Our nationally ranked, full-service practice advises clients on all aspects of intellectual property issues, from safeguarding innovations to negotiating strategic agreements and litigating claims. Whether a single transaction or a complex, multiparty agreement, we focus on helping clients create and preserve the value of their intellectual property.
We address IP issues within the context of the client's business strategies and needs. Our lawyers recognize that needs and business objectives vary from client to client and that the IP strategy we employ for a Fortune 500 company may not apply to a startup seeking venture capital. That is why our group places a high premium on well-developed client relationships and the knowledge these relationships deliver.
Recognized as one of the best corporate law firms in the United States, sound business principles drive our IP practice. Our extensive knowledge of patent and trademark law combined with the deep experience of the firm’s civil litigators and business lawyers positions us to offer clients the right mix of legal skill and business acumen to handle all IP matters, regardless the size and complexity of the matter or transaction. We regularly call upon a network of highly skilled associate intellectual property professionals throughout the world to field global client service teams.
Our team advises on the full range of IP issues with particular strength in:
- IP litigation & dispute resolution
- Patent opinions
- Patent prosecution & counseling
- Trademarks & unfair competition
- Internet & digital media issues
- IP licensing & transactions
- Represent clients in trademark selection and protection for word, design and service marks.
- Represent clients before the U.S. Patent and Trademark Office in patent and trademark prosecution, patent interferences and appeals.
- Provide programs to assist clients in identifying intellectual property assets and protecting trade secrets.
- Conduct search and analysis of patents and trademarks.
- Provide patentability, validity, infringement and right-to-use opinions covering a wide range of technical disciplines.
- Represent clients in protection for trade dress and product configurations.
- Procure copyright protection for all works of authorship, including computer software, consumer products, company brochures, catalogs and literature.
- Represent clients in patent litigation.
- Participate in a wide variety of significant litigation, including that which involves
- Trademark infringement and dilution
- Trade secret theft
- Copyright infringement
- Lanham Act claims for false designation and false advertising
- Violations of state law rights of publicity
- Infringement actions involving significant patents
- Negotiate and prepare patent licenses and technology transfer agreements.
- Counsel clients and negotiate on their behalf on issues involving software licenses including source code escrows and associated maintenance contracts.
- Secure clients' rights to worldwide intellectual property protection.
- Assist clients through a step-by-step IP asset management process to identify, package and exploit their IP assets.
- Conduct a thorough audit of clients' existing IP assets, including both patented and as-yet unpatented discoveries; proprietary software systems; novel business methods; confidential and proprietary technologies, processes and brand assets.
- Work with clients to help them design meaningful, deployable and profitable licensing strategies.
- Negotiate and document transactions that implement a clients' asset management program.
- Prepared and prosecuted a family of patent applications covering a new class of drugs for a pharmaceutical concern.
- Provided comprehensive representation in patent and licensing matters for several companies having large patent portfolios.
- Defended one of the largest manufacturers of wedding albums in a patent infringement action.
- Defended one of the largest U.S. paper companies in a patent infringement action.
- Supported the national trial lawyer of an automotive parts manufacturer in a patent infringement action brought by the automotive parts manufacturer involving the design of a custom automobile wheel.
- Represented a tool and die company in an action for patent infringement against a plastics company.
- Defended an avionics test equipment manufacturer against claims that its equipment infringed a patent held by the plaintiff.
- Defended a company in an infringement case that involved a patent on recirculating steam ovens used for the commercial production of a fast food chicken item.
- Defended a manufacturer of various closures in an infringement and licensing dispute with a chemical manufacturer over oxygen scavenger chemicals used in cap liners for U.S. and foreign beer producers.
- Defended a company in an infringement claim for machinery to duplicate two-sided keys.
- Represented a metal stampings company in a dispute over a license of the patent portfolio for cut-resistant yarns used in the production of safety wear.
- Represented a leading valve manufacturer in a trade dress infringement case.
- Represented a chemical company and its subsidiary against charges of trademark infringement and unfair competition for use of the color blue on PVC tubing and electric junction boxes.
- Represented two chemists who were sued by a chemical manufacturer for trade secret misappropriation on the technology for copper additives to diesel fuel.
- Represented a large bank in a trademark infringement action against a bank in another state.
- Represented a chemical company against a former employee and another company in a trade secret misappropriation action involving chemical formulas and processing information.
- Represented a university's research corporation and its licensee in a trade secret case against the licensee's former CEO for illicit transfers abroad of liquid crystal display technology developed at the university.
- Coordinated with the U.S. Department of Justice on the criminal prosecution of several Taiwanese executives under the Economic Espionage Act.
- Represented the country's largest vendor of computer equipment and two sales managers in a criminal investigation and private civil litigation over charges of trade secret theft from a competitor's computerized database.
Business Law Update – Spring 2017 - Thompson Hine Newsletter
April 03, 2017
Almost Zero - Recent Federal Circuit Decision Shows Lanham Act Sets Very Low Bar in Requiring Use of Trademark “In Commerce” - Intellectual Property Litigation Update
November 28, 2016
Business Law Update – Fall 2016 - Thompson Hine Newsletter
October 31, 2016
Supreme Court Rules on Inter Partes Review of Patent Claims - Intellectual Property Update
June 22, 2016
PTAB Challenges Can Reduce Royalty Obligations, Open New Markets - Intellectual Property Update
March 30, 2016
USPTO Pilot Program Permits Modernizing Trademark Registration Coverage - Intellectual Property Update
September 16, 2015
Hague Agreement Further Enhances U.S. Design Patents’ Value - Intellectual Property Update
May 18, 2015
Supreme Court Opines on Challenging Trademark Registration - Intellectual Property Update
March 26, 2015
U.S. Supreme Court: District Courts’ Patent Claim Constructions Deserve More Deference on Appeal - Intellectual Property Update
January 26, 2015
Supreme Court Decisions Increase Risks for Patent Owners & Alleged Infringers - Intellectual Property Update
June 17, 2014
Glossary Pilot Program for Software Patents Begins on June 2, 2014 - Intellectual Property Update
April 03, 2014
March 21, 2014
IP Audits Can Help Businesses Prosper - Intellectual Property Update
October 30, 2013
Patent Law Changes May Necessitate Filing Applications by March 15, 2013 - Intellectual Property Update
January 24, 2013
IP Owners May Avoid Invalidity Challenges With Covenants Not to Sue - Intellectual Property Litigation Update
January 17, 2013
European Parliament Approves European Unitary Patent Scheme to Begin January 2014 - Intellectual Property Update
December 20, 2012
USPTO Improperly Shortening Some Patent Terms - Intellectual Property Update
December 20, 2012
- (European Union) Office for the Harmonization in the Internal Market - Trade Marks & Designs
- AALL Copyright Committee
- ABA Section of Intellectual Property
- Advertising Law Internet Site
- AIPLA's Guide to Model Patent Jury Instructions
- All About Trademarks from Gregory H. Guillot
- American Intellectual Property Law Association
- American Society of Composers, Authors and Publishers (ASCAP)
- Baruch College's Guide to Using Copyrighted Media
- Berne Convention for the Protection of Literary and Artistic Works (Paris Text 1971)
- BMI Licensing Center
- Board on Science, Technology, and Economic Policy (STEP)
- Buffalo Intellectual Property Law Journal
- Chicago-Kent Journal of Intellectual Property
- Claim Construction Project
- Compendium of U.S. Copyright Office Practices
- Copyright & Fair Use
- Copyright and Intellectual Property
- Copyright Clearance Center Online
- Copyright Law and Litigation Resource
- Copyright Law of the United States of America
- Copyright Legislation (U.S. Copyright Office)
- Copyright Office Record Search - Library of Congress
- Cornell - Copyright Law
- Cornell - Patent Law
- Cornell - Right of Publicity/Right of Privacy
- Cornell - Trademark Law
- Cornell - Unfair Competition
- Crash Course in Copyright
- Creative Commons
- e Official Gazette for Patents
- EU Intellectual Property Official Documents (Legal Texts in Force and New Proposals)
- European Patent Office
- European Union Office of Harmonization in the Internal Market
- Franklin Pierce Law Center IP Information Mall
- Free Patent Tools from Maxval
- Green Patent Blog
- Hieros Gamos - Intellectual Property
- ICANN (Internet Corporation for Assigned Names and Numbers)
- Index to Manual of Classification of Patents
- Intellectual Property and Technology Forum (Boston College Law School)
- Intellectual Property Law
- Intellectual Property Law Blog
- Intellectual Property Law News (Findlaw)
- Intellectual Property Links
- Intellectual Property Offices Around the World
- International Journal of Intellectual Property -Law, Economy and Management
- International Trademark Association (INTA)
- IP Insider (American Lawyer)
- IP Law & Business
- IP Newsflash
- IP Spotlight
- IP Watchdog
- Japan Patent Office
- John Marshall Review of Intellectual Property Law
- Journal of Intellectual Property Law
- Journal of the Patent and Trademark Office Society
- Lexis Copyright & Trademark Law Community
- Links to Patent and Other Intellectual Property Information Resources
- Madrid Protocol Forms (U.S. PTO)
- Marquette Intellectual Property Law Review
- Music Copyright Infringement Resource
- Music Copyright Page (University of Washington)
- National Association of Patent Practitioners
- National Patent Jury Instructions
- Patent Assignments on the Web
- Patent Baristas
- Patent Fetcher
- Patent Information Users Group
- Patent Law Links
- Patent Prospector
- Patent Alert
- PCT Newsletter (WIPO)
- PLI's Patent Law Center
- Publishing Law Center
- Software Patent Institute
- Stanford University Patent Databases
- State Trademark Agencies and Databases
- Summaries of Testimony for November 29, 2000 Hearing on the Digital Millennium Copyright Act
- Trade Secrets (Blog)
- Trade Secrets and Noncompete Blog
- Trade Secrets Blog
- Trademark Applications and Registrations Retrieval (TARR)
- Trademark Document Retrieval (USPTO)
- Trademark Goods and Services Classification Index
- Trademark Official Gazette
- Trademark Trial and Appeal Board Inquiry System (TTABVUE)
- Tulane Journal of Technology & Intellectual Property
- U.N. Documents
- U.S. Copyright Forms
- U.S. Copyright Information Circulars
- U.S. Copyright Office
- U.S. Department of Energy Patent Database
- U.S. Department of Justice Computer Crime and Intellectual Property Section
- U.S. Patent and Trademark Office FOIA Reading Room
- U.S. Patent Information
- USPTO Board of Patent Appeals and Interferences
- USPTO Examiner Handbook to the U.S. Patent Classification System
- USPTO Forms
- USPTO Guide to Filing A Design Patent Application
- USPTO Manual of Patent Examining Procedure (MPEP)
- USPTO Official Gazette Notices
- USPTO Patent Application Information Retrieval
- USPTO Patent Classification System - Classification Definitions, Class Listing
- USPTO Patent Database
- USPTO Trademark Acceptable Identification of Goods and Services Manual
- USPTO Trademark Electronic Applications Applications (TEAS)
- USPTO Trademark Electronic Search Systems (TESS)
- USPTO Trademark Information
- USPTO Trademark Manual of Examining Procedure (TMEP)
- USPTO Trademark Trial and Appeal Board Manual of Procedure
- Washburn - Intellectual Property Law
- WIPO (World Intellectual Property Organization)
- WIPO ccTLD Best Practices for the Prevention and Resolution of Intellectual Property Disputes
- WIPO Copyright Treaty
- WIPO Documents
- WIPO Gold
- WIPO International Classifications
- WIPO Lex - Collection of Laws for Electronic Access
- WIPO Patent Cooperation Treaty (PCT) System