Intellectual Property

Primary Contact

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 140 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

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?

Armed with this knowledge, we create and implement programs that 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:

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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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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Privacy & Data Security

Advising clients on all aspects of privacy and data security, 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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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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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.
  • 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.
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