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Intellectual Property

Overview

In today’s rapidly changing market, you need an intellectual property team that will enhance and safeguard your competitive position.

Michael Best’s nationally recognized IP practice offers three key advantages: we know your business; we understand your technology; and we have the advocacy skills to help you develop, manage, and protect your intellectual assets.

With more than 150 lawyers and IP professionals — including more than 25 patent engineers, scientists, and registered agents, as well as 30 administrators — our IP group provides the full range of legal services related to all aspects of IP. Our professionals practice on the national and global stages in trademark, patent, and copyright law, including prosecution, portfolio management, enforcement, clearance, defense, and litigation.

 

Many of our lawyers have advanced degrees and business experience in areas like computer science, engineering, physics, chemistry, and biotechnology. A significant number have served as examiners in the U.S. Patent and Trademark Office (PTO), giving us a valuable perspective on patent and trademark issues.

 

Our Approach

When approaching a new matter, we start by familiarizing ourselves with your short- and long-term business goals. What are you hoping to achieve by licensing or protecting this IP asset? Is the project global or limited to a particular territory? What are your financial expectations and budgetary constraints? How does it fit into the overall portfolio strategy?

Armed with this knowledge, we create and implement programs designed to increase the value of your intellectual assets while minimizing downside risk. Cutting-edge research, imaging, docketing, communication, and litigation support systems enhance the impact of our work in this area. Our approach is balanced but aggressive, and it has produced an exceptional record of success.

 

Service Areas

Our Intellectual Property practice group offers a complete range of services and guidance, including:

Patent

Helping clients strategically manage their patent portfolios, including preparing and prosecuting patent applications; analyzing patentability, invalidity, and infringement issues; advising on the design and development of new technologies and products; dispute resolution; and negotiating patent licensing and technology transfer agreements.

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Trademark

Assisting with the full range of trademark matters, including trademark counseling and prosecution, advertisement and promotions, domain names and Internet issues, and trademark enforcement and litigation.

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Copyright

Counseling on copyright registration and protection strategies; use of third-party copyrighted works; acquisition, disposition, and licensing of copyrighted works; and litigation.

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Enforcement, Clearance & Defense

Representing clients in patent, trademark, trade dress, copyright, trade secret, Internet, and false advertising cases in federal and appellate courts, and before agencies such as the PTO and its Appeal Boards.

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Post-Grant

Navigating clients through inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) proceedings.

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Licensing & Technology Agreements

Helping clients capitalize on crucial technology and IP assets through licensing, joint development, and other strategic alliances in fields such as: Software & Information Technology; Patents & Technology; Trademarks; and Life Sciences.

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Privacy & Cybersecurity

Advising clients on all aspects of privacy and cybersecurity, from reviewing contract provisions to creating companywide privacy policies and evaluating regulatory compliance; defending government or civil actions involving a wide range of regulatory schemes; and counseling on privacy or data breach incidents.

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Higher Education

Providing comprehensive service to higher education clients, including strategic IP advice on academic research as a funding source, determining which innovations to focus on, obtaining patent protection, commercializing inventions and advancements, technology licensing, patent litigation, and portfolio management.

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Experience

  • Assisted a large East Coast biopharmaceutical company in obtaining patent protection covering a biological product that is subject to a Biologics License Application (BLA). The potential market value of the patented product is over $1 billion.
  • When a competing financial services firm adopted a name similar to our client Ariel Investments, LLC, our team sought to vigorously defend the millions of dollars and decades spent by our client to build their name and industry reputation. After nearly two years of litigation culminating in a trial, a federal judge ruled in favor of our client, finding a likelihood of confusion and awarding a permanent injunction against the infringing competitor.
  • Represented a major diagnostic, medical device, nutrition, and generic drug company in obtaining significant patent protection covering a number of commercially important products. We also assisted in documenting our client’s “freedom to operate” or to develop, make, and market said products.
  • Advised a leading international manufacturer of residential and commercial water heaters and boilers in the purchase of a Texas-based water filter manufacturer for $87 million in cash on a debt/cash-free basis. We conducted intellectual property due diligence and agreement drafting. The acquisition was a significant step in our client’s strategy to expand its core product offerings to new geographic areas.
  • Represented a Petitioner before both the PTAB and Federal Circuit Court of Appeals in invalidating all of the claims of a competitor’s patent in an IPR proceeding. The representation was notable for three reasons: 1) The Federal Circuit decision is frequently cited as one of the first decisions in which the Federal Circuit applied the Supreme Court decision in In re Cuozzo; 2) It is the first case in which the PTAB  reversed itself on remand in favor of a Petitioner to find claims invalid; 3) The PTAB ruled in its institution decision that the doctrine of assignor estoppel does not apply in IPR proceedings. The USPTO designated the PTAB’s decision in this regard as Precedential. It is only the ninth IPR decision to be so designated. The decision becoming Precedential confirms that the PTAB will permit an assignor who otherwise could not challenge the validity of a patent in a proceeding in the district court to do so before the PTAB.

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