Intellectual Property

Learn more about our trademark services below and on our Trademarks & Copyrights and IP Litigation pages.

Trademark Protection

• Strategic counseling for trademark protection
• Trademark applications and examinations (US and Foreign)
• Trademark application appeals to the Trademark Trial and Appeal Board
• Appeals of Trademark Trial and Appeal Board trademark application decisions to the Federal Circuit

Trademark Enforcement

• Policing – customs recordals, market sweeps, demand letters, seizure of infringing goods
• Trademark Trial and Appeal Board – oppositions and cancellations
• Appeals of Trademark Trial and Appeal Board opposition and cancellation decisions to the Federal Circuit
• Domain name disputes – ICANN proceedings / UDRPs

Trademark Litigation

• Assertion of trademark registrations against infringers
• Assertion of Lanham Act rights against infringers
• Defense of trademark lawsuits filed against accused infringers
• Trademark Trial and Appeal Board appeals to Federal District Court

Learn more about our copyright services below and on our Trademarks & Copyrights and IP Litigation pages.

Copyright Protection

• Strategic counseling for copyright protection
• Copyright applications and examinations

Copyright Enforcement

• Policing – market sweeps, sending takedown notices
• DMCA – responding to takedown notices

Copyright Litigation

• Assertion of copyrights against infringers
• Defense of copyright lawsuits filed against accused infringers

Learn more about our Trade Secrets services below and on our Trade Secrets and IP Litigation pages.

Trade Secret Protection

• Strategic counseling for establishing, maintaining and enforcing trade secret policies and procedures

Trade Secrets Litigation

• Assertion of trade secret rights against infringers
• Defense of trade secret lawsuits filed against accused infringers

Below are some of the legal services we provide domestic and international clients regarding export controls.

• Counseling regarding technology transfers and commercial activities subject to export control regulations
• Export risk assessment based on analysis of organization policies and practices, and provide recommendations
• Training for employees, managers, technical researchers, sales teams and executives
• Export compliance management plan written and customized to the client, and assist with implementation
• Export Control Classification Number (ECCN) classification based technical review, end user and end user
• Export license applications with BIS via SNAP-R, including deemed export license requests
• Self-audit implementation and execution, including update of ECCNs and policy

Learn more about our privacy and information security services below and on our Privacy and Cybersecurity page.

• Strategic counseling regarding collection and retention of information subject to individual privacy and medical privacy and financial privacy security regulations
• Strategic counseling regarding management of response to identified data breach and related notifications
• Strategic counseling regarding California Consumer Privacy Act (CCPA) and California Privacy Rights Act (CPRA) as well as EU General Data Protection Regulation (GDPR) with foreign counsel
• Strategic counseling regarding data mapping and data inventory and data sharing and related analysis
• Drafting of privacy policies and counseling regarding implementation
• Review and preparation of commercial agreements contemplating handling of data and/or including standard contractual clauses
• Defend civil claims (individual and class action) brought pursuant to Children’s Internet Privacy Act (CIPA)
• Internet service provider litigation such as Communications Decency Act (CDA) Section 230 safe harbor

Patent Prosecution and Counseling (Learn More)

• Successfully supported a U.S.-based oncology company in connection with strategic counseling and patent prosecution to support its novel antibody platform technology and product pipeline.
• Secured patent prosecution and portfolio development for a variety of medtech devices related to treatment of skin conditions.
• Obtained a critical patent for the top-selling video game accessory in the world.
• Prepared, filed and prosecuted an accelerated patent application resulting in a notice of allowance within thirty days of filing the application and grant of the U.S. patent in under four months.
• Led strategic counseling, patent prosecution and due diligence for a NASDAQ-listed otic drug delivery company.
• Successfully secured numerous U.S. patents for leading Japanese motor company.
• Secured patents and provided strategic counseling leading to the commercialization of coronary stents.
• Successfully represented a China-based regenerative medicine company and separately a China-based ophthalmic company in connection with strategic counseling and patent prosecution.
• Managed strategic counseling, patent prosecution and due diligence for a U.S.-based oncology drug delivery company.
• Provided strategic counseling and patent prosecution for a U.K.-based skincare and dermatology company.
• Provided strategic counseling, patent prosecution and due diligence for a U.S. university spinoff diagnostic company.
• Led strategic counseling and patent prosecution for a U.S.-based point-of-care (POC) diagnostic company.

Patent Post-Issuance

• Prepared and filed numerous successful ex parte reexamination requests of competitor patents resulting in strategic delay of potential litigation and establishing intervening rights for the client.
• Handled a successful ex parte reexamination of a client’s patent asserted in litigation resulting in certification of the originally patented claims and substantial settlement of related litigation.
• Prepared, filed and successfully prosecuted a post-grant invalidity attack of a U.S. patent asserted against the client resulting in a final rejection and non-certification of originally patented claims and favorable settlement terms for the client in related litigation.
• Successfully managed a post grant inter partes reexamination of a client’s patents asserted in litigation resulting in certified claims that read on the competitor’s products.
• Successfully handled post grant opposition of a client’s European patent in the European Patent Office resulting in confirmed claims that read on the competitor’s products.
• Obtained a reissue patent for the client including original claims and new claims reading on a competitor’s products.

Licensing and Technology Transactions (Learn More)

• Negotiated an Exclusive Patent License Agreement for high-tech OEM in connection with the worldwide production and sale of co-marketed products within the sports industry.
• Negotiated a patent license agreement for an enabling technology in the human nutrition industry with a major international food and supplement manufacturer.
• Successfully licensed and subsequently sold a trademark to a major beverage company.
• Negotiated a Technology License Agreement for high-tech OEM in connection with acquisition and license-back of patented computerized technology within specified rebreather fields of use.
• Advised a publicly held global provider of broadband wireless communications products in connection with settlement of patent litigation and a related license transaction.
• Negotiated a Software License Agreement between wireless embedded software technology company and publicly traded multinational software technology corporation.
• Provided counsel on commercialization strategy and drafted and negotiated all license, maintenance and custom programming agreements for a software publisher.
• Negotiated a Mutual OEM International Supply and Licensing Agreement between multinational corporations.