OUR INTELLECTUAL PROPERTY PRACTICE

In this area of practice, we offer a broad array of intellectual property services, including such areas as patents, trademarks, copyrights, trade secrets, and licensing.

I. PATENTS
In our patent practice, we prepare and prosecute patent applications, draft settlement and licensing agreements; negotiate with third parties; pursue ex parte or inter parte proceedings at the US Patent and Trademark Office; provide our clients with written opinions; and handle matters in federal court.

We specialize in representing our clients in their dealings with third parties. A company may be seeking a specified license fee from one of our clients while threatening patent litigation, the defense of which could cost more than the license fee. Conversely, our client may want to license its own intellectual property to a third party.

We are extremely well suited to handle the patent needs of virtually any technology-driven company, either before the US Patent and Trademark Office, in negotiations, or in court. We represent decades of experience encompassing a broad range of patent-related work and general business representation. We bring with us:

  • Familiarity with company culture. We have extensive experience working closely with engineers and scientists at all levels, at a wide range of organizations.
  • Efficient communication and comprehension. We effectively communicate with technology personnel and scientists, so we can quickly comprehend the subject matter without unnecessary intrusions on their time.
  • Technology proficiency. We are skilled in many technologies, including but not limited to optics, mechanical structures, electronics, computer hardware and software, and numerous others.
  • Flexibility. We are sensitive to the pressures experienced by in-house personnel in managing their legal matters. To ease those pressures, outside counsel must be flexible in accommodating unique client procedures and requests. To facilitate our clients, we are able to offer our clients electronic documents and correspondence, prompt reporting of filings, and a summary report at various stages of proceedings.
  • Cost. We are competitive on costs, while maintaining high quality.
  • Market-driven broad protection. We draft, prosecute, and litigate claims with a focus on the target market. Where possible, we protect the technology in a manner that protects the relevant market.
  • Familiarity with the US Patent and Trademark Office. We know the US Patent Office, their systems, and their concerns. Our firm founder worked as a patent examiner. Additionally, during his fifteen years of legal practice in the Washington, DC area, he frequently met with Patent Office officials.

II. TRADEMARKS, COPYRIGHTS, TRADE SECRETS, AND BUSINESS TRANSACTIONS
We counsel our clients regarding both protecting their rights and avoiding the rights of others, in the areas of trademarks, copyrights, and trade secrets.

We also draft and negotiate various types of licenses and other business transactions. Some representative transactions we have handled include:

  • Cross-border trademark license agreements with client partner companies in countries such as Argentina, Peru, and Mexico.
  • Strategic Alliance among Mexican client and Canadian and European companies.
  • Deals of IT service and product company, with values ranging between $500K and $20M. Deals involved Software Development, IT Outsourcing, Value Added Reseller, OEM, and Licensing.
  • Corporate buy-out agreements.
  • IT Outsourcing Agreements; negotiated with purchasers such as MCI, Bell Atlantic, Bell Canada, US West, Bell South, and Lucent.
  • Strategic Alliance between health care software company and telecommunications software company.
  • Nondisclosure, employment, and independent contractor agreements.
  • Non-compete agreements.
  • Venture capital financings, public offerings, mergers and acquisitions, and asset purchases. Depending on the deal, represented seller, purchaser, investor, or underwriter with respect to intellectual issues.