Overview
Locke Lord Bissell & Liddell knows that intellectual property (IP) assets are the lifeblood of many of our clients, and Locke Lord’s IP Transactional Practice Group has years of experience – both domestic and international – in helping our clients identify, secure, exploit and maintain their valuable IP assets.
The IP Transactional Practice Group has a dedicated core of highly skilled attorneys and IP professionals who focus on the fundamental acquisition and maintenance of IP rights, and highly skilled attorneys who focus on general and specific IP client counseling, including all aspects of IP opinion work (e.g., infringement/non-infringement, validity/invalidity) and the negotiation of IP agreements, such as license agreements, ownership transfer agreements, and research and development agreements. Attorneys in this practice group routinely counsel clients concerning the internal administration of IP rights, such as negotiation and review of IP covenants in employee agreements and company manuals and contracts; implementation and review of company IP procedures (including trade secret protection); company IP audits; and company technology development seminars.
Our People
Several of our IP Transactional team members have 30 or more years of experience in IP law, and our wide range of skills helps us cut to the key issues of each individual case, saving time and money for our clients. We are strategic and surgical in our approach.
The IP Transactional Practice Group property lawyers are members of all major professional associations, including the American Intellectual Property Law Association, Licensing Executives Society, International Trademark Association, Computer Law Association and American Arbitration Association’s Panel of Arbiters. Our team of intellectual property attorneys includes many recognized among The Best Lawyers in America.
Our clients
Our clients include Fortune 500 companies, mid- and small-cap enterprises, Internet and bio-tech startups. Their businesses compete in the energy, consumer, medical, electronic, pharmaceutical, biotechnology, entertainment, media and broadcasting, manufacturing, merchandizing, franchising, consulting and accounting industries, as well as educational institutions throughout the country.
Intellectual property and technology develop at a fast pace and requires fast action and intimate knowledge of the technology in rapidly changing industries. The IP lawyers and professionals in Locke Lord’s IP Transactional Practice Group are aggressive and proactive in their approach - we help our clients take advantage of the opportunities available to them, and we act quickly and decisively to provide creative solutions and solve any business problems that need to be addressed.
Patents
Attorneys in the IP Transactional Practice Group secure patent rights involving virtually every area of science and technology, product, composition and process both in the United States and abroad. Our patent procurement experience includes original applications, reissues, offensive and defensive reexaminations, interferences, defensive publications and appeals within the U.S. Patent and Trademark Office (PTO) to the Board of Appeals and Interferences and from the PTO to the Federal Circuit Court of Appeals.
Many of the attorneys in the IP Transactional Group previously worked as engineers and scientists for the industries we serve, such as chemical, petroleum and aerospace companies and chemical and mechanical engineering firms. We have former in-house counsels to software makers, universities and global multinationals and former examiners for the U.S. PTO. Our IP attorneys have diverse educational backgrounds and degrees in a variety of fields, including aerospace, mechanical, electrical and chemical engineering, biochemistry and molecular genetics, biology, biomedical science, and cellular biology. A number of our attorneys have PhD’s in their field of study, including biogeochemistry, molecular biology and medicinal chemistry. Locke Lord’s patent procurement experience covers a broad range of technologies, from business methods to electrical and mechanical technologies to medical device, chemistry and biotechnology.
Trademarks/Trade Secrets
The IP Transactional Practice Group counsels clients worldwide on the selection, clearance and protection of brands, trademarks, service marks, trade identity, slogans, designs and logos. Our attorneys file and prosecute applications before the U.S. PTO and each of the separate trademark authorities in all 50 states, and prosecute foreign applications. We also negotiate and draft agreements for the license and sale of brands, logos, trademarks, service marks, trade names and trade dress. Locke Lord handles several sophisticated international trademark portfolios for Fortune 100 companies.
Our attorneys are experienced in registering trademarks with the U.S. Customs Service to bar entry of counterfeit goods and obtain the release of goods barred from entry because of trademark registration certificates on file. We give legal opinions regarding trademark infringement and dilution, validity and ownership issues involving brands, logos, trademarks, service marks, trade names and trade dress. To secure and protect valuable trademark rights for our clients, we prosecute and defend administrative trademark oppositions and cancellations before the Trademark Trial and Appeal Board of the PTO. Additionally, attorneys in this practice group acquire, maintain and defend domain names for our clients, and are well versed in UDRP proceedings.
Our attorneys counsel clients involving confidential business and technology information and trade secrets. We work with the Uniform Trade Secrets Act and the corresponding laws of various states. We design programs for protecting trade secrets and confidential information for businesses, including preparation of appropriate confidentiality and non-disclosure/non-use agreements.
Copyrights
From literary works to computer software licensing, Locke Lord's IP Transactional Practice Group is skilled in every aspect of copyright law. We are ahead of the curve in high technology applications and in author, composer and performance rights. We advise clients on obtaining copyright protection for Internet Web sites, multimedia, CD-ROMs, computer software, computer databases and semiconductor chip products. And we secure rights in works created by third party consultants and artists.
We have experience with both obtaining the permission required from third party copyright holders and obtaining copyright protection on broadcast and media works. We advise on ownership rights for copyrighted works, including works for hire and rights that descend by devise or inheritance. Our attorneys negotiate and prepare recording, publishing, writer, songwriter and composer agreements; film, television and video financing; and production, distribution and license agreements.
Our IP attorneys prepare license agreements for film clips, text and graphic artwork and assignments of copyrights in music, print and film. Our attorneys practice before the U.S. Copyright Office with a full range of services, including filing of copyright applications, recording of security interests and arranging for title transfers and title searches. We also advise on copyright infringement actions, ownership, validity and title issues involving art, music, literary works, software, catalogs and other copyrighted works.
General IP Counseling
Our attorneys have the experience and strategies to help our clients exploit their intellectual assets through licensing, transfer and research and development agreements. We negotiate a broad range of commercial agreements for the licensing, franchising, financing and sale of intellectual property, know-how and technology, including consulting agreements and technical assistance agreements. We regularly prepare agreements involving the license and sale of software, patents, trademarks, characters, merchandise and copyrighted works. We draft complex patent, know-how and technology licenses, taking into account the antitrust laws and laws dealing with patent misuse. We are proficient at financing transactions with intellectual property as collateral.
Our attorneys write franchise agreements and franchise disclosure statements in compliance with FTC rules and the laws and regulations of many states. We draft trademark license agreements that avoid being considered franchise agreements requiring delivery of franchise disclosure statements. And we supply clients with agreements involving the license and sale of multimedia, Internet Web sites, domain names, brand names and logos, always checking on the record title to the works being licensed or sold and arranging for completion of any necessary acts to protect title and rights.
Our IP attorneys provide sophisticated legal opinions to our clients on freedom to operate issues, validity, infringement, ownership and enforcement of IP rights. We are experienced in working with our clients to develop and implement intra-company IP procedures to identify and protect nascent and established IP assets, including design and design-around efforts, IP audits, and review of company employment, contractor and other contracts. Attorneys and professionals in this practice group routinely work with Locke Lord attorneys from other practice groups, such as IP due diligence investigations for mergers and acquisitions, and IP Litigation.