Intellectual Property Practice
The Intellectual Property Department offers comprehensive services in all areas of intellectual property law, including patents, trade secrets, trademarks and trade dress, and copyrights. We assist clients in industries as diverse as financial services, life sciences, fashion, entertainment, consumer products, publishing, computer software and internet-related services.
We identify core intellectual property rights, create cohesive protection for them, litigate to defend them, and negotiate transfers, licenses and related agreements. We have the scientific background and knowledge necessary to resolve intellectual property issues in the areas of electronics, computer software, biotechnology, pharmaceuticals, chemistry, chemical engineering and mechanical engineering.
Litigation and Adversarial Proceedings
Patent Litigation and Invalidity Proceedings: We have extensive experience in all aspects of federal court actions at trial, and on appeal to the Federal Circuit, as well as patent invalidity proceedings before the United States Patent and Trademark Office. These proceedings include inter partes reviews, post grant reviews, covered business method reviews, and ex parte reexamination proceedings. We have successfully litigated complex issues of infringement, invalidity, damages, and injunctions. We analyze patents and render opinions on patent validity and potential infringement. We block goods that infringe our clients’ patents at the U.S. border, filing claims before the International Trade Commission and the U.S. Customs Service.
Trademark and Copyright Enforcement and Litigation: We pursue and defend trademark, trade dress and copyright claims in state and federal courts and before government agencies throughout the United States, handling issues such as likelihood of confusion and reverse confusion, secondary meaning in product configurations, dilution, substantial similarity, first sale and fair use. We monitor watch service notices, and when there is evidence that our clients’ marks and other property are being infringed, we prepare the necessary cease and desist letters and/or DMCA notices, as well as notice to social media sites, where appropriate. We have extensive experience in pre-trial and trial procedures of state and federal intellectual property actions, and can swiftly defend or bring applications for temporary restraining orders, preliminary injunctions and summary judgment as well as other motions.
Trade Secret Disputes: We use our technical knowledge and experience in litigating high-stakes non-competition litigation to craft and execute strategies to prosecute, defend and avoid trade secret disputes. We are experienced in representing clients in many different industries and closely follow developments in New York and federal law, including the Defend Trade Secrets Act. We also represent companies and individuals accused of improperly using or disclosing another company's trade secrets. We regularly handle alternative dispute resolution relating to trade secrets and confidentiality disputes, including in different arbitration forums.
Licensing and Transfer
Patent and Trade Secrets: We help clients sell or license their patents, or obtain financing to do so. Our work extends to advising on all aspects of technology development or research license, including structuring.
Trademarks: We transfer and license trademarks for both licensors and licensees in any technological, entertainment or consumer field.
Copyright and Software: We have extensive experience in copyright licensing and software licensing in such diverse technologies as financial analytic software for transactions transmitted over the Internet, word processing software for the visually impaired, sports-related software and telecommunications technology for a government telephone system.
Patent Prosecution, Audits and Due Diligence
Patent Prosecution: We research prior art patents relevant to our clients’ inventions and provide opinions as to patentability. We also prepare and prosecute patent applications in all technologies before the United States Patent and Trademark Office, including appeals to its Board of Appeals and to all federal appellate courts. In addition to representing our clients in patent reexamination, reissue and post-grant review proceedings in the United States, we coordinate the filing and prosecution of patent applications virtually in every country in the world in conjunction with our extensive network of trusted foreign associates.
Patent Due Diligence: We have handled patent due diligence in numerous substantial transactions involving such industries as medical diagnostic and treatment devices, telecommunications technology and electronic data transfer components.
Patent Audits: We perform audits of our clients’ present and potential intellectual property and product portfolios to assess which technologies are patentable, as well as which products may be blocked by a competitor’s patent and which sensitive materials may be protected as trade secrets. We advise our clients on intellectual property procedures, such as intellectual property disclosure, intellectual property review and employee incentives.
Trademarks and Domain Name Protection
Trademark Registration: We perform comprehensive clearance searches and provide registrability opinions for our clients’ trade identifiers – company names, house brands, product marks, packaging, product and packaging configurations, sounds and scents. We practice before the U.S. Patent and Trademark Office, where we file and prosecute trademark applications, including appeals, and represent our clients in trademark opposition and cancellation proceedings.
Trademark Audits and Portfolio Management: We have audited and managed trademark portfolios aggregating thousands of marks for major consumer products and pharmaceutical companies.
Domain Name and Social Media Enforcement: We file and defend Uniform Dispute Resolution Proceedings (UDRPs) to determine domain name ownership, as well as federal anticybersquatting and other e-commerce-related actions.
Copyright Registration and Analysis
Copyright Registration: We identify and register copyrighted works for clients in a wide variety of areas – computer software, written and other artistic works, character rights, still photography, television, recordings, fashion, financial services, consumer products and web site design.
Copyright Counseling and Audits: We assess risks, including Internet-related risks, and review our clients’ product lines, marketing materials and web sites to ensure that they properly protect, use and mark copyrights.
Trade Secret Counseling
Trade Secret Counseling: Our clients turn to us for advice and counseling regarding best practices and strategies for protecting their trade secrets before a dispute arises. We conduct training, assist in drafting policies, procedures and agreements, and do investigations on an urgent basis to understand risks surrounding a client's key proprietary technology.
- H. Thomas Davis, Jr. - Chair
- Rose Auslander - Counsel
- Jeffrey S. Boxer - Partner
- John M. Griem, Jr. - Partner
- Judith A. Lockhart - Partner
- Alexander G. Malyshev - Counsel
- Theodore Y. McDonough - Counsel
- Keith D. Nowak - Partner
- Richard G. Pierson - Partner
- William F. Sondericker - Partner
- Danielle C. Sullivan - Patent Agent
- Leonardo Trivigno - Counsel