Our Intellectual Property Group’s practice areas include:
- Trade Dress
- Trade Secrets
- Unfair Competition
- Computer Technologies
- IP Litigation
- IP Portfolio Management
- M&A Due Diligence
- Lending Due Diligence
A patent provides a powerful business advantage and affords a unique combination of property rights. In the United States, a patent confers the absolute right to exclude others from making, using, offering to sell, or selling an invention. Patents in other countries afford similar rights. This can be of great value for the owner of a patent or pose significant trouble for a competitor.
At Ungaretti & Harris, helping companies and individuals obtain patents, as well as avoiding or designing around competitor patents, is a core part of our practice. Over the years, our attorneys have helped clients obtain hundreds of patents involving many diverse technical areas, including electrical, computer, mechanical, metallurgical, and industrial engineering; business methods; information technology; and others.
Our approach to handling patent matters is quite simple. We understand what our clients have invented and how best to protect it in line with the client’s business goals and objectives. In this regard we help the client determine how intellectual property fits in with and affects the client’s business. We apply our training, knowledge, and experience in a multitude of technical areas to protect our clients’ intellectual property by obtaining patents competitors will respect and avoid. We also help to keep our clients from infringing on the existing patents of others.
Small Improvements, Large Impact
In a mature marketplace, even seemingly small improvements to an existing invention or process can yield intellectual property of great value. For example, when a Midwest manufacturer sought to protect its engineering investment and profit margins from U.S. and foreign producers, our attorneys advised the company’s engineers that small, yet important, improvements to certain components could be protected by patents. The result: patent protection was obtained and our client’s investment and profit margins were preserved and even increased.
Helping Clients Avoid Infringing on Other Patents
An essential focus of our patent practice is to evaluate patent filings worldwide to ensure new or improved products and processes developed by our clients do not infringe on the patent rights of others. Because patent litigation can be expensive and uncertain, we often work with clients during product development or improvement to avoid competitor patents.
Serving Client Needs Internationally
Ungaretti & Harris attorneys also assist clients wanting to obtain and protect their intellectual property around the world. Our firm has attorneys and other professionals concentrating on matters involving the filing and prosecuting of international patent applications. These attorneys and professionals work closely with clients to develop the most effective strategies for filing foreign patents to achieve specific business objectives. This includes attending internal company planning meetings and presenting in-house educational programs on foreign intellectual property actions that could positively or adversely affect patent rights. Our attorneys also have significant experience with the Patent Cooperation Treaty application process. Our experience enables us to effectively lead clients through the foreign patent processes.
Foreign Patent Opposition Matters
In addition to obtaining foreign patents, our intellectual property attorneys have extensive international experience handling foreign patent opposition matters. Various countries, as well as the European Patent Office, have specific procedures for opposing a patent grant. These procedures govern the submission of evidence and briefs in support of, or opposition to, the grant. The procedures include oral hearings before a board or panel in the respective country’s patent office. Our attorneys have experience with each stage of this process, including developing an appropriate plan of action which may involve an objection to the grant of a patent or an appeal of a patent application rejection.
Because many foreign patent offices allow the patentee to amend the claims during the hearing phase, it is essential for companies or individuals to be represented by an attorney who fully understands the technology involved and can quickly assess the ramifications of a particular amendment to the claims. Ungaretti & Harris attorneys have attended patent hearings and have amended claims so as to obtain the client’s desired scope of protection during the defense of a patent grant. With that experience, our attorneys can quickly evaluate whether a proposed amendment is acceptable to our client’s position when opposing the grant of a patent.
Clients Benefit From Our Network of Resources
Our attorneys maintain close relationships with foreign patent attorneys throughout the world. This network, along with our own experience, provides our clients the benefit of having virtually any question or concern regarding foreign patent practice and enforcement answered quickly and cost-effectively. As our clients expand their foreign intellectual property portfolios, this network provides access to resources our clients need. Further, the foreign counsel network we have developed, which includes multiple intellectual property firms and attorneys in most countries, provides clients with the flexibility to choose the counsel best suiting their needs.
Often a company’s goodwill is symbolized by the trademark or service mark it uses to identify its products or services. Factors which establish goodwill and distinguish a business from its competitors include continuity of name and location, a reputation for quality products and service and the perception of the business by its customers. Consumers often rely heavily on trademarks when making their purchasing decisions, making the goodwill of a company one of its most valuable assets.
That is why establishing, maintaining, and protecting symbols of goodwill are important to a company’s success and where Ungaretti & Harris can be a valuable resource. By learning our clients’ businesses, products, and services, our attorneys assist in the selection, clearance, and development of a trademark or service mark and protect that mark through federal, state, and international registrations.
Ungaretti & Harris prepares and files trademark and service mark applications, counsels clients on how to appeal rejections of a particular application, evaluates the registrability of trademarks or service marks and prepares appropriate responses to objections.
We also use technology to “clear” and monitor suggested marks. This clearance procedure can minimize the risks of loss and trademark infringement which may result from the adoption of an unavailable mark.
Once the mark is registered, our attorneys assist clients in enforcing their rights. This often occurs by establishing a policing program for all registered marks. In addition, we have helped clients record their registrations with the Department of Homeland Security (U.S Customs Service) to prevent the importation of counterfeit goods or unauthorized goods bearing the mark. If potential infringement is detected, Ungaretti & Harris attorneys quickly advise clients as to their options and will enforce the clients’ legal rights according to the clients’ business objectives.
As with patents, there are instances when it is desirable to obtain trademark and service mark protection in a foreign country. Our experience in foreign practice and our relationships with foreign associates enables us to assist clients in developing strategies for global mark protection, and subsequently registering and protecting their marks abroad. Our attorneys can also guide the expansion of a trademark program through domestic and foreign merchandising and licensing.
Trade dress protects specific or general features, images, and appearances of products or packaging which distinguish them from those manufactured or sold by others. Trade dress protection covers the size, shape, color or color combinations, texture, labeling, graphics, and scent of the product or packaging and may include the configuration of the product itself. Trade dress is the image of a product or service presented to the market and customers to identify and distinguish the source or origin of the product or service. Generally, to qualify for trade dress protection, the attribute or feature of the product or packaging must be sufficiently non-functional and distinctive and must not be likely to cause confusion with others’ products or packages. The Weber kettle barbecue grill is an example of a well-recognized product and package that Ungaretti & Harris attorneys have protected and enforced. In addition, we constantly review, evaluate, and suggest to our clients new and novel avenues of protection under this developing area of the law to bolster each client’s intellectual property portfolio and competitive advantages.
Unlike trademark and service mark rights, which arise from the actual use of the marks, the rights in a copyrighted work arise when a work is created and fixed in a tangible medium. Ungaretti & Harris attorneys regularly assist clients in protecting their works of authorship. Where appropriate, we may file copyright infringement claims in federal court or take other actions to insure that our clients’ rights are respected. We also defend clients who have been accused of publishing content that infringes on rights of others.
Furthermore, we assist publishers, software developers, authors and others with licensing opportunities. The never-ending evolution of new technologies, combined with frequent judicial and legislative changes in copyright law, necessitates a continual review of U.S. and foreign laws and regulations. Ungaretti & Harris attorneys carefully monitor these developments and counsel clients in a manner which best protects both the copyright owner and the work.
Ungaretti & Harris attorneys have helped clients obtain U.S. and foreign copyright protection for a wide range of works, including:
Our attorneys have further assisted foreign nationals obtain U.S. copyright protection.
Our attorneys routinely advise clients concerning the protection of their intellectual property through the use of trade secret law based, at least in part, on the Uniform Trade Secrets Act. Presently in most states, confidential business or technical information is protected as a trade secret if:
The information is not generally known in the industry,
The information has value in part because it is not generally known, and
The information has been the subject of reasonable efforts to protect its confidentiality.
One is guilty of misappropriating a trade secret if one takes or uses trade secret information without authorization from the owner, or if one receives trade secret information from a third party, but knows or should know the third party is not authorized to disclose the information. The remedy for trade secret misappropriation can include substantial damages and injunctive relief.
Our attorneys are experienced in advising clients about setting up procedures to protect trade secrets including the use of non-compete, non-disclosure, and non-solicitation agreements. We also are experienced in litigating trade secret cases in bench and jury trials.
Ungaretti & Harris attorneys also advise clients on the relative value of trade secret protection versus patent protection. Because a trade secret can be reverse-engineered legally, whereas a patented invention can not, there are occasions when patent protection is more suitable than trade secret protection. Our comprehensive approach to our clients’ intellectual property enables us to advise our clients as to the best course for them according to their unique needs.
Our attorneys are experienced in litigating cases. Principally a matter of state law, unfair competition laws protect competitors from the unlawful conduct of their business rivals. As examples, these laws prohibit interference with business relationships, disparagement, defamation, invasion of privacy, palming off, plagiarism, deceptive trade practices, fraud, misrepresentation, and other related conduct. Additionally, this area includes law relating to the creation and enforcement of non-compete, non-solicitation, and non-disclosure agreements. Many unfair competition issues arise in conjunction with infringement or misappropriation of intellectual property.
Computer technology has profoundly changed the way we conduct business, science, and even our personal lives. Protecting computer technology has never been more important or challenging. Our attorneys have extensive experience with the protection of software, hardware, e-commerce technologies, and Web advancements. We counsel clients, give legal advice, and provide legal opinions on a variety of computer technology issues, including:
General Technology Matters
E-commerce Joint Ventures
Copyright/Patent Clearance and Protection (and Related Litigation)
License Agreements (Incoming and Outgoing)
Software-related Entertainment Law Counseling and Agreements
End User License Agreements
Content License Agreements
Privacy Protection Counselingand Agreements
Linking, Meta Tag, Framing, Spam and Related Matters
The licensing of intellectual property can yield tremendous financial rewards. At Ungaretti & Harris, our attorneys counsel companies and inventors on strategies for licensing their intellectual property, including technology transfers. We prepare and negotiate licenses and technology transfer agreements covering an entire range of domestic and international intellectual property, including trademarks, logos, domain names, product configurations, and indemnification for infringement and product liability claims. Our attorneys have negotiated licenses yielding millions of dollars in royalties for clients.
Our attorneys also are skilled at enforcing licensing and technology agreement rights, through litigation or alternative dispute resolution. We can call upon our international network of licensing attorneys to assist clients who require licensing or technology transfers throughout the world.
INTELLECTUAL PROPERTY LITIGATION
At Ungaretti & Harris, our approach to litigation differs from many other law firms. We prefer to keep our clients out of litigation when we can by identifying potential problems before they result in a lawsuit. However, when disputes cannot be avoided, we vigorously represent our clients through discovery, at trial, in mediation or in settlement negotiations.
Understanding and Preparation
To have success in the courtroom, boardroom and discussions between parties, we believe it is essential to understand a client’s business and goals, as well as all factors involved in disputes and decisions. We recognize the most important asset an attorney can offer a client is good, sound judgment. We combine hard work and sound judgment to help clients choose their battles wisely and to win the battles they choose.
We work with many of the leading trial and jury consultants in the business. We use state of the art technology to support our trial attorneys. And we coach, drill, practice, and hone our trial skills at every opportunity.
We Handle Disputes Across the United States and Abroad
Our litigation practice is international in scope. Ungaretti & Harris attorneys have litigated matters throughout the United States and in many foreign countries. Our experience includes trials in federal and state courts, appeals, arbitrations, and mediations. Our clients primarily include prominent middle-market companies.
INTELLECTUAL PROPERTY PORTFOLIO MANAGEMENT
Ungaretti & Harris’s portfolio management services are designed for companies with both large and small intellectual property portfolios and companies pursuing strategic positioning through development or acquisition in the United States and abroad. Our portfolio management programs are designed to provide an initial evaluation of a company’s or individual’s intellectual property holdings and then, as an ongoing initiative, to help clients identify, protect, police, and enforce their intellectual property.
Our portfolio services are designed to manage the complete scope of a client’s short- and long-term intellectual property needs, including:
Employment and Independent Contractor Agreements
Technology Transfers, Joint Venture and Strategic Alliance Agreements,
Mergers and Acquisitions
International Trade Commission Proceedings
Formal and Informal Monitoring of Industry and Competitors’ Technologies
Our attorneys are creative, aggressive and attentive to cost concerns. For example, Ungaretti & Harris attorneys will often attend strategy meetings with a company’s managers to keep themselves abreast of the client’s changing business environment. In addition, our attorneys design and present in-house seminars for interested clients. Such seminars can be directed to research and development or marketing personnel and will advise them of issues and new avenues of intellectual property protection. Such initiatives demonstrate the added value our attorneys provide. We also help to minimize the risks associated with the launching of new products, processes, and services, and assist in thwarting competitors’ efforts to copy or misappropriate the client’s intellectual property.
M&A DUE DILIGENCE
Ungaretti & Harris attorneys regularly represent both buyers and sellers on intellectual property aspects of mergers and acquisitions. Properly conducted intellectual property due diligence should provide a prospective investor with detailed information about the intellectual property assets that may affect pricing or other key elements of the proposed transaction or, in certain circumstances, even recommend termination of a proposed investment. Ungaretti & Harris performs due diligence, reviews the relevant agreements, and represents clients in negotiating intellectual property terms in these transactions. Our substantial experience across numerous industries and disciplines enables us to obtain excellent results for our clients.
LENDING DUE DILIGENCE
According to recent surveys, intangible assets make up as much as 80 percent of the value of the companies listed in the S&P 500. Ungaretti & Harris attorneys have years of experience counseling the banking industry in lending transactions. It has become an integral part of Ungaretti & Harris’s practice to educate and advise our clients about the value of intellectual property and take all necessary steps to protect our lender’s loans by securing that collateral.
Ungaretti & Harris attorneys regularly represent lenders on intellectual property aspects of lending transactions. Ungaretti & Harris attorneys conduct the necessary intellectual property due diligence to provide lenders with detailed information about the intellectual property collateral that may affect a lending transaction. Then, we properly perfect our client’s interests in these assets at the state level and federal level, through filings with the appropriate patent, trademark, or copyright offices around the world.