Sonnenschein Nath & Rosenthal LLP

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Intellectual Property & Technology

Sonnenschein manages some of the largest and best-known technology portfolios, brand identities and copyright works for high-profile clients across the globe. With our full suite of legal services related to the development, procurement, exploitation, use and protection of intellectual property, we regularly represent the inventors, creators, owners, licensees and users of patents, trademarks, copyrights and other IP. Our Intellectual Property & Technology Practice includes more than 100 lawyers across the firm practicing in this critical area. Known for our strategic and integrated approach in counseling and transactions, members of our practice frequently team with Sonnenschein attorneys from other practice areas to benefit clients with our complete range of expertise.

Our licensed patent attorneys and agents have technical expertise in electrical engineering and semiconductors; computer science and cryptography; telecommunications; aerospace, plastics and mechanical engineering; and chemistry, pharmaceutical, biotechnology and medical devices. Several lawyers have Ph.D.s in fields such as botany, molecular genetics and cell biology and have prosecuted patent applications domestically and internationally.

In addition to this vast array of credentialed attorneys in numerous academic disciplines, is an equally impressive number of highly experienced business and litigation attorneys skilled at guiding both new and established businesses in developing and implementing IP policies and strategies, counseling clients on brand identification and protection, and developing, procuring, enforcing, defending and exploiting the full range of IP, privacy, publicity and First Amendment rights.

For disputes concerning IP rights, we have experienced litigators whose practice focuses on litigating all aspects of intellectual property law in the state and federal courts and administrative tribunals. We have handled significant and landmark proceedings concerning intellectual property matters before state and federal trial courts throughout the U.S., numerous appellate courts (including the U.S. Court of Appeals for the Federal Circuit), the International Trade Commission (ITC), the U.S. Court of Federal Claims and the U.S. Patent and Trademark Office. Our ranks include former law clerks and examiners who have worked within many of these courts and agencies.

To meet the full range of our clients’ legal needs, the members of Sonnenschein’s Intellectual Property & Technology Practice regularly join forces with other Sonnenschein attorneys whose practices may enhance IP&T counsel, such as Internet security, franchising, international trade and distribution, antitrust, labor and employment (including employment benefits) and taxation. Our multidisciplinary team approach allows us to provide our clients with a broader perspective on how intellectual property issues affect key legal and business decisions.

Sonnenschein attorneys are strategic partners with their business clients. Instead of just filing documents, Sonnenschein attorneys confer with client representatives on issues such as whether a particular innovation or patent is appropriate or is the most cost-effective alternative or whether a trademark should be filed as formatted or in a broader form/format that might provide both broader and less expensive protection.

Capabilities and Experience

Sonnenschein has significant experience representing companies and individuals involved in the development, production, procurement, advancement and exploitation of technology, information, brands and artistic creations. Our clients include established companies with teams of researchers, as well as start-ups and emerging growth companies on the cutting edge of technology. Our practice and our experience reflect the reality that—in today's technology-driven global economy—intellectual property issues command growing importance and attention for companies in virtually every type of business.

Our capabilities and experience in intellectual property matters fall generally within the following broad categories:

* Strategic Planning, Prosecution and Implementation Services

Sonnenschein's Intellectual Property & Technology attorneys recognize that IP policies and strategies do not exist for their own sake. Rather, they must be driven by the client’s business and product objectives. Based on those objectives, we assist our clients in formulating plans, policies and strategies that create and preserve value for their clients, give the client a competitive edge and convey to customers the desired image.

Licensed patent attorneys draw upon their technical backgrounds in taking invention disclosures and preparing and prosecuting patent applications. Rather than mechanically filing what we are given, we help our clients determine whether and what kind of protection is most appropriate, given the client’s business and IP strategies and budget.

We prosecute patents with a trained eye toward withstanding the challenges they may later face in licensing negotiations or litigation. We handle patent prosecution in the U.S. and oversee prosecution in foreign patent offices through our worldwide network of patent counsel. We are skilled at patent portfolio management, helping clients expand or cull their portfolios to achieve a balance that will help them develop and leverage their holdings. We provide carefully crafted opinions on the patentability of our clients' inventions and analyzing our clients’ rights to use their technical innovations without charges of patent infringement.

We routinely assist clients with the selection and clearance of new brands and logos as trademarks, but we do more than search, file and prosecute. We assist clients in a global (where appropriate) strategy of brand development and protection, prepare opinions on availability and counsel clients on nuances of use and notice and handle the preparation and prosecution of applications for registration of trademarks in the U.S. and supervise protection programs on a worldwide basis using our network of foreign counsel. Our expertise extends to copyright clearance and registration for artistic, architectural, software, audiovisual (such as computer games) and other types of works.

We help clients develop their Internet presence and marketing campaigns, preparing Web site privacy policies, terms of use, e-mail programs and customer service operations. For online and offline advertising campaigns, we work with clients on copy clearance, sweepstakes, promotions and contests. We also advise clients on protection of their valuable trade secrets through internal and external policies and procedures.

* Licensing and Transactional Matters

Exploitation of intellectual property goes beyond the owners' direct use and includes licensing, joint marketing, joint development, publishing, distribution and other activities. Sonnenschein's intellectual property lawyers have worked with numerous clients on the structure, negotiation, development, drafting and implementation of diverse licensing arrangements, joint ventures, collaborations, acquisitions, dispositions and other contractual agreements. We work to achieve creative solutions addressing non-competition and exclusivity issues, employee and independent contractor relationships, financing and sales transactions, multinational alternative dispute resolution, cross licensing, coexistence agreements and much more.

We have extensive experience with merchandise licensing programs for clients who wish to expand the reach of their brands, both domestically and internationally. Our lawyers have been in the forefront of the burgeoning field of computer law―several of our patent attorneys have technical backgrounds in computer science―and we have handled all aspects of hardware and software design, development, testing, production, licensing, maintenance, ERP, escrow and related contracts. Our representations run the gamut of such Internet-related deals as Web site development and hosting, ASP (software as a service) and exchange agreements, affiliate agreements, e-mail marketing campaigns and other agreements for monetizing Web traffic. We have handled the due diligence and other intellectual property aspects of major loans, asset sales, and other transactions in which intellectual property may serve as collateral or be transferred and/or licensed.

In addition, our intellectual property lawyers handle publishing deals, production of documentaries and television series, model and talent agreements, and other rights agreements for clients in the entertainment, communications and new media fields. Our software savvy attorneys understand the temptation of information systems directors to cut corners on software licenses compliance, but few things are more embarrassing than adverse publicity about a company’s use of software without adequate license payments. We routinely assist our clients through the often complex issues that arise when the software police come knocking. Because we have helped so many who have had compliance problems, we know how to assist clients in formulating and implementing software compliance policies that work.

* Infringement and Other Litigation

Sonnenschein's experience in patent, trademark, copyright and trade secret infringement litigation and other types of litigation involving intellectual property includes developing and pursuing policing programs, pursuing infringers and counterfeiters, defending infringement claims and actions and prosecuting and defending trade secret theft and unfair competition actions. Our clients have enjoyed our successful pursuit of their interests through temporary restraining orders, preliminary injunctions, Markman hearings, and jury and bench trials. We also have extensive experience in alternative dispute resolution, mediations and arbitrations.

Litigation takes us into state and federal courts across the country. Our experienced patent litigators have handled major patent cases before the International Trade Commission (ITC) and significant appeals in the U.S. Court of Appeals for the Federal Circuit. We also handle complex and technical procedures in the U.S. Patent and Trademark Office, such as patent interferences, strategic reexaminations, trademark oppositions and cancellation proceedings. Our lawyers actively address domain name disputes under the Anticybersquatting Consumer Protection Act and the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Policy (UDRP). We also serve as panelists deciding multinational trademark disputes over domain names under the UDRP.

* International Activities

Sonnenschein's Intellectual Property & Technology Practice includes an active and extensive international trademark and patent practice. The firm has established a network of foreign counsel—local intellectual property practitioners in countries around the world—who provide vast and wide-ranging expertise in the laws of the countries in which the firm's clients conduct business, source manufacturing, distribute products or chase infringements and counterfeits. This network enables us to combine our familiarity with our clients' needs with our foreign counsels' practical knowledge of the local laws in their respective countries. As a result, we are able to oversee and direct the work of our foreign counsel, in prosecution, counseling, transactions and disputes, in an effective and comprehensive manner.

In addition to patents and trademarks, our international intellectual property practice advises clients on copyrights, advertising, sweepstakes, contests and promotions, franchising and distribution issues, trade secrets, encryption and technology transfer issues, packaging and labeling, money transfers and other international issues. We have the benefit of consulting with other members of the firm with additional international experience. Our international efforts have serviced domestic companies expanding to new territories outside of the U.S. and clients based in countries outside the U.S. seeking to enter the lucrative U.S. market.

Recognizing China’s explosive economic growth, our lawyers have become well versed in the challenges of protecting intellectual property rights in China. The U.S. Patent and Trademark Office uses Sonnenschein attorneys as speakers in its “China Road Show.”

Sonnenschein Nath & Rosenthal LLP
1301 K St NW - #600 E Tower
Washington DC 20005-3364
Tel: 202 408-6400
Fax: 202 408-6399