We assist clients in negotiating the license, acquisition or
sale of IP, managing IP portfolios, performing due diligence audits, financing
of IP-based commercial ventures, commercialization of IP portfolios through
product development, distribution, and joint ventures and other
corporate-related transactions involving IP.
IP Licensing/Sales
The firm’s attorneys have experience involving matters on
the forefront of legal issues relating to the development, use, management,
commercialization, and licensing of IP, including patents, trademarks,
copyrights and trade secrets, technology, software and the Internet. For
example:
Technology, Computer and Software Law
Development, use, licensing and distribution of computer,
software, Internet, IT and technology systems and products; computer software
licensing and development projects; outsourcing of software and IT services;
web-based software services; computer disputes; and IT and telecom contracts.
Internet-related Law
Matters relating to Internet business practices; data
privacy (domestic and international laws); media and IP issues on the Internet;
domain name issues; web-development and web-services and web-based business and
e-commerce issues.
Media and Entertainment Law relating to IP Assets
Provides counsel for the creation, licensing, distribution,
use and protection of IP, entertainment and media assets. Projects span print,
film, radio, music, DVD, the Internet and multi-media.
Commercialization of IP Assets
We are able to assist clients with commercializing
technology from a variety of public and private sources, through acquisition,
licensing, and strategic partnering, counseling with respect to business plans,
and private equity, venture capital and debt financing of IP-based ventures.
Performing Due Diligence Audits
When an entity decides to purchase the IP assets of another, a thorough due diligence audit should be conducted so as to reveal the intangible assets of a company, including any IP rights, as well as any potential liabilities. The due diligence search includes, but is not limited to:
- Researching and verifying the status of issued and pending IP
- Determining whether the seller is using IP currently not protected
- Determining whether there is active litigation with respect to the seller’s IP
- Researching and reviewing issues relating to ownership of IP
Managing IP Portfolios
Obtaining the IP is the first step; taking measures to keep
the IP in force is the next. In order to maintain the enforceability of one’s
IP, affirmative steps must be taken, such as:
- Payment of maintenance fess for issued U.S. patents and annuity fees for pending and issued foreign patents
- Filing appropriate declarations and renewals for registered trademarks and/or service marks
- Maintaining strict confidentiality standards for trade secrets
If one does not take the appropriate steps to maintain their IP rights, they essentially give away their rights to the world.
Establishing a Corporate IP Process
Ownership issues typically arise when an employee “invents”
while employed by the employer. If the employee executed an assignment, the
issue of ownership is clear: the employer owns the IP. However, if no
assignment was executed, the line regarding ownership tends to blur, especially
if the employee was hired to “invent”, the employee invented at work using
employer’s equipment or there exist corporate documents regarding “future”
assignments.
Regardless of whether a business entity IP portfolio
consists of one piece of IP or 100, all business entities could benefit from
establishing a corporate IP process wherein the ownership rights of the IP are
clearly set forth for the benefit of the employer, as well as the employees. We
assist clients in establishing corporate IP processes, such as solidifying
ownership rights, creating incentives for inventing and reducing employer
liability, so as to permit the business to focus on conducting its business.
For questions or more information, please contact Jon M.
Gibbs, Chair of the firm’s Intellectual Property Services Group
