Overview
Whether you are seeking patentability of break-through technology, protecting an established brand with a trademark registration, or acquiring advanced computer technology, we have the experience necessary to help you define and protect your intellectual property rights in a wide range of technology. The intangible assets of innovation—intellectual property—are becoming more common and more valuable as innovation continues progressing with extraordinary speed. Our attorneys are positioned to guide you through the dynamic process of keeping your intellectual property protection in alignment with your business objectives to leverage the value of your intellectual property assets.
Intellectual Property Transactions
Our corporate attorneys provide advice to clients in a wide variety of issues related to the acquisition, divestiture, and protection of intellectual property and technology assets. We represent clients throughout the business lifecycle, from startup business to international organizations. Our practice involves drafting and reviewing contracts such as licenses, hosting and development agreements, joint venture arrangements, confidentiality and non-disclosure agreements, as well as manufacturing and distributing agreements. We also counsel our clients to identify and evaluate the intellectual property rights and technology assets in connection with mergers, acquisitions, leveraged buyouts, venture capital investments, debt financing transactions and other corporate transactions.
Patents
Hill Ward Henderson is well versed in securing domestic and foreign patent rights. We perform patentability searches, render patentability opinions, prosecute patents, advise clients on patent protection and portfolio management, determine ownership of patent rights, perform infringement analysis, provide infringement and validity opinions, and evaluate the patent rights of our clients' competitors.
Trademarks
Our trademark attorneys assist clients with a full range of securing trademark rights, from initial selection of a mark through the completion of administrative proceedings in the United States Patent and Trademark Office, and beyond. We evaluate proposed marks, perform clearance searches and opinions, prosecute trademark applications, manage domestic and foreign trademark portfolios, draft licensing and related agreements, and counsel clients on the proper management and policing policies of their trademark rights.
Copyrights
Copyright law protects works of authorship, such as music, audiovisual works, architectural designs, books, photography, software, and many others. Our attorneys counsel clients in the protection and enforcement of copyright rights in these creative works. We also assist clients with licensing agreements and other arrangements for the commercialization of creative rights.
Software and Technology
Our attorneys are experienced in legal matters governing software development and transfer, cloud computing, e-commerce, hosting, domain name protection, and many other IT contracts. We work closely with clients to structure customized solutions in view of our client’s technology position and needs, and we negotiate and prepare a wide variety of legal documents to protect and commercialize our client’s technology.
Licensing Agreements
We have assisted clients with forming numerous strategic alliances for the commercialization of intellectual property. Whether through licensing arrangements, joint ventures, or similar vehicles, we have assisted licensors and licensees of patent, trademark, copyright, trade secret, know-how, and other intangible assets.
Technology Transactions
We provide comprehensive assistance and support in corporate transactions involving intellectual property and technology assets. We perform due diligence on transferred assets, evaluate the intellectual property assets and the portfolios subject to the transfer, and assist clients with structuring and negotiating intellectual property transactions. We have extensive experience with mergers, acquisitions, leveraged buyouts, venture capital investments, debt financing transactions, and other corporate transactions.
Trade Secrets
In this age of information and big data, our attorneys understand the importance of proprietary and confidential information for business success. Throughout our representations, we work closely with clients to develop employment agreements, consulting and confidentiality agreements, and other security measures needed for clients to protect their sensitive information, and to leverage it to gain a competitive advantage.
Employment-Related Issues
Employment agreements and restrictive covenants are important tools for securing and enforcing intellectual property rights. Our attorneys counsel clients on establishing and managing the employment procedures needed to identify and protect intellectual property assets. Examples of these measures include invention disclosure and assignment agreements, confidentiality agreements, and non-compete agreements.
Privacy and Data Security
We counsel clients on a variety of privacy and data security matters in a number of industries. We work closely with clients to establish privacy and data procedures, and we prepare related agreements, documents, and policies in support of these procedures. Examples include terms of use and privacy policies for websites, cloud computing agreements, data sharing and licensing agreements, and many others.
Intellectual Property Litigation
Our litigation attorneys have represented clients in all aspects of enforcement proceedings involving intellectual property rights. We have experience in state and federal infringement suits, administrative proceeding before the Trademark Trial and Appeal Board, Inter Party Review proceedings before the Patent Trial and Appeal Board, arbitration proceedings, and domain name disputes before the ICANN (Internet Corporation for Assigned Names and Numbers). We have represented clients in trademark, trade dress, copyright, and patent infringement cases, trade secret misappropriation, and false advertising litigation, both before and after suit is filed.
We have served as primary and local counsel in intellectual property matters for clients ranging from industry giants to local businesses. The breadth and depth of experience in our litigation department allows us to assemble a team that can efficiently and effectively resolve both core intellectual property disputes, as well as the related claims, such as unfair competition and antitrust, that often accompany them.
Experience
Patents
- Represent multiple medical device manufacturers in securing, maintaining, and enforcing patent rights.
- Performed patent clearance and opinion work for medical, energy, and construction clients.
- Represent a fuel injection remanufacturer in securing, maintaining, and monetizing patent assets.
- Represent a construction component manufacturer in securing and maintaining patent rights.
- Represented a provider of radio-controlled flying toys in securing and maintaining patent rights.
- Represented a provider of an electronic signature platform in securing patent rights.
Trademarks
- Represent a public insurance company in securing, maintaining, and enforcing trademark rights.
- Represent restaurant operators and food service providers in securing and maintaining trademark rights.
- Represent a precision agriculture company in securing and maintaining trademark rights.
Copyrights
- Represent multiple home builders in securing copyright right in architectural works.
- Represent multiple software providers in registering copyright rights in software.
Software and Technology
- Represented a regional bank in negotiating rights to core processing software.
- Represented a public automotive dealer in negotiating rights to an enterprise management platform.
- Represented an international digital communications provider in negotiating favorable terms for an enterprise management software platform.
- Represented an independent renewable energy service provider in negotiating rights to power plant management software.
Licensing Agreements
- Represent an international provider of metrology equipment in licensing patent rights.
- Represented a cold-chain logistics company in licensing patent assets.
Technology Transactions
- The Data Dimensions, LLC sale to Thompson Street Capital Partners.
- Medical Neurogenetics, LLC acquisition by LabCorp.
- Sale of PowerDMS.
- BRP acquisition of Millennial.
- BRP acquisition of Effective Coverage (2021)
- Superior Group of Companies acquisition of BAMKO.
- Sale of MEP APR, LLC (2017)
Intellectual Property Litigation
- Represented a provider of electronic cigarettes in trademark enforcement actions.
- Represent a national restaurant franchise in trademark enforcement actions.
- Represented an investor in reaching a successful settlement after a failed software development project.
