Transactions

Our clients are often involved in business transactional matters concerning intellectual property rights.   Whether you are buying, selling, licensing, or developing intellectual property rights, we can help you get where you want to go with your business partners, competitors, and suppliers.  Below are some examples of the types of IP transactional matters we may be able to handle for you. Click here to contact us regarding services.

Patents

  • Protecting Design and Utility Inventions
  • Evaluating Patents and Prior Art
  • Developing Cost-Effective Strategies for Building and Managing Patent Portfolios

Trademarks

  • Protecting Trademarks, Service Marks and Trade Dress (Product Configurations)
  • Brand Acquisition, Development and Management Strategies
  • Evaluating Secondary Meaning and Likelihood of Confusion

Copyrights

  • Protecting creative expression
  • Evaluating Infringement Allegations, Fair Use Defenses, and First Amendment Rights

Trade Secrets

  • Identifying and protecting trade secrets
  • Counseling as to appropriate safe-guards for trade secrets and proprietary information

Business Agreements

  • Licensing
  • Distribution
  • Franchise
  • Software; Research
  • Development
  • Marketing
  • Advertising
  • Joint Venture
  • Investors
  • Employees
  • Non-Competition
  • Non-Disclosure / Confidentiality Agreements (NDA's)
  • Settlements
  • Releases
  • Sponsorships
  • Websites

IP Audits, Risk Assessment and Management, and Due Diligence

  • Auditing to determine intellectual property needs and potentially available protection
  • Determining intellectual property risks affecting business and recommending steps to reduce and/or manage such risks
  • Conducting due diligence concerning intellectual property rights involved in commercial transactions

Representative Transactional Engagements

  • Brand and IP Portfolio Management - Counsel to a number of clients with regard to building and protecting their IP portfolios for purposes of enhancing market presence, reducing encroachment by third parties operating within the same or similar industries, and avoiding unnecessary litigation over IP issues when possible.
  • Corporate Restructuring - Counsel to several U.S.-based suppliers of overseas products in corporate restructuring to accommodate new partner(s), investors and/or distributors while protecting IP rights.
  • Software Development - Counsel to clients engaged in software development including mobile phone and tablet applications.
  • Online and Social Media Marketing - Counsel to clients undertaking online advertising and social media marketing.
  • International Manufacturing - Counsel to foreign manufacturers introducing products and/or services into the U.S. in view of competitors' patents.
  • Financial Services Software - Counsel to U.S. publicly traded financial services company in acquiring foreign-developed software for use in the U.S. and further development of U.S. and foreign versions of the software.
  • Pharmaceutical Patents - Advised compounding pharmacy in acquiring rights to make, use and sell certain patented technology and formulations for pharmaceuticals.
  • Licensing Agreements - Assisted client in purchase of assets and IP from licensor/distributor and in amending license/distribution agreement to maintain product distribution in U.S. while distributor reorganized to improve cash flow.
  • Patent Infringement Advice - Counsel to U.S. publicly traded financial services company to determine risks of infringement of competitor's patents posed by client's proposed product enhancements.
  • Oil & Gas Services - Counsel to Marine Shipyard and Oilfield Contractor with regard to acquiring, enforcing, licensing and selling IP rights.
  • Food and Beverage Packaging - Advised food packaging client in protecting IP rights in acquisition by publicly-traded global food and beverage packaging manufacturer.
  • Self-Storage - IP Counsel to dynamic Real Estate Investment Trust (REIT) client operating in the self-storage industry in North America.
  • Retail Apparel - Protected brand management company in acquiring, defending, registering and licensing trademark portfolios.  Represented client in transactions and/or litigation through the U.S. Patent & Trademark Office, the Trademark Trial & Appeal Board, and U.S. Bankruptcy Courts.