Related Practices

• Intellectual Property, E-Commerce and Technology
• Biotech and Nanotechnology
• Copyrights & Maskwork
• Domain Name Registrations and Disputes
• Licensing & Technology Service Agreements
• Patents & Trade Secrets
• Technology Litigation
• Trademarks & Trade Dress

Practice Team

Our patent attorneys are engineers and scientists with experience and advanced technical degrees in many disciplines, including biotechnology, nanotechnology, materials science, mechanical engineering, electronics, aerospace, chemical engineering, software development, and physics. We help evaluate and determine whether a particular invention is patentable, as well as prepare and file applications. Our experienced patent attorneys prosecute patent applications before the patent office, assist in the management and enforcement of patent rights in issued patents, and provide legal opinions regarding the infringement and validity of patent rights. Our paralegals and support staff assist our attorneys with preparing applications for filing, keeping clients informed and preparing declarations, assignments and other documents required during the patent prosecution process and after the patent issues. Our team of patent professionals strives to provide quality services at a reasonable cost to our clients, which adds value to our clients' intellectual assets.

The philosophy of the Intellectual Capital Management practice is to help our clients manage their intellectual assets and create value from ideas, including inventions, discoveries and information. Protection of inventions, discoveries and information starts with a system of capturing and evaluating the ideas generated by inventors. These ideas must be safeguarded from public release to avoid statutory bars to patentability or loss of trade secret protection under state and federal laws.

Sometimes, ideas are best protected as trade secrets, and we assist our clients in developing reasonable measures to safeguard their confidential information. Florida has adopted the Uniform Trade Secrets Act, which broadly protects information that is capable of providing a competitive advantage, if reasonable precautions are taken to protect the information from disclosure. Other ideas are best protected by obtaining patent and contractual rights in an invention or by contributing the ideas to the public domain or to non-profits, which makes the ideas available to everyone and prevents others from obtaining exclusive rights. We help our clients determine the best strategy to maximize the return on investment for research and development expenditures. The attorneys of Fowler White Boggs Banker are experienced with helping clients evaluate the value of ideas prior to the substantial costs of research, develop and protect proprietary rights, and generate value from ideas through licensing, mergers, acquisitions, spin-offs and joint ventures.

Our patent attorneys have experience filing utility and design patent applications in the U.S. and internationally.  Utility patents may be granted to anyone who invents or discovers any new, useful and non-obvious process, machine, article of manufacture, composition of matter, or improvement to an invention falling within these categories. Patentable inventions include software and business methods in the U.S. and some foreign jurisdictions. We help clients determine which countries seek patent protection for their inventions. Design patents may be granted to anyone who invents a new, original and ornamental design for an article of manufacture. Clients who wish to protect the non-functional design or appearance of their products can consult with our patent and trademark attorneys, who help them determine the best mix of trademark, trade dress, copyright and design patent protection needed, to protect their ideas, brands, marks and associated good will.

Utility applications can be initially filed as provisional applications or non-provisional applications. Provisional applications are best used when an early filing date is needed prior to disclosure of the invention to others. Our patent attorneys have experience with rapidly preparing provisional applications at a reasonable cost to our clients, which allows our clientele to preserve their right to U.S. and international patent rights. Many foreign jurisdictions have an absolute bar to patentability for any invention that has been previously disclosed publicly. Thus, provisional patent applications provide a useful mechanism to prevent loss of rights in these foreign jurisdictions by filing a provisional application prior to any public release of the idea. Provisional applications automatically expire after one year; however, priority to the filing date may be claimed by a non-provisional application filed prior to the expiration of the provisional application. Non-provisional applications have claims, which define the 'metes and bounds' of the invention, and are examined by a patent examiner in the United States Patent & Trademark Office.  Our patent attorneys draft claims based on invention disclosures, technology searches and interviews with inventors. Our patent attorneys and professional staff also have experience filing utility applications under international conventions and the Patent Cooperation Treaty.