Intellectual Property Law & Litigation

The intellectual property division of Kashfian & Kashfian, LLP, services relevant client needs regarding the following:

• Patents: We help determine whether an invention is patentable. Then we search domestically and internationally to discover whether the invention (possibly an identical one elsewhere) has already been disclosed. Finally, we help clients apply for patents and respond to rejections as needed. As necessary, we will help you request an interview with your patent examiner – a tactic that the United States Patent and Trademark Office (USPTO) encourages.
• Copyrights: We will help you register your copyright with the U.S. Copyright Office at the Library of Congress for an original creative work such as a novel, a piece of music, a software code or a painting. A copyright protects your right to distribute, perform or display your intellectually created work.
• Trademarks: We will help you protect your exclusive rights to use a particular word, phrase, symbol, design or combination thereof that may represent the goods or services that you hope to retain ownership of and, ultimately, market.
• Trade dress: A subset of trademark law, trade dress protection has to do with how a product or its packaging looks as an identifier of the source of the product. The Nike swoosh or the Coca Cola name written in script are both examples of trade dress. The shape of a building may sometimes fall in this category.
• Trade secrets: Technical information, client lists and marketing or production strategies are all examples of trade secrets that need protection through noncompete agreements and other means.

In addition to assembling and protecting our clients’ intellectual property portfolios, we also provide a myriad licensing services. We frequently draft software- and hardware-related licensing agreements, as well as effective royalty negotiations and payout structures. Our firm can also help you get the most out of e-discovery, including compliance with the federal e-discovery rules and the newly enacted California e-discovery rules.

Protection From Theft Of Intellectual Property

We will help you consider all options for securing your intellectual property from infringement by others, including:

• A patent
• A registered trademark, trade dress or copyright
• A noncompete agreement

If someone else has already begun to use your intellectual property without authorization, we will advise and lead you along the most promising path forward, such as resolution through demand letters, negotiations, mediation or trial.

Thorough Guidance For Every Industry

As qualified attorneys in matters involving intellectual property, we are able to provide sophisticated, on-demand and quality counsel to our clients, no matter what industry they are in. Below are just some of the sectors in which we have offered our services:

• Computer science: Kashfian & Kashfian, LLP, can patent your innovation with regard to semiconductor designs, particularly in the design of processor and memory chips. We can also patent your innovation in the semiconductor manufacturing process of processor chips, memory chips and circuit boards, as well as the network design and architecture, including router hardware and software.
• Fashion and design: A business in the fashion industry requires a variety of intellectual property to remain competitive. From patents on clothing design and copyrights on photos and catalogs to a trademark on the brand, we establish and closely monitor all intellectual property for these businesses.
• Manufacturing: Whether you need to patent a manufacturing innovation or protect your unique processes and other trade secrets, you need airtight security. We have represented watch manufacturers and other large entities in protecting their IP.
• Entertainment: We have successfully represented writers, producers, filmmakers and other parties in protecting their creations. We have even litigated cases against media behemoths such as Fox Cable Networks.

Learn more about our cases and successes by visiting our Case Results page.

Frequently Asked Questions

What is the difference between a patent, a copyright and a trademark?

A patent protects a new and useful invention, such as a product, machine, process or technical improvement. In the U.S., patents give the owner the right to exclude others from making, using, selling or importing the invention for a limited time, usually 20 years from filing.

A copyright protects original creative expression that is fixed in a tangible form, such as software code, marketing copy, photos, videos, website text and graphics. A trademark protects brand identifiers that show the source of goods or services, such as company names, logos, product names, and sometimes distinctive packaging or sounds.

A trade secret protects valuable confidential information that gives a business an advantage, like formulas, pricing models and strategic plans. For California companies, the right option depends on what you are trying to protect. In many cases, a single asset may benefit from more than one type of protection, such as software that is protected by copyright in its code, kept partly as a trade secret and marketed under a trademark.

How can our company identify and categorize its most valuable intellectual property assets?

You can start by making an inventory of everything that gives the business a competitive advantage, including inventions, brand names, content, customer data, software and internal processes. Then, group each asset by type and rank them by how much it contributes to revenue, market position or operational value.

This organizational strategy can help you decide what to file, what to register, and what to protect through confidentiality and internal controls. You should also pay attention to whether each asset is public or secret, because that will determine the sort of protection it can get.

How can we ensure we retain ownership of IP created by employees?

To ensure your company retains ownership of IP created by your employees, create written employment agreements that include invention assignment, confidentiality and work-for-hire provisions where allowed. In California, you should not rely on noncompete clauses, since they are generally unenforceable, and instead focus on ownership language and strong confidentiality controls.

Make it clear in onboarding and training that any work created within the scope of their employment belongs to the company, to the extent permitted by law. Keep signed agreements, require prompt disclosure of inventions or creative work, and use internal procedures to track and document IP created by employees.

How do we protect our company’s trade secrets when entering into joint ventures or B2B partnerships?

For joint ventures and B2B partnerships, start by sharing the minimal necessary details. Gradually reveal sensitive information only after the partnership is assessed and legally protected by strong agreements. California companies should use robust NDAs, confidentiality provisions and clear purpose-limitation language so the recipient can use the information only for the agreed business purposes.

The agreement should also define ownership of existing IP, newly developed IP, any licenses granted and what happens to information when the relationship ends. Only authorized individuals requiring the information should have access, and sensitive items must be properly labeled and monitored.

At what stage should a mid-market or enterprise company conduct an IP audit?

You should conduct an IP audit when your company is preparing for a major transaction, such as financing, acquisition, merger, licensing deal or geographic expansion. If your company is growing quickly, launching new products, hiring at scale, or working with many contractors, waiting until a deal is imminent is usually too late. A good rule is to do a baseline IP audit early, then refresh it annually or semiannually depending on the pace of change.

An audit helps identify gaps in ownership, missed patent or trademark filings, weak confidentiality controls and third-party rights problems before they become expensive.

What IP strategy should our company implement when entering new markets or launching new product lines?

Your company should first identify which assets need patent, trademark, copyright or trade secret protection before a public launch. Consider patenting inventions before public disclosure, sale or demonstration, as this can affect your patent rights. Strengthen confidentiality controls around product designs, formulas, source code and market plans that are better protected as trade secrets.

You must also clearly define IP ownership and usage in your final agreements with all parties involved in the new market.

When should our company enforce IP rights through litigation versus other resolution methods?

Your company should consider litigation when the infringement is significant, ongoing, and harming your revenue, brand value or market position. Before filing suit, you may first try a cease-and-desist letter, negotiation or a settlement demand because those options can be faster and less expensive.

Litigation is often necessary when you need a court order to stop misuse, recover damages or set a public example that protects your IP portfolio. If the dispute involves patents or high-value trademarks, acting quickly can be important because delay may weaken your legal claims. You should also weigh the cost of litigation, the strength of your evidence and the risk of counterclaims or public disclosure of sensitive information.

How do we protect IP when working with manufacturing partners and external vendors?

To safeguard IP when working with manufacturing partners and external vendors, put ownership and confidentiality rules in writing before sharing any technical information. Use NDAs and detailed vendor or manufacturing agreements stating that your drawings, specifications, tooling, molds, packaging and process documents remain your property.

If the partner may improve the product, the agreement should clearly address ownership of improvements, derivative works, tooling and whether the vendor can reuse any know-how for other clients. Limit disclosure to only what is necessary, and share sensitive information in stages or separate files when possible. Strong practical controls like watermarking, access restrictions and timely removal of vendor access can further reduce the risk of IP loss.

Trusted As Local Counsel For Businesses Nationwide

In addition to representing Los Angeles businesses in all levels of California courts, we also provide local counsel for companies across the country that are facing IP disputes in California. While intellectual property is protected on a federal level, having counsel who understands California courts and processes can be invaluable to protecting your rights.

Whether you are located nearby or want to take advantage of our services as local counsel, don’t hesitate to contact our lawyers by calling (310) 751-7578 or reaching out online.