Intellectual PropertyOverviewIn 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.
Related People Preview Attorney's BiographyThomas is a trademark attorney in the firm’s Intellectual Property Practice Group. His practice focuses on the acquisition, enforcement, and litigation of intellectual property rights, particularly related to trademarks and copyrights, both domestically and internationally.
 Preview Attorney's BiographyClients rely on Ken to help them resolve complex intellectual property and commercial disputes. Drawing on a strong technical background, particularly in the electrical, mechanical and electro-mechanical arts, Ken has successfully litigated patent infringement cases throughout the United States. He has represented clients in all phases of patent litigation and trial preparation.  Preview Attorney's BiographyScott is an experienced intellectual property attorney whose practice focuses on software, electronics, internet, medical device, telecommunications, cloud computing, financial, and semiconductor technologies.  Preview Attorney's BiographyLouise handles U.S. and international trademark clearance, prosecution, maintenance, licensing, due diligence, and enforcement, including opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board. She has particular expertise with respect to trade dress protection and enforcement.  Preview Attorney's BiographyClients look to Brent for help obtaining patent protection for their innovations as well as avoiding infringement of competitors’ products.  Preview Attorney's BiographyChris is a partner focusing his intellectual property practice on domestic and international patent matters relating to mechanical, electro-mechanical, medical, materials science, software, and business method technologies. He also helps clients acquire and enforce United States and foreign trademark rights, copyrights and trade secrets, negotiates intellectual property licenses and technology transfers, and prepares patentability and non-infringement opinions. His work applies strategic planning to intellectual property protection to help clients achieve their business goals.  Preview Attorney's BiographyAleksandra supports the firm’s U.S. and international clientele with intellectual property and other legal matters. She is a seasoned translator and has experience translating English into Japanese and Japanese into English, allowing for ease of communication across for businesses working with the firm on both sides of the Pacific. Aleksandra N. Baker* *Names that appear with an asterisk indicate a Michael Best professional not admitted to practice law.  Preview Attorney's BiographyKevin provides clients in a wide range of technologies with strategic counsel in the areas of procurement and enforcement of their patent portfolios both in the United States and around the world.  Preview Attorney's BiographyAlison is a Patent Scientist who specializes in organic chemistry and general life sciences. She has particular experience in the areas of natural products synthesis, neurochemistry, small molecules, and pharmaceuticals. She assists with preparing and prosecuting patent applications for private companies, universities, and other clients. Alison A. Bayly, Ph.D.* *Names that appear with an asterisk indicate a Michael Best professional not admitted to practice law.
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