademark protects words, slogans, symbols or designs that identify the source of a product or service.

Question: What happens when there is a dispute about a patent?

Answer: Disputes about patents may come up at several points in time before and after a patent has been issued. For example, an inventor may challenge the validity of another party’s patent that has already been issued. Or, once a patent exists, a patent holder may claim that another party infringed upon it. The owner of a patent may bring legal action against a supposed infringer on the basis that the defendant illegally made, used, sold, imported or offered for sale an innovation covered by the plaintiff’s patent. Patent litigation is a common occurrence – potentially costly but in many cases, ultimately rewarding for the winner (whether plaintiff or defendant). A patent litigation attorney’s experience can make a significant difference in the success or failure of such a lawsuit.

When it comes to patents and other types of intellectual property protections, there is no substitute for dialogue with an experienced patent lawyer. To schedule a consultation with Attorney Roland Tong at Roland Tong, Patent Attorney for Manning, & Kass, Ellrod, Ramirez, Trester LLP, call 949-693-1537, text 949-331-2889 or send an email inquiry.

Mechanical Device Patents:

For a company with new products or services in development, due diligence must be performed to ensure that no other trade secrets or otherwise protected intellectual property is employed. This type of process might not be transparent to the developers, or even to the company leaders. Calling in a patent attorney who understands how to investigate innovation in specialized technical and scientific fields can make all the difference in a smooth delivery to market.

With the appropriate experience in pursuing protective measures, intellectual property lawyers can ensure that the ideas are not just patented, but properly captured and documented to provide true protection from unfair use. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

The following products may have protectable ornamental or design features:

  • Exercise equipment
  • Golf putter head designs
  • Automotive accessories
  • Shoes
  • Household gadgets
  • Automobile and Motorcycle Wheels
  • Attorney Roland Tong has experience in such areas as:
    • Golfing equipment
    • Golf accessories
    • Golf training aids
    • Household gadgets
    • Indoor and Outdoor furniture
    • Construction equipment
    • Automotive accessories
    • Automotive equipment

    Attorney Roland Tong, partner at the law firm of Manning, & Kass, Ellrod, Ramirez, Trester LLP, handles patent, trademark, and other intellectual property needs for clients in Irvine and throughout Southern California.

For further information about intellectual property law, please complete an online contact form, call 949-693-1537 or text 949-331-2889 today.

Medical Device Patents:

For a company with new products or services in development, due diligence must be performed to ensure that no other trade secrets or otherwise protected intellectual property is employed. This type of process might not be transparent to the developers, or even to the company leaders. Calling in a patent attorney who understands how to investigate innovation in specialized technical and scientific fields can make all the difference in a smooth delivery to market.

With the appropriate experience in pursuing protective measures, intellectual property lawyers can ensure that the ideas are not just patented, but properly captured and documented to provide true protection from unfair use. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

The technologies that Roland Tong handles include biotech and medical devices. He works with clients to register, protect, enforce and defend all United States and international rights. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

Registered Patent Attorney Roland Tong has educational background and industrial experience in Biochemistry. The firm’s patent attorneys can assist in such diverse technologies as:

  • Analytical chemistry equipment
  • Biotechnology
  • Chemicals and pharmaceuticals
  • Formulations
  • Orthopedic medical devices
  • Dental devices
  • Quality control methods and equipment
  • Therapy devices
  • Laboratory equipment
  • Mechanical and optics software
  • Medical products software

Attorney Roland Tong can prepare applications for biotech and medical device patents and offer clients legal advice and counsel in product development, helping to define and properly register a claim with the broadest scope of protection possible.

Attorney Roland Tong can help protect your valuable intellectual property. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation to discuss your needs.

Patent Portfolio Management:

Like other valuable assets, patents need to be managed carefully in order to prevent problems and keep business moving in the right direction. Keeping track of a large number of patents can be a daunting task, though, particularly when the lifeblood of a company is in its intellectual property.

If the health of your company depends on the protection of multiple patents, proper legal counsel is not an option, it is a necessity. If you are seeking legal expertise with regard to this challenge, Attorney Roland Tong can assist you. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

Orange County patent portfolio management lawyer Roland Tong is equipped with the human capabilities and technological resources needed to safeguard valuable patent assets, he helps California businesses protect their patent portfolios by:

  • Providing expert advice on patent rights
  • Helping make sure domestic and international patents rights are not abandoned or left to fall through the cracks
  • Leveraging our trained staff and specialized docketing software in order to manage complex patent portfolios

As an attorney who concentrates on intellectual property matters, he has extensive experience with patents related to computer technologies (such as hardware and software), gaming devices, mechanical devices, medical devices, nutritional supplements, pet products, printer cartridges and other niche areas.

If you are seeking a Southern California lawyer with patent expertise and a reputation for excellent client service, complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule an appointment. 

Patent Prosecution:

Today, companies large and small are valued less by the buildings and equipment they own and more by the ideas they create. Companies need sound strategies to procure and protect their intellectual property and increase their value. While many law firms are able to register patents, we formulate long-term protection plans based on the needs of our clients and plans for the future.

Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

Attorney Roland Tong has substantial litigation experience and are thus able to ensure that every patent application they draft reflects the lessons learned in litigation. Nothing sharpens an attorney’s ability to be critical of patent prosecution work better than seeing whether patents prove to be enforceable in court. An attorney who has witnessed during trial the consequences of a sloppy patent disclosure, an unnecessary limitation in a claim, or a careless concession, will forever after be vigilant against making such a mistake in his or her own patent prosecution work Roland Tong advises clients in the following areas:

  • Procuring patents and trademarks in the U.S. and abroad
  • Filing under the accelerated examination process
  • Nuances of the America Invents Act or the First-to-File System
  • On-sale bars and derivation
  • Patentability of software patents and business method patents in light of the U.S. Supreme Court decision in Alice Corp. vs. CLS Bank
  • Filing patent applications with a variety of claims, including method claims, means plus function, and apparatus claims and utilizing various best practices in claim drafting
  • Responding to office actions, including rejections based on indefiniteness (35 USC Section 112), anticipation (35 USC Section 102), obviousness (35 USC Section 103), and non-patentable subject matter (35 USC Section 101)
  • Overcoming rejections based on the all elements rule, improper hindsight, teaching away, and lack of motivation to combine
  • Reviving unintentionally or unavoidably abandoned patent applications
  • Seeking patent term extensions
  • Correcting errors on allowed patent applications and obtaining certificates of correction
  • Patent appeals
  • Patent reexaminations

Attorney Roland Tong handles patent, trademark, and other intellectual property needs for clients in Irvine, Los Angeles and throughout Southern California. For further information about intellectual property law, please complete an online contact form, call 949-693-1537 or text 949-331-2889 today.

Patent Search:

Attorney Roland Tong offers various patent searching services, depending on your purpose. They include novelty search, accelerated examination search, freedom-to-operate search, and patent search for validity studies. The firm’s standard turn-around time is typically 10 working days, but they have a 5-day or 24-hour expedited search service if needed. Complete an online contact form, call 949-693-1537 or text 949-331-2889 to schedule a consultation.

Roland Tong, Patent Attorney for Manning, & Kass, Ellrod, Ramirez, Trester LLP, offers novelty searching to allow you find relevant prior art and determine whether your invention can be patented. The firm’s attorneys use the Examiner’s Application Search Tool (EAST) at the Alexandria Public Search Room.

This is the same system that Patent Examiners at the United States Patent and Trademark Office (USPTO) use when examining your patent application. EAST allows them to perform class and subclass searching with full integrity. They typically combine class and subclass searching with Keyword and Boolean search strategies to obtain quality results. They also use the Patent Image Retrieval tool.

The firm’s lawyers typically access the USPTO, EPO, JPO, and Derwent Patent World Index (DWPI) and the US Published Patent Application databases in doing their novelty searches. They may search the Examiner’s foreign art collection when available. They provide you with a patent attorney-written patentability opinion as well as copies of all the relevant references we found.

If you want to submit your application through the accelerated examination program, the firm’s lawyers can provide you with accelerated examination searches.

The firm’s attorneys also offer freedom-to-operate searches if you want to assess the risk of your product infringing an active patent. They can complement their search with a freedom-to-operate opinion, which may help you disprove allegations of willful infringement in the future.

If you are threatened or accused of infringement, the firm’s lawyers can search for patents that can invalidate the patent(s) being asserted. They may use additional databases besides the USPTO, EPO, JPO, and Derwent Patent World Index (DWPI) and US Published Patent Application databases. For instance, they may use internet postings, publications of government research facilities, such as the Library of Congress, NIH, and FDA, and publications from various foreign patent offices.

Attorney Roland Tong handles patent, trademark, and other intellectual property needs for clients in Orange County and throughout Southern California. For further information about the firm’s patent search services, please complete an online contact form, call 949-693-1537 or text 949-331-2889 today.