Practice Areas

From semiconductor inventions and to cutting-edge wireless, software, networking, mechanical devices and manufacturing processes, the firm applies decades of experience in U.S. and international patent practice. The firm's capabilities include:

• Providing economically sound patent advice
• Patentability searches
• Preparation and filing of patent applications worldwide, including the PCT
• Representation in the U.S. Patent and Trademark Office, including patent prosecution, reexamination, opposition and interference proceedings
• Validity and infringement searches and opinions
• Evaluations of patent disputes

The firm manages trademark portfolios for clients, and files and prosecutes trademarks in the US. It also has longstanding relationships with associate intellectual property firms worldwide to expedite filing and obtaining foreign trademark registrations. Its in-house and outsourced trademark search resources can identify and alert clients to potentially conflicting trademarks.

The firm is also experienced in defending its clients' trademark rights by through trademark oppositions, cancellations, and concurrent use proceedings, and advising in the area of trademark disputes.

The firm guides the creators of original materials including software, websites, books, music, art and dramatic works through the copyright registration process. A copyright provides exclusive rights to reproduce, adapt, publicly distribute, publicly display, and perform the copyrighted work.

Competitively sensitive information such as business processes, customer lists, and certain technological advances may be best protected by keeping them secret. The firm helps its clients identify and inventory its trade secrets and determine the best method for protection. The resulting procedures help protect the sensitive information and establish enforceable property to provide adequate remedies in the event of trade secret misappropriation.

The U.S. trademark laws include protection against passing off imitation products, trade libel and false advertising. The firm's attorneys are trained to recognize these practices, and advise regarding rights and remedies.

Clients often consult us before entering established markets to avoid infringing other companies' patents or trademarks. The firm analyzes other parties' patent positions including the validity of its patents and recommends specific non-infringing product designs, arranges to obtain components from the patent holders, or negotiate licenses. Such solutions save clients millions of dollars in unnecessary litigation expenses by avoiding liability before entering a market.

In addition to performing specific work such as patents, we advise clients on their rights, obligations, planning, and internal management of intellectual property assets. The firm offers counseling on such IP-specific matters as:

• Validity and scope of U.S. and foreign intellectual property rights
• Freedom-to-commercialize searches and opinions
• Licensing, consulting, confidentiality, joint development, and employee agreements
• Protecting research and development
• Whether to pursue trade secret or patent protection
• Selection of new product names and trademarks
• Design-around of competitors patents
• Enforcement
• Litigation

Before an acquisition involving intellectual property, it is important to evaluate the assets' strength and validity. The firm conducts due diligence find liabilities that may adversely affect an asset's value, such as potential infringement and breach of confidentiality claims, express and implied licenses to third parties, inventorship or ownership challenges, and lapsed patents or expired trademark registrations.

Licensing is a common way to exploit the commercial value of intellectual property. We are trained to recognize the opportunities for licensing, advise regarding license negotiations and prepare license agreements. The firm's lawyers are similarly skilled with respect to technology transfer agreements, technology sharing agreements, joint development agreements and nondisclosure agreements.

In addition to assisting its clients in developing a portfolio of intellectual properties, the firm is experienced in helping clients maintain their portfolio by tracking the status various assets, insuring that all periodic fees are paid, advising clients about opportunities to expand the portfolio and protecting the portfolio assets against potential and actual harm.