Intellectual Property (IP) Prosecution, Transactions & Portfolio Management

Representative Services

• 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.
• 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.

Representative Matters

• 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.