Intellectual Property

Patents & industrial designs

Our team of registered patent attorneys assists clients in securing patent and design protection for their innovations in the United States and abroad. Our attorneys also help our clients mitigate risk through patentability (novelty), freedom-to-operate (clearance/non-infringement), validity, and state-of-the-art searches and opinions. We also counsel clients on patent enforcement and monetization strategies. Our technical and industry experience spans technologies involving software, mechanical, chemical, and electrical inventions.

Our clients frequently rely on us for the following patent services:

• Invention identification and disclosure
• Searches and opinions, including patentability (novelty), freedom-to-operate (clearance/non-infringement), validity, and state-of-the-art
• Patent application filing strategies
• Utility and design patent (industrial design) application preparation and prosecution
• Worldwide strategic patent portfolio management and maintenance
• Patent Trial and Appeal Board (PTAB) proceedings
• Patent licensing (inbound and outbound)
• Patent due diligence
• Patent monitoring programs, including competitor/industry patent filings

Trademarks & brands

Our attorneys regularly assist clients with protecting their trademarks and brands around the world. Our experience includes trademark searches and clearance, as well as preparation and prosecution of trademark applications, and maintenance of worldwide trademark portfolios. We create and implement strategic, practical, and cost-effective solutions that help clients to build, protect, monetize, and increase equity in their trademarks and brands. We work with clients across numerous industries, including consumer products, apparel, finance, insurance, hospitality, professional services, technology, trade associations, and nonprofits, and our attorneys have particular experience in brand expansions and extensions.

Some of our trademark services include:

• Trademark searches and clearance
• Trademark application filing strategies
• Trademark application preparation and prosecution
• Worldwide strategic trademark portfolio management and maintenance
• Trademark Trial and Appeal Board (TTAB) proceedings
• Trademark licensing (inbound and outbound)
• Trademark due diligence
• Trademark watches and enforcement
• Brand expansions and extensions

Copyrights

We register copyrights to protect original works of authorship, such as software, websites, product packaging, logos, designs, literary works, audio-visual works, and similar works. Our attorneys also work with clients on work-for-hire agreements, licenses, and other commercial agreements involving the creation of works protected by copyright.

Key copyright services include:

• Copyright application preparation and prosecution
• Copyright licensing (inbound and outbound)
• Copyright due diligence

Trade secrets

There is a delicate balance between pursuing patent protection for an innovation or maintaining it as a trade secret. Our IP attorneys assist clients with these decisions. We also advise on trade secret best practices and enforceability.

We provide clients with all kinds of trade secret counsel, including:

• Trade secret identification
• Trade secret protection best practices
• Trade secret licensing (inbound and outbound)
• Trade secret due diligence

Outside IP general counsel

We often serve in an outside intellectual property general counsel role for clients, providing guidance across all areas of intellectual property, developing protection strategies using complementary forms of intellectual property, and assisting with day-to-day intellectual property issues that arise.

In particular, we have deep experience in identifying and resolving intellectual property issues that commonly arise during the purchase and sale of businesses. This uniquely positions us to help clients proactively address those issues well in advance of a transaction, ultimately increasing the value of the business, reducing the transaction costs, and mitigating the risk to the business owners.

Key outside intellectual property general counsel services include:

• General day-to-day intellectual property counseling
• Intellectual property protection strategies
• Development and implementation of intellectual property best practices
• Intellectual property audits
• Technology transactions
• Monetization of intellectual property
• Pre-sale intellectual property counseling

Software & IT

Intellectual property questions related to software innovations can be varied and complex. Our IP and IT teams have experience counseling clients on such issues and can be a valuable resource for advice and assistance with software- or IT-specific questions:

Key software services include:

• Drafting and negotiating software development and licensing agreements
• Counseling regarding open-source software
• Terms of use and privacy policies
• Data security and best practices for protecting against threats