Intellectual Property

The Firm’s Intellectual Property practice group is focused on counseling businesses—including nonprofits such as universities—with respect to their intellectual property needs. We provide legal services in the areas of patent, trademark, copyright and trade secret protection, as well as Internet and new media, electronic commerce, software licensing, unfair competition and false advertising. We litigate in these practice areas in both courts and agencies.

Our mission is to give our intellectual property clients the highest quality, most responsive and most cost-effective legal counsel possible.

Patent
We have assembled patent attorneys with skill in all technical disciplines, including electrical, mechanical, chemical, biotech, software and business methods, with levels of experience to match virtually every task.

Our practice includes performing patentability searches and analyses, preparing, filing, prosecuting and maintaining U.S., PCT, and foreign national patent applications, conducting infringement, validity and enforceability studies, expert witness advice and testimony, and complex infringement litigation.

A complement of highly-experienced support staff and state-of-the-art research and docketing technology provide the foundation of our ability to succeed in our mission to serve the needs of our clients.

Representative Clients

Trademark
We counsel business clients regarding trademark issues both domestically and internationally. We conduct and analyze trademark searches and advise regarding conflict issues in the selection process, negotiate and draft licenses and assignments, and advise with regard to infringement issues and resolving infringement disputes. We register trademarks and service marks in the U.S. and countries throughout the world. Our clients include those with large trademark/service mark portfolios that we service and manage through a network of foreign associates covering every country throughout the world where trademark protection can be obtained, as well as smaller companies with fewer, but equally important, trademarks to protect. We combine the services of our lawyers and paralegals to provide comprehensive, yet cost-effective, service.

Copyright
We counsel clients with regard to protecting copyrights and avoiding copyright infringement, copyright issues associated with advertising and promotions in all media, negotiating and drafting licenses, and infringement disputes.

The Internet and New Media
We advise clients on Internet and new media activities, including Web-site hosting, data privacy, Internet Service Provider activities, and business use of the Internet, ranging from informational postings to transaction of business and electronic contracting. We assist clients with the full range of intellectual property, communications law and business law issues that arise from use of the Internet and other methods of electronic communications. We litigate to protect clients’ Internet domain names and the integrity and reputation of their Internet sites. We file and obtain patent protection on web site and other related e-commerce business methods.

Software Licensing and Related Agreements
We assist clients in negotiating software licenses, software maintenance and support agreements, strategic alliances, joint ventures, research and development agreements, and manufacturing, distribution, dealer, OEM, and supply agreements. We also assist clients with protecting their proprietary software through patent, copyright and trade secrets. Our lawyers have represented vendors and large users of computer systems in all aspects of the procurement and protection of hardware and software systems. We have also assisted clients in negotiations with software industry trade groups concerning claimed software infringement. On behalf of several universities, we have been actively involved in the process of technology acquisition and transfer, including drafting, counseling and negotiating agreements related thereto. Those agreements have included patent and technology license agreements with large pharma and biotech companies for values in excess of several hundred million dollars. Related agreements include third-party research and associated technology and patent license agreements through which a university may obtain commercial funding for ongoing research and lab support.

Unfair Competition
We advise clients with respect to, and litigate claims based on, section 43(a) of the Lanham Act, the basis for many federal unfair competition claims of special importance to large advertisers and to manufacturing firms in competitive industries.

Advertising and Rights of Publicity
We counsel clients on common law and federal and state regulatory restrictions on advertising, including advertising through faxes, email and telemarketing. We assist clients in negotiating for rights of publicity, and we counsel clients on how to handle and avoid claims of infringement.

Litigation
We litigate intellectual property cases of all types before the courts and administrative agencies, such as:

• Patent infringement, validity and enforceability
• Trademark and trade dress infringement, and unfair competition
• Copyright infringement
• License disputes
• Cybersquatting, false advertising, right of publicity
• International Trade Commission actions
• Patent interferences before the U.S. Patent and Trademark Office
• Trademark opposition and cancellation proceedings before the U.S. Patent and Trademark Office

Research
We keep abreast of developments in intellectual property law with subscriptions to legal services and reporters, including electronic services that provide up-to-date information on important new developments. Attorneys in our practice group have written books on intellectual property and communications law, and regularly write and speak on these and related topics. Additionally, many of our attorneys teach intellectual property courses at Washington University School of Law.