Practice Areas

Charney IP Law is a boutique firm concentrating on intellectual property matters.  Some of the matters we routinely handle on a daily basis are enumerated below.

• Client counseling
• Creation of Start-up Portfolios
• Global Patent Prosecution
• Due Diligence
• Trademarks, Unfair Competition, Copyrights
• Licensing and Negotiation
• Pharmaceutical Industry

Client Counseling

Charney IP Law prides itself on counseling and educating its clients.  We help our clients identify and develop their ideas and advise on the most cost-effective strategy to protect their intellectual property.  At the same time, we ensure that any investment in intellectual property is aligned with business objectives, and we work to make sure that  appropriate protection is maintained throughout a product's life cycle.  We work with our clients in ensuring that any strategy developed is properly maintained and reviewed, especially in view of changing markets, laws, management, and long-term goals.

Charney IP Law is seasoned in conducting patentability and patent landscape studies for our clients prior to their investing in the preparation of a patent and to offer direction to inventors regarding product features.  We also conduct freedom-to-operate studies for our clients to fully inform them of all risks prior to the launch of a commercial product.  In addition, Charney IP Law conducts patent validity studies to determine whether a patent is enforceable prior to the assertion, licensing, purchase, or sale of a patent.  We evaluate the strengths and weakness of patents held in our clients' portfolios and provide guidance on how to reinforce the strength of any intellectual property asset.

Creation and Implementation of Start-up Portfolios

Charney IP Law prides itself on helping start-ups and small businesses create valuable intellectual property portfolios.  Being a small business ourselves, we understand the risks and needs of these entities.  Unlike larger firms, our fee structure permits us to work as an “in-house” arm of our clients, truly partnering with them to learn their business goals and strengths so we may provide integral insight as an allied partner, not merely a hired consultant.
 

To this end, we have helped many start-ups grow intellectual property portfolios, and therefore gain the traction they need to secure multiple rounds of financing from investors and other backers.  And, when the time comes, we have the experience to help license portfolios, assist in technology transfer agreements, or provide the necessary advocacy to complete a merger, acquisition, or joint venture.

Global Patent Prosecution

Each of Charney IP Law’s attorneys brings over 10 years of experience in preparing and successfully prosecuting patent applications to issuance globally.  We have extensive first-hand experience in the prosecution of patents before the United States Patent and Trademark Office, including through the appeal process, if necessary.  We also possess considerable experience in working with international firms in the prosecution of patent applications in Europe, Asia, Latin/South America, and other jurisdictions.  We have experience in handling appeal and opposition proceedings in the US, Europe, Japan, and India.  We are able to leverage our understanding of the rules and laws of practice on an international basis to develop the most cost-effective strategy to meet immediate and long-term goals and ensure appropriate patent protection, such as availing our clients in the use of the Patent Prosecution Highway.

Due Diligence

Charney IP Law often is engaged to review and assess the intellectual property assets held by our clients and others in connection with capital investments, licensing agreements, technology transfers, mergers, acquisitions, and joint ventures.  We have represented clients who were both being acquired and who were acquiring third parties.  When our clients acquire technology or another corporate entity or division, we conduct studies to make sure our client does not infringe any third party asset.  We also evaluate the relative strength of any intellectual property asset to determine whether it is enforceable or adds any overall value to our client's existing portfolio.  We also routinely advise investment firms on the intellectual property assets and value of target companies.  

Trademarks, Unfair Competition, and Copyrights

Charney IP Law also engages in the registration of trademarks and copyrights on behalf of our clients.  We provide guidance to our clients in selecting a trademark by discussing the types of marks that are protectable and likely not protectable.  We then conduct searches for marks similar to those chosen by our clients to determine which marks may have likelihood of confusion issues.  We will also assist in the licensing of trademarks and copyrights, including "works for hire" and "derivative works."  

Pharmaceutical Industry

Charney IP Law is experienced in serving the needs of clients in the pharmaceutical industry.  We have experience in preparing patent applications to cover active pharmaceutical ingredients, pharmaceutical formulations, and pharmaceutical delivery devices.  We offer creative strategies to maintain patent protection over the lifecycle of a pharmaceutical product.  We also offer guidance and strategies for product launches under the 505(b)(2) regulatory pathway.

Experience

A sampling of the many technology areas in which Charney IP Law has worked are listed below.

• medical devices, including heart valves, stents, surgical tools, orthopedic implants, trauma products, hospital equipment, testing equipment, and vascular ports; materials for medical devices; coatings present on medical devices; active agents coated on or impregnated within medical devices

• mechanical devices, including consumer goods, aeronautical devices, kitchen appliances, sporting goods

• polymers, copolymers, and polymer blends, including those that are biodegradeable or resorbable

• adhesives, sealants, and hydrogels, including those used in a surgical setting

• small organic molecules and their synthesis, especially those used as active pharmaceutical ingredients

• pharmaceutical formulations and methods of treatment, including combination therapies

• cosmetic and personal care formulations

• materials, including alloys, memory metals, composites, and glass

• inorganic thin films and coatings

• dyes and fluorescent agents

• electrochemistry and batteries

• sputtering, chemical vapor deposition, physical vapor deposition

• “green” technology, including environmentally-safe compounds and cost-saving materials

• diagnostic devices, methods and assays, including immunohistochemistry and in situ hybridization assays

• peptides and their synthesis

• fuel compositions and additives

• pharmaceutical delivery devices

• control systems

• process engineering

• reactor design and implementation

• desktop and mobile "apps"; software patents, especially those directed to image analysis