Intellectual Property

Overview

Our IP group provides clients with worldwide IP strategy and portfolio management.

We help global businesses, educational institutions, and local start-ups protect their IP to maintain a competitive advantage. Our professionals have comprehensive technical expertise and serve clients in many industries, including the automotive, glass and glazing product, medical device, and biotechnology industries.

Businesses and technology developers of all sizes look to us for:

  • Development and collaboration agreements
  • Foreign and domestic patent preparation and prosecution
  • Intellectual property licensing
  • Patentability and freedom-to-operate opinions
  • Patent infringement, validity, and enforceability opinions
  • Trademark availability assessment and registration
  • Trademark infringement and validity counseling
  • Workflow management of foreign IP counsel

Portfolio Management

An intellectual property portfolio is a valuable business asset. Our experienced attorneys work diligently to secure and protect the intellectual property rights of their clients so that they maintain a competitive advantage within their respective fields and industries. 

Our portfolio management includes:

  • Domestic and global portfolios
  • Leveraging industry best practices
  • Intellectual property strategy and development 
  • Client and competitor portfolio monitoring
  • Mergers and acquisitions 
  • Managing foreign IP counsel and workflow
  • Client education
  • Preparing agreements:
    • Non disclosure
    • Licensing
    • Joint venture
    • Employment
    • Independent contractor

Copyright

As provided in Article I, Section 8, Clause 8 of the United States Constitution:
"Congress shall have the Power...To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Rights to their respective Writings and Discoveries." 

When you think about copyright, think about your website content, artwork, sculptures, and your photos. Copyright protection provides protection for your original works of authorship (i.e. literary, dramatic, musical and artistic works, such as poetry, novels, movies, songs, computer software, and architecture) that are fixed into a tangible medium. The duration of copyright protection depends on the nature of the authorship for the work and when it was created. 

Much like trademarks, registration of a work of art is not mandatory to obtain copyright protection. Registration of a copyright with the U.S. Copyright Office creates a public record of the basic information related to a copyright. By registering your copyright with the U.S. Copyright Office, you are placing the public on notice of your ownership of the work of art and the year that was first sold or distributed. Additionally, registration of your copyright affords you as the owner with certain infringement damages that you would not otherwise be able to obtain. 

Trademark

US trademark laws are based on the Commerce Clause of the Constitution. 

When you think about trademarks, think about your logo, slogan, name, packaging, and company aesthetic or look. A trademark for goods or a service mark for services may be used, or intended to be used, to identify and distinguish your goods or services from those of others and identify your company as the provider or source of those goods or services. 

Trademark or service mark rights in the U.S. are established either through actual use of a mark in commerce or by registration of the mark with the United States Patent and Trademark Office (USPTO). While registration of your mark with the USPTO is not mandatory, the rights obtained through registration are nationwide whereas common law rights are typically limited to the geographic area in which the mark is actually used. Registering your trademark with the USPTO gives you and your company more legal protection. 

Selection of your mark should be done with careful consideration. It is recommended that you contact an attorney and have a trademark search performed before the mark is used in commerce. 

As a mark owner, you are solely responsible for monitoring and enforcing your trademark. Failing to police your trademark against use by others may result in the loss of your rights. As a result, it is important to consult an attorney before choosing a trademark, before using your trademark in commerce and to police your marks. 

Trade Secret

Even companies that believe they have no intellectual property to protect usually have trade secrets that should be safeguarded. 

Trade secrets are any information that has value to your business, that is not commonly known, and that you want to protect from others finding out. When you think trade secrets, think about your client lists, your recipes, your processes and your methods. 

In order to maintain and enforce your trade secret rights, you need to take reasonable measures to preserve confidentiality and protect your trade secrets from unauthorized use or disclosures outside your company. Common ways in which you can lose trade secrets rights include disclosure, reverse engineering, and independent development by a third party. 

 

 

Patent

As provided in Aritlce I, Section 8, Clause 8 of the United States Constitution:
"Congress shall have the Power...To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

Patents are a form of intellectual property that afford the owner the legal righ tto exclude others from making, using, selling, offereing for sale, and importing an invention for a set number of years in exhange for disclosing the invention to the public. 

There are three types of patents available in the United States:

  1.  Utility Patents. This is the most common form of patent and covers such inventions such as devices, processes, methods, compositions and matter, software and articles of manufacturing. 
  2.  Design Patents. These are directed to any article of manufacturing that has a new and original ornamental design. Essentially, these cover how your invention looks. 
  3. Plant Patents. These are directed to any new variety of plant invented or discovered in a cultivated state and asexually reproduced.

Do not disclose your invention before filing a patent application. You forfeit your patent rights in the U.S. when you disclose, publish, make, sell, or offer for sale your invention over one year before you file a patent application. Other countries are not so lenient and may either have a shorter grace period or no grace period at all. As a result, any such disclosure or publication of your invention may be an absolute bar preventing you from obtaining patent protection in countries. You should always consult an attorney before disclosing your invention or idea to anyone. 

 

Technical Expertise

  • Adhesive compositions
  • Alternative energies
  • Automotive technologies
  • Biotechnology
  • Braking devices
  • Cargo management systems
  • Composite materials
  • Control systems
  • Construction products
  • Display technologies
  • Drilling technologies
  • Electro-mechanical devices
  • Fuel cells
  • Glass products
  • Glazing products
  • Heat transfer devices
  • Hydraulic motors
  • Lubricant flow management
  • Material compositions
  • Material handling systems
  • Mechanical devices
  • Medical devices
  • Methods of manufacturing 
  • Oil refining and distillation methods
  • Oil and natural gas recovery methods
  • Rechargable batteries
  •  Sealing products 
  • Seating technolgies 
  • Semiconductor devices
  • Solar cells
  • Sporting equipment
  • Telematics
  • Thin film coatings
  • Tire inflation
  • Water filtration and treatment