Honigman Miller Schwartz and Cohn LLP's Intellectual Property Practice Group encompasses a wide variety of patent, trademark, copyright and trade secret law, including search, registration, enforcement, anti-counterfeiting, litigation and a wide variety of transactional work involving intellectual property rights ("IPR"). We 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.
Securing Patent Protection
- Our attorneys work with clients in a wide variety of industries to develop and secure U.S. and foreign patent protection. Our services include:
- Drafting and prosecuting patent applications in the U.S. before the United States Patent and Trademark Office ("USPTO"), and in other countries under the Patent Cooperation Treaty and 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.
– We advise on how best to select, launch, protect and enhance trademarks and service marks and the products and services which they each symbolize. We strive to provide cost effective strategies that help our clients to compete successfully and distinguish their goods and services in the marketplace, and, in the end, to maximize the value of their IPR portfolios and their return on investment. We 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
- We perform trademark searches and provide 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. We review and advise on product packaging and advertisements, fair use and comparative advertising, and help develop private label programs. We also develop cost-effective post registration maintenance strategies.
Investigation, Enforcement and Litigation
- We are well known for developing and implementing appropriately aggressive and highly successful enforcement efforts. 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 technology. We have extensive experience in conducting investigations directly and through outside investigators and law enforcement agencies. We are well versed in the enforcement laws of many foreign countries, and have extensive experience with a worldwide network of investigators and attorneys.
We have extensive 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. Our litigators have extensive experience working with experts in mechanical and electrical engineering, automotive fields, computer science, mathematics and other arts and disciplines. Our litigation experience is in federal and state courts, before the USPTO and the International Trade Commission, in alternate dispute resolution forums and in foreign administrative agencies and civil, tax and criminal courts.
Trade Dress/Design Patent
- Our attorneys are well-versed 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 recommendation for protection.
- We represent 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. We help clients police the Internet and 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
- We represent 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
- We represent both acquirers and sellers in company acquisitions and dispositions. We are experienced in dealing with the issues that are so important in 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.
We represent 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.
We are committed to providing world-class quality, timely, cost-effective, value-added services to our clients, to being responsive to their needs, and to keeping abreast of legal and technological developments for the benefit of our clients.