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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

Our seasoned patent, trademark, copyright, trade secret, export control, and licensing and technology transactions attorneys work with you to maintain your competitive edge. They bring technical degrees, scientific knowledge, and industry experience. You’ll be represented by attorneys with a proven track record of success with the U.S. Patent and Trademark Office, in state and federal court litigation, and with the International Trade Commission, U.S. Customs and Border Protection, and the Internet Corporation for Assigned Names and Numbers (ICANN).

Our services include intellectual property selection, development, registration, licensing, protection, portfolio management, export control and litigation in the U.S. as well as worldwide through international legal networks such as Meritas and Law Exchange International.

Learn more below or on these pages:

 

Learn more about our Patent services below and on our Patent Prosecution, Licensing and Technology Transactions, and IP Litigation pages.

Patent Protection

  • Strategic counseling for protection of utility patent, and industrial design / design patent and prefiling searches and analysis
  • Invention disclosures
  • Patent applications and examinations (US and Foreign)
  • Patent application appeals to the Patent Trial and Appeal Board
  • Appeals of Patent Trial and Appeal Board patent application decisions to the Federal Circuit
  • Patent reexaminations
  • Patent reissue applications
  • Third party submissions against competitor patent applications

Patent Post-Grant Proceedings

  • Inter Partes Review
  • Post Grant Review
  • Covered Business Method Review
  • Derivation Proceedings
  • Appeals of Patent Trial and Appeal Board post grant proceeding decisions to the Federal Circuit

Patent Portfolio Management & Strategy

  • Global patent portfolio development and management
  • Opinions regarding validity and infringement and freedom to operate
  • Patent portfolio due diligence
  • Patent mining and product mapping
  • Patent licensing and technology transactions
  • Strategic counseling regarding Abbreviated New Drug Applications (ANDA) under Hatch-Waxman

Patent Litigation

  • Assertion of granted utility and design patents against infringers
  • Defense of utility and design patent lawsuits filed against accused infringers
  • Hatch-Waxman / Abbreviated New Drug Application (ANDA)
  • International Trade Commission assertions under Section 337
  • Defense of International Trade Commission assertions under Section 337

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.

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Procopio Expands D.C. Office with International Tax Practice Leader and Life Sciences Patent Attorney