Practice Areas & Industries: Baker & Daniels LLP

Practice/Industry Group Overview

The level of competition in U.S. and international business increases daily, and winners and losers are often determined by the quality and scope of each competitor's intellectual property rights. Our goal is to have a positive effect on the value of a client's business and competitive position. We help translate technical and often complex issues into comprehensive and sound business decisions.

How We Help

A substantial component of our work for clients lies in the creation of commercial property rights, as well as the protection and leverage of rights in the patent, trademark, copyright and trade secret area.

Some clients maintain sophisticated in-house intellectual property programs. For those clients we serve as "partners," working closely with their inventors, counsel and marketing personnel. Many of our attorneys have significant corporate expertise, which helps to ease this partnership, and experience in guiding clients of all sizes through the unfamiliar realm of U.S. and international intellectual property laws.

Our client service spans the globe as we represent regional, national and international companies. Where necessary, we rely on the strong relationships built with associates in many foreign countries to enhance our service to clients around the world. And, as the exclusive Indiana member of Lex Mundi, a global association of more than 130 independent law firms, we have access to recognized and respected intellectual property attorneys in virtually every country.

Protecting Your Business

Our practice spans the full spectrum of U.S. and international intellectual property law, such as:

• Providing legal opinions;
• Preparing and prosecuting patent, trademark and copyright applications;
• Maintaining client portfolios and overseeing maintenance fees, renewals, etc.;
• Helping avoid infringement;
• Assisting in intellectual property transfers, as "stand-alone" transfers or more general business transactions;
• Drafting and negotiating patent, trademark and copyright license agreements;
• Creating corporate research and development agreements;
• Preparing employment agreements for employees with access to sensitive or competitive information; and
• Negotiating and documenting computer software agreements.

Services Available

Advertising Law

Our advertising practice helps clients manage issues in advertising, trade regulation, sweepstakes, and related areas of law. We advise clients on: compliance with Federal Trade Commission and various state regulations; unfair advertising and infringement concerns; structuring and managing sweepstakes and contests; telemarketing sales rules; email SPAM laws; product safety; warranties; credit; and negotiation of promotional contracts, among other issues.

Baker & Daniels, with its Washington, D.C. office, routinely communications with FTC attorneys and is well-equipped to obtain FTC advice and opinions when appropriate.

Copyrights

• Registrations, including computer software and automated databases;
• Validity and infringement opinions;
• Licensing; and
• Litigation and dispute resolution.

Information Law and Privacy Law

The recent growth of the Internet and other technology has led to a number of new legal issues that businesses must address. Our team recognizes that these issues span many areas of the law, including intellectual property law, corporate law, labor law, advertising law, among others. We work closely with clients to address issues such as transfer, use and acquisition of technology and maintenance of information systems.

We have intellectual property, business, and labor attorneys to address all of the legal issues that our clients may face related to the use of information technology.

We counsel software and hardware users and developers in negotiating software agreements. We help clients avoid patent infringement and help to reduce risk from loss or interruption of information systems. We draft outsourcing and other computer services agreements that fit the various needs of our clients.

Development of the Internet, intranet systems, voicemail and e-mail systems gives rise to new issues related to technology delivery, privacy, confidentiality and business issues. We advise clients on development of policies and guidelines surrounding related to electronic communications and security; customer and employee information privacy; Internet service provider agreements; advertising, and promotions; domain name registrations and disputes, including cybersquatting; copyright infringement; and online liability and e-commerce issues.

In the area of privacy law, we have attorneys experienced in the Financial Privacy Rule (GLB), the Children's Online Privacy Protection Act, privacy of health information (HIPPA), and international data transfer related to the EU Privacy Directive, the Canadian Privacy Act, and other international considerations. We communicate regularly with the U.S. Department of Commerce regarding the privacy Safe Harbor program, and are able to help clients certify to this program or others, including commercial seal programs like TRUSTe and BBBOnline. Whether a client is in need of a simple online privacy policy or needs to deal with a complex issue of international data transfer, Baker & Daniel's professionals have the experience necessary to address the issues.

A more detailed list of some of the information law and privacy law services we provide includes:

• Patent and copyright protection of software products;
• Internet service and web site agreements and counseling;
• Software licensing, marketing and distribution, electronic commerce, software; development and maintenance, source code escrow and computer system acquisition agreements;
• Copyright and trade secret protection for data and information technology;
• Risk mitigation counseling for Internet and Year 2000 software;
• Corporate computer, telecommunication and internet policies and counseling;
• Trade secret protection;
• U.S. and foreign technology transfer;
• Licensing;
• Ownership dispute resolution and litigation;
• Employment and marketing and distribution agreements;
• In-house and invention management and procedures; and
• Outside invention submission management and procedures.

Litigation

When the situation warrants, we protect our clients' rights through patent, trademark and related litigation. Through the expertise of our intellectual property team members, and members of the firm's litigation team, we have the background in litigation and dispute resolution to provide clients with sound advice and, where appropriate, aggressive litigation.

Representation of clients in dispute relates to a wide range of issues, including patent, trademark and copyright infringement, false advertising, trademark dilution, trade secret misappropriation, right of publicity violations, and a host of software and technology related disputes. As trademark law continues to drive the developing law of the Internet, our practice has expanded to include Internet domain name disputes.

We also represent clients in disputes with the U.S. Patent and Trademark Office, including trademark oppositions and cancellations and patent interferences.

Patents

• U.S. and foreign patenting;
• Novelty, infringement, validity and state of the art searches;
• Opinions on patentability, validity, infringement, right-to-use and "design-around" elements;
• Licensing and technology transfer;
• Due diligence studies in conjunction with mergers and acquisitions;
• Litigation and dispute resolution; and
• Confidentiality, license, employment, noncompetition, consultation and development agreements.

Pharmaceutical

Pharmaceutical and medical-device companies invest in R&D at rates far higher than those of American business generally. We know how to protect intellectual property rights so that ideas today can help patients tomorrow. Our expertise extends to a variety of applied sciences, including electronic and mechanical technologies, chemistry, and computer science.

Trademarks

• Trademark and service mark selection;
• State, federal and international searches and registrations;
• Licensing, infringement, trade dress and unfair competition litigation;
• Oppositions and cancellation proceedings;
• Validity and infringement opinions;
• Unfair competition counseling; and
• Internet domain name clearance, registration and disputes.