Intellectual Property Licensing

Protecting company assets is critical to maintaining a competitive advantage. In many instances, intellectual property (IP) is a company’s most valuable asset. At Porzio, we believe that intellectual property protection is best approached from a strategic business standpoint. Thus, our attorneys counsel clients not only in the creation, development and protection of IP resources, but also on how best to utilize those assets to advance business interests and to enforce their rights. Our attorneys and professionals offer full-service representation in patent, trademark, copyright, trade secret, and unfair competition law, providing fundamental services related to each, including patent preparation and prosecution, litigation, licensing, transactions, and opinions. Porzio also assists clients with e-commerce and other digital legal issues.

Porzio’s IP attorneys have the legal skills and experience to deal with the complex technology. For example, our patent attorneys have advanced degrees and relevant industry experience in all major technology areas, including biotechnology, biochemistry, business methods, chemistry, computer science, electrical engineering, fluidics, material sciences, mechanical engineering, medical devices, optics, pharmaceutical, physics, and telecommunications.

Our technical capabilities are matched by a deep understanding of the relationships between intellectual property rights and practical business needs. We recognize the primary reason for protecting and enforcing IP is to advance a company’s business interests and increase shareholder value: this philosophy guides and defines our patent enforcement and licensing practice. We are results driven, and recognize that clients need options. We take a business-like approach to securing, enforcing, and protecting clients' intellectual property. Our approach tailors solutions to meet client needs. We help clients avoid legal entanglements that can harm or detract from their business activities.

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Copyright

Our representation of scholarly and medical education publishers, computer software developers, Internet website developers and website owners solidly positions us in the field of copyright law. We have extensive experience in representing both authors and publishers in publishing agreements, sub-publishing agreements and licensing agreements. We file copyright applications for a variety of media, including literary and musical works, sound recordings and computer programs. We prosecute applications, including issues related to dual copyright and trade secret protection. Because our Intellectual Property attorneys bring solid technology and engineering backgrounds to their legal practices, we are particularly well suited to attack and solve technology-related copyright matters arising in the context of trade secrets, computer software and digital copyright issues.

e-Commerce and Digital Intellectual Property

While e-commerce provides tremendous opportunities for our clients, it also presents challenges from cybersquatting, domain name disputes, and protecting proprietary software and applications. We work with our clients to address the challenges presented by new technologies, to protect our clients’ rights and to comply with new regulatory dictates, including privacy and anti-spam measures.


Now that computer software, processes based on mathematical formulas, and certain business methods are patentable, there are new and powerful ways to protect intellectual property. In some circumstances, software can be protected simultaneously by patent, copyright and trade secret, providing significant financial and competitive advantages for the software developer. Recent cases, however, may limit IP rights in this area, and Porzio can help a company navigate these waters.

We have represented companies in matters involving the Internet and e-commerce since businesses began exploring the commercial use of the Internet in the mid-1990s. We routinely counsel clients on licensing, copyrights, trademarks, patents, risk management and other issues that impact e-businesses. We handle licensing and litigation in connection with the misuse of brand names, HTML metatags and other protected rights associated with e-commerce.

Porzio’s Intellectual Property attorneys provide the following services for emerging Internet companies:

  • Register domain names
  • Establish an e-commerce business
  • Negotiate and draft agreements for e-commerce transactions, interactive content providers, and online marketing and advertising regarding product and software development, distribution, outsourcing, system integration, Internet home page development, e-commerce sites, corporate e-mail policies, hyperlinks and electronic data interchange
  • Prepare agreements relating to intellectual property rights and technology transfer
  • Counsel clients on advertising or promoting products or services via the Internet or through other electronic media
  • Counsel clients and document transactions regarding the protection, enforcement, licensing, and acquisition of intellectual property rights for business conducted via the Internet, including copyright, trademark and patent prosecution
  • Represent Internet Service Providers (ISPs) and website owners
  • Advise clients on the legality of their privacy policies
  • Conduct website audits with respect to intellectual property and liability issues
  • Counsel clients on legal restrictions for the use of encryption
Intellectual Property Litigation

Porzio’s attorneys have extensive experience litigating intellectual property matters. They have brought, defended and tried complex patent infringement cases in federal courts throughout the United States and before the U.S. International Trade Commission. Porzio’s appellate attorneys also have robust experience practicing before the Court of Appeals for the Federal Circuit and the U.S. Supreme Court. The combination of trial and appellate experience, technical expertise and business understanding enables us to provide an early analysis of the strengths and weaknesses of a case and to present a clear explanation of technical issues to a judge or jury. Porzio’s skilled teams think creatively to provide litigation clients, whether plaintiffs or defendants, with cost effective results.

In addition, any litigation strategy must consider the impact of new administrative procedures that were enacted in 2011 as part of the America Invents Act. For example, a third-party can now file a request for Inter Partes Review (IPR) of questionable patents with the PTO’s Patent Trial and Appeal Board to challenge their validity. Only limited discovery is allowed and the proceedings must be completed within strict deadlines. A court may stay litigation pending the outcome of an IPR, providing clients with substantial cost savings. Porzio’s attorneys not only filed and resolved one of the first IPRs to challenge the validity of a patent but have a number of ongoing IPR cases in the agency. Because of their experience within and outside of the agency, the team is well-versed in IPR proceedings.

Porzio has litigated cases across a broad spectrum of industries, including biotechnology, chemical and industrial processes, dietary supplements, medical devices, consumer products, gaming, automotive, computer science, telecommunications, and electrical and mechanical engineering. Our attorneys have particular experience representing plaintiffs and defendants in pharmaceutical product and process patent litigation, including Hatch-Waxman patent challenges.

The firm has expertise in litigation involving trademark, trade dress, trademark dilution and copyright infringement claims as well as cases claiming false advertising, unfair competition and antitrust claims. When called on to defend these types of cases, we deal with the claims made by the adversary and with the client to determine whether the client’s General Commercial Liability insurance policy will provide a defense or pay damages.

Porzio was represented on the committee that drafted the Local Patent Rules for the District of New Jersey and has served as local counsel for other national firms litigating patent matters in New Jersey.

Intellectual Property Policy

Porzio is well positioned to assist clients with public policy issues involving intellectual property rights. Attorneys from its Washington office have been deeply engaged in issues relating to patent reform legislation being debated in Congress and state legislatures. In regular contact with the PTO, our practitioners closely monitor and advise on changes to rules and procedures. We also counsel IP clients on how actions taken by other agencies, such as the Federal Trade Commission and Food and Drug Administration, can impact their business. Importantly, Porzio knows how, when necessary, to bring multiple skill sets to the table to negotiate and resolve disputes, whether they are between companies, or companies and the government.

Licensing and Technology Transfer

A significant way to maximize the value of IP is to structure technology-based agreements clearly focused on and supporting short- and long-term strategic business objectives. An intellectual property portfolio can produce significant ancillary income for the owner and be a meaningful source of income to a new company. Licensing income can fund research and development expenses and finance growth. Field of use licenses, territorial licenses and foreign market licenses can generate income without major capital investments and are very useful when a company is unable to exploit all available product markets.

Our Intellectual Property attorneys have negotiated numerous license, distribution and collaboration agreements in the domestic and international business communities. In addition, we regularly counsel clients on strategies for licensing, assertion, developing and distributing products. We negotiate and document mergers, acquisitions, security agreements and other business combinations involving technology and intellectual property assets. We also have extensive experience in the transfer of technology from government-supported operations and academic organizations to businesses in the private sector.

Managing Intellectual Property Assets

We believe that managing patent assets is a vital component of IP oversight. Once key IP assets are identified and protected, building and maintaining a strong patent portfolio is crucial to building a successful enterprise. A strong management includes addition of new IP assets to the patent portfolio and maximizes the values of those lying dormant. Building on the exceptional capabilities of our strong patent practice, we provide strategic guidance on the development, use and enforcement of proprietary technologies and holdings, and on the acquisition of new IP assets, with the primary goal of maximizing those assets for commercial benefit.

Porzio also has significant experience assisting clients in mining patent assets by assessing the financial value of the patents in the portfolio and the business and commercial value. Our team has experience auditing, evaluating and assessing the commercial value of company patents to assure that these valuable corporate assets are generating value for the company.

We also regularly assist companies in performing IP due diligence investigations related to mergers and acquisitions and other matters. We focus on not only ensuring the buyer knows what they are acquiring, but also on ways to maximize the value of those assets after the deal closes.

Patent Opinions and Reviews

Companies facing the question of possible infringement have an “affirmative duty of due care” which includes obtaining an opinion of competent patent counsel that products or services do not infringe a valid patent. Failure to obtain such opinions can result in a finding of willful infringement, or subject a company to sanctions that can include treble damages and attorney fees. Unlike most opinion practices, patent litigators render our non-infringement and invalidity opinions. The attorneys’ significant trial experience and advanced degrees or industry experience in the relevant technology allows them to provide practical, real-world assessment of infringement risks to aid our clients in meeting business objectives.

Patent Prosecution

We handle all aspects of patent prosecution at the U.S. Patent and Trademark Office (PTO). Porzio’s clients have the advantage of Porzio’s highly skilled patent attorneys, many of whom worked in the PTO. They not only understand the best ways to address issues before the agency, but also have continuing relationships with examiners and other staff that allow them to monitor evolving agency agendas and break through bureaucratic roadblocks. Our attorneys are prepared to use their advanced science and engineering degrees and relevant industry experience to protect clients’ inventions in fields such as biotechnology, biochemistry, chemistry, mechanical, medical devices, material sciences, electronics, computers, semiconductors, software, optics, telecommunications, and business methods.

Porzio also helps its global clients build worldwide patent portfolios by filing and prosecuting applications in the EPO, and other foreign countries through the PCT or with individual filings. Porzio works with its clients to identify the countries where they need to file strategically, thereby eliminating unnecessary costs associated with filing applications in non-strategic countries. In addition, we coordinate the domestic and foreign prosecution effort to maximize coverage and minimize conflicts and costs during prosecutions and maintenance periods.

 

Trademarks

Our Intellectual Property attorneys handle transactions that involve the clearance, creation, protection, enforcement, licensing and acquisition of trademark rights for all types of businesses.  Our experienced attorneys enforce trademarks against infringers and defend claims of infringement against clients.

We search hundreds of  trademarks for use or registration in the United States and overseas each year.  We make a concerted effort to provide practical guidance beyond the scope of the advice typically associated with a clearance and registration opinion.

Our relationships with trusted associates around the world enable us to register marks overseas.  We also file and prosecute Community Trademark (“CTM”) applications in Europe. These applications provide trademark coverage in the 28 countries of the European Union, including the dominant countries of Western Europe, at a fraction of the cost of registering in each country individually.  Porzio embraced the United States’ adoption of the Madrid Protocol, which allows owners of trademark applications and registrations to secure a single “international” trademark registration to protect trademarks in up to 65 member countries.

Our transactional skills in the trademark field extend beyond searching and registration.  We counsel parties in various types of trademark ownership disputes, including Internet domain names.  We serve as special counsel to debtors in bankruptcy proceedings regarding the preservation of assets and the rights of secured parties.  We act on behalf of disclosed and undisclosed principals to purchase marks and other properties from third parties.

Litigation over trademarks can take place in a number of different forums.  In the Trademark Office, we have handled countless registration oppositions and cancellation proceedings to judgment or favorable settlement.  In federal district court, we represent both plaintiffs and defendants in infringement actions.  Regardless of whether acting on behalf of plaintiffs or defendants, Porzio’s attorneys identify grounds for resolution and see settlement negotiations as an opportunity to use diplomacy to advance the business interests of our client.

Trade Secrets

In the trade secrets area, Porzio works with companies to identify business data that qualifies for trade secret protection – such as know-how, customer lists, software and business plans. We then help clients develop and document strategies to protect those trade secrets. Businesses without well-documented strategies to protect their trade secrets jeopardize those important assets. We help our clients to guard against such preventable losses. Among the tools we use are non-disclosure agreements, employment agreements, inventor assignments, company confidentiality and non-disclosure policies, independent contractor agreements, IP licenses, and other measures designed to help companies guard their trade secrets and work product. We also work with companies to enforce those protections, through cease and desist letters, out-placement consultations, and where necessary, litigation.

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