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Intellectual Property

A critical part of your company’s value is its intangible assets. Our experienced Intellectual Property attorneys understand your industry and identify, secure and manage those trademarks, patents, copyrights and trade secrets that may be the key to your enterprise and success.

 

 

 

 

 

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Intellectual Property

Summary

You need attorneys who understand your unique innovations and industry challenges to manage complicated legal intellectual property challenges. Our seasoned patent, trademark, copyright, trade secret and licensing attorneys as well as patent agents understand your industry and learn the intricacies of your innovations with technical degrees, scientific knowledge, and industry experience. Our services include selection, development, registration, licensing, protection, portfolio management and litigation in the United States and worldwide. We aggressively and creatively prosecute and defend our clients’ rights in cases before the U.S. Patent and Trademark Office, all levels of the federal courts, and the International Trade Commission and U.S. Customs. We also work in tandem with foreign lawyers to register trademarks, obtain patents as well as resolve IP-related disputes in foreign countries.

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.

A sound intellectual property strategy is key to the success of any startup. Since 2012, a select group of carefully chosen high-technology entrepreneurs have participated in Procopio’s LaunchPad incubator in our Del Mar Heights office. Along with a complimentary legal start-up package, valuable office space and other back-office support, participants benefit from education on key topics including intellectual property. Our attorneys provide ongoing legal support with everything from patent protection to licensing.

Learn more about LaunchPad by Procopio here.

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