IP Counseling and Licensing
We provide clients with extensive counseling in the areas of intellectual property development, protection and licensing. We advise our clients on the best strategies to protect their key technology developments, to evaluate litigation risks and, where possible, to avoid conflicts with the intellectual property rights of others.
The extensive technical and legal experience of our attorneys, coupled with our vast experience in intellectual property transactions throughout the world, allows us to better understand the intellectual property problems encountered by companies in today’s environment. In addition, some of our attorneys have worked in-house at technology companies before coming to the firm. Our clients benefit from this first-hand experience with the business and legal problems that confront today’s high technology companies.
Patents are assets. Our attorneys routinely evaluate the patent portfolios of our clients and their competitors to identify strengths and weaknesses therein, and to realize maximum opportunity through the structure, protection and deployment of their portfolios. We also help companies review their licensing opportunities in a broader business context that can result in more than just an extra revenue stream. We also help clients consider and address individual and intertwined technology environments, external relationships, applications, developments and the intellectual property rights and contractual obligations of all involved parties.
Outsourcing is an attractive option for businesses looking to increase efficiency, reduce operational costs or direct its strategic focus towards improving core competencies. Outsourcing service providers offer an opportunity to redeploy resources and capital without sacrificing service, technology or quality of processes. Yet businesses turning over data and processes to third-party vendors also lose a degree of control over their enterprise and sensitive information. We understand the complexities of outsourcing arrangements and help clients to not only negotiate secure contracts, but also coordinate internal resources, policies and procedures to ensure proper governance, compliance and due diligence across all facets of the vendor relationship.
Patent Prosecution Programs
In the patent area, we help clients develop patent prosecution programs designed to cover the client’s core product areas. These programs also assist the client in obtaining patents for use in cross-licensing negotiations or generating license revenue on products marketed by others. At a time when many companies are aggressively exploiting their patent portfolios through industry licensing campaigns, our firm strives to help clients obtain the best possible license deal through negotiation and if necessary, litigation.
Our extensive experience with intellectual property issues overseas, particularly in Europe and Japan, enables us to advise our clients on patent issues in a global context. We can call on a worldwide network of trusted associates to provide us with analysis of intellectual property issues in specific countries. Many of our attorneys have been involved in licensing negotiations for worldwide rights in a wide variety of technologies.
When litigation is threatened, we can provide timely and thorough opinions on issues of patent validity, infringement and enforceability. We also advise clients on procedures such as mini-trial, arbitration and mediation, all of which can avoid costly, time-consuming court litigation. In addition, we provide due diligence reviews of the whole range of intellectual property rights in connection with mergers and acquisitions.
- Alternative Energy
- Art, Museum and Cultural Property
- Chemicals, Petrochemicals and Refining
- Clean Technology
- Energy Technology
- Health Care
- Hospitality and Hotels
- Legislative Advocacy
- Life Sciences
- Liquefied Natural Gas (LNG)
- Manufacturing and Sales
- Maritime and Offshore Drilling
- Oil and Gas
- Real Estate
- Solar Energy
- Technology and Emerging Companies
- Venture Capital
- Wind Energy
- Copyright Litigation
- Data Privacy and Cybersecurity
- Intellectual Property and Technology
- Patent Litigation
- Patent Prosecution
- Patent Trial and Appeal Board Proceedings
- Securing and Maintaining Trademarks and Brand Names
- Trade Secret/Trade Dress Litigation
- Trade Secrets/Trade Dress
- Trademark Proceedings and Litigation
Recognized as a Leading Prosecution & Strategy Trademark practice in New York, 2017 WTR 1000
Recognized as a Leading Prosecution & Strategy Trademark practice in Washington, DC, 2017 WTR 1000
Recognized as a Recommended Bio/Life Sciences Practice in the United States, IP Stars
Recognized as a Recommended Copyright Practice in the United States, IP Stars
Recognized as a Highly Recommended Copyright Practice in New York, IP Stars
- 2/9/2017Andrews Kurth Kenyon Intellectual Property Partner James Rosini Recognized in 2017 Client Choice Awards
- Samsung v. Apple – The Supreme Court Limits Damages in Design Patent CasesDecember 19, 2016
- Copyright Office Promulgates New Regulations for Designation of Registered Agent Under the Digital Millennium Copyright ActNovember 10, 2016
- New York Proposes First State Cybersecurity Regulations for Financial Services Companies; Federal Agencies Push for Enhanced Standards to Prevent “Cyber Contagion”November 4, 2016
- DOJ and SEC Find Advance Due Diligence and Robust Compliance Program Shield Purchasing Company in FCPA-Stained TransactionOctober 3, 2016