IP Counseling and Licensing
experiencerAndrews Kurth Kenyon

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Intellectual Property & Technology Powerhouse
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since 1902

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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.

Portfolio Evaluation

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

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.

Global Experience

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.

Litigation Counseling

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.

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