Intellectual Property

What's New

In recent surveys by BTI Consulting Group, Honigman was ranked among the top ten law firms in the country for patent work and in the top 5% of all law firms for IP Litigation. Honigman was also named on the list of "Most-Favored IP Departments," where one of the primary selection factors is customer service.

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Honigman ranks among the top ten law firms in the country for patent work in a survey conducted by BTI Consulting Group.

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Honigman ranks among the top 5% of law firms for IP Litigation according to a survey conducted by BTI Consulting Group.

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Honigman’s Intellectual Property attorneys have provided legal and strategic guidance on 12 drug therapies in the late stage clinical development (Phase III), four of which have recently received FDA approval in the U.S. in the last three years.   

Overview

“ We use Honigman for all of our patent and trademark needs. Their personal touch gets the job done on time and right the first time. I have already recommended Honigman on several occasions and I will continue to do so. ”

Larry Lawson, Innovation Department Manager
Android Industries, Inc., Auburn Hills, Michigan

Honigman’s Intellectual Property (IP) Department focuses on patents, trademarks, copyrights and trade secrets for client portfolios worldwide, including search, registration, enforcement, anti-counterfeiting, litigation and a range of transactional work involving intellectual property rights (IPR). Our IP team offers a wide range of intellectual property services to large, mid-size and small businesses throughout the nation and around the world. We also assist foreign clients in extending protection for IPR developed in their home countries to the U.S. market, and U.S. clients in securing U.S. and global protection of IPR.

Our attorneys and IP specialists have extensive legal and professional training, including wide-ranging backgrounds and advanced degrees in electronics, computer science, electrical engineering, physics, e-commerce and information technology, chemistry, mechanical and chemical engineering, biotechnology, biology, medical devices and structural and civil engineering. In addition, many of Honigman's lawyers have worked for major corporations, national law firms and IP boutiques, and as examiners in the United States Patent and Trademark Office (USPTO), giving them a valuable perspective on our clients' IP issues.

Our Services

Securing Patent Protection – Our attorneys work with clients in a broad array of industries to develop and secure U.S. and foreign patent protection. Our services include:

  • Drafting and prosecuting patent applications in the United States before the USPTO, and in other countries under the Patent Cooperation Treaty, through an extensive network of local patent counsel
  • Evaluating, and either defending or asserting claims of infringement of existing patents
  • Advising as to the patentability of inventions, and on the non-infringement and validity of existing patents
  • Developing "design around" strategies to avoid infringement of a given competitor's patents

Brand Management – Honigman advises on how best to select, launch, protect and enhance trademarks and service marks in addition to the products and services which they symbolize. We strive to provide cost effective strategies that help our clients compete successfully, distinguish their goods and services in the marketplace and maximize the value of their IPR portfolios and their return on investment. Our attorneys use an interactive, team approach that emphasizes transfer of knowledge in both directions. Understanding each client's way of doing business and business objectives is a top priority.

Trademark Clearance, Prosecution and Registration – Honigman performs trademark searches and provides opinions on a cost effective basis, one mark at a time, or in volume. Once a given mark or work is cleared, upon request, we file U.S. applications and use our worldwide network of proven foreign associates to file outside the U.S. We provide advice on registration strategies throughout the world. Our team reviews and advises on product packaging and advertisements, fair use and comparative advertising and helps develop private label programs. We also develop cost-effective post-registration maintenance strategies.

Investigation, Enforcement and Litigation – Honigman's ability to develop and implement appropriately aggressive and highly successful enforcement efforts is well known. Such efforts may be limited to a single matter, or extend to country-wide programs to "clear the weeds" of infringers and counterfeiters and, thus, open markets for new brands or technologies. We have extensive experience in conducting investigations directly and through outside investigators and law enforcement agencies. Our Department is well versed in the enforcement laws of many foreign countries, and has vast experience with a worldwide network of investigators and attorneys.

We have broad experience in technology and intellectual property litigation, including patent, trademark, trade dress and copyright infringement actions; cybersquatting and domain name UDRP actions; trade secret and unfair competition litigation; licensing and other contractual disputes; enforcement of confidentiality and non-competition agreements and trademark opposition and cancellation proceedings. Honigman's litigators have extensive experience working with experts in mechanical and electrical engineering, the automotive field, computer science, mathematics and other arts and disciplines. We appear before federal and state courts, the USPTO and the International Trade Commission, in alternate dispute resolution forums, foreign administrative agencies and in civil, tax and criminal courts.

Trade Dress/Design Patent – Our attorneys possess substantial experience in obtaining trade dress protection of product packaging look-and-feel, as well as securing trade dress or design patent protection for product configurations where appropriate. We have considerable experience in enforcing trade dress and design patent rights, which we use to guide our recommendations for protection.

E-Commerce – Honigman represents companies that use e-commerce to complement their "brick and mortar" marketing and distribution efforts, and companies that rely solely upon e-commerce. We counsel clients on complying with laws and regulations affecting the Internet, including intellectual property, privacy and commercial code compliance. We negotiate and draft a wide variety of e-commerce agreements, including website hosting and development, advertising, marketing, fulfillment services and related agreements. Our attorneys help clients police the Internet as well as find and prosecute domain name, trademark, copyright and patent infringement matters.

Tax and IPR – We are experienced in U.S. and foreign tax laws regarding the transfer and licensing of technology and IPR, including special issues such as transfer pricing, valuations, tax incentives and amortization. We have extensive experience in creating and managing IPR holding companies in the U.S. and overseas.

Licensing, Distribution and Technology Transfer – Honigman represents clients in the acquisition, development and exploitation of technology and IPR through licensing, distribution, technology transfer and other agreements.

Licensing of Computer Software and Acquisition and Leasing of Computer Hardware - We represent companies in the design, development and acquisition of customized computer systems; in the acquisition of computer software and hardware; in agreements for the provision of information technology services, including outsourcing; in the development of ASP solutions; and in other transactions with respect to information technology products and services.

Acquisitions and Dispositions – Honigman represents both acquirers and sellers in company acquisitions and dispositions. We are experienced in dealing with the issues key to these transactions, including ownership of technology and IPR; contractual arrangements with key personnel; complex tax and accounting structuring; securities registration and anti-fraud compliance; and regulatory compliance.

Our Clients

Honigman represents clients in many different industries, including automotive (OEM and suppliers), retailing, publishing (newspapers, books, magazines, multi-media), gaming and hospitality, e-commerce, food and beverage, restaurant, advertising, insurance, software, electronics, consumer products, fashion, banking, transportation, telecommunications, medical services, medical devices and real estate.

Our IP Department also represents numerous pharmaceutical and life science companies in protecting technologies that are core to their business survival. We are handling international patent portfolios and related regulatory listing, extension and working requirements for three recently approved pharmaceuticals as well as for several that are in Phase III clinical trials.

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