Practice Areas & Industries: Carlton Fields, P.A.

Practice Group Overview

Patent, Trademark, Copyright, Computer

In today's highly technological (and relentlessly competitive) world, protection of intellectual property is critical to the survival of every business. Intellectual property represents the very essence of a business -- its ideas, writings, product names, problem-solving techniques, unique manufacturing processes, trademarks, trade secrets, patents, copyrights, marketing strategies, list of customers, and on and on. It is anything and everything that gives a company its competitive edge and drives its productivity. As such, it is the company's most valuable asset, requiring legal assistance in creating, managing, and protecting it.

Carlton Fields is a recognized leader in intellectual property law. We offer our clients comprehensive, in-depth services for creating, maintaining, managing, licensing, protecting, and enforcing intellectual property rights. These services include:

• Intellectual Property Audit - a comprehensive business review to identify intellectual property assets, detect weaknesses in present rights to those assets, and assist in identifying early steps to be taken to perfect those interests. We furnish specific recommendations for copyrights, patents, licenses, trademarks, trade names, non-disclosure agreements, non-competition agreements, and internal policies.
• Assist clients in acquiring, perfecting, and transferring rights to intellectual property. We prepare all necessary federal, state, and international registrations of copyrights, patents, trademarks, service marks, and other intellectual property rights. We also prepare assignments, licenses, or other forms of transfer for the acquisition or sale of rights in intellectual property.
• Prepare ownership and non-disclosure arrangements with employees and independent contractors.
• Advise on intellectual property procedures and policies ¿ including policies for surveillance of potential infringing uses.
• Advise on issues of technology management. This involves the creation and protection of intellectual property in computer software and other high technology industries.
• Represent clients in infringement and unfair competition disputes. This may involve trying to resolve disputes over the enforcement and defense of intellectual property rights and unfair competition through negotiation, counseling, demand letters, and settlement. It may also involve vigorously prosecuting or defending lawsuits involving copyrights, patents, trademarks, trade dress, trade names, trade secrets, non-competition agreements, non-disclosure agreements, misappropriation, unfair trade practices, antitrust, trade libel, and related claims.
• Prosecute applications for patents and trademarks and other representations of clients before the United States Patent and Trademark Office and international patent and trademark offices.

Because our lawyers include experienced software designers and programmers, we regularly participate in cutting-edge technology issues relating to commerce on the Internet, computer law, licensing, software publishing and copyright protection, system security, and reverse-engineering.

REPRESENTATIVE MATTERS

Representative List Of Recent Transactional Matters

• Obtained, maintained, and licensed patents for a leading United States manufacturer of automotive air bag technology.
• Filed, on one day, ninety-seven Internet and business method patent applications for a leading supply chain management company, all prepared on an expedited basis with little notice.
• Negotiated and drafted computer licensing and technical support agreements for a national developer of network management software.
• Drafted purchase and licensing agreements for custom software developed by the engineering department of a nationally recognized educational institution.
• Prepared and maintained extensive domestic and international trademark portfolios for a major beverage manufacturer, a major boat manufacturer, and other companies.
• Prepared applications for trademarks and service marks for the name, player uniforms, and logotypes of a Major League Baseball Franchise.

Representative List Of Recent Litigation Matters

• This last term, our lawyers prepared an amicus curiae brief to the U.S. Supreme Court for the Festo v.Shoketsu case. We took the position for a major professional association that, where a product is accused of infringing a patent, and is essentially equivalent but not quite literally within the specific language of the patent, the determination of infringement of the product is based upon whether it would have been foreseeable by the inventor at the time of patenting that someone might substitute that equivalent structure for the structure set forth in the patent. Although neither party to the case mentioned this concept, and our brief was the only one to advocate this "forseeability test," the Court adopted this test as the rule of law.
• Obtained dismissal of internet-related patent infringement actions brought by a plaintiff against seven major supermarket chains.
• Obtained a record verdict and award of attorney fees while representing a major music licensing organization in numerous copyright enforcement actions against infringers.
• Successfully defended an international telecommunications corporation against claims of misappropriation of trade secrets and defamation of title to patent rights including a two and 1/2 week jury trial.
• Successfully defended a publisher of computer software and asserted a counterclaim against the author, obtaining summary judgment declaring that publisher had exclusive computer software rights to all of author's works.
• Successfully defended medical equipment manufacturers and distributors against patent infringement claims.
• Successfully obtained an order of contempt in favor of a publicly-held electronics manufacturer against a competitor who was sued for patent and trademark infringement.
• Obtained injunctive relief for a national appliance and furniture retailer to prevent the unauthorized use of its service mark.
• Obtained an advantageous settlement of a computer software reverse engineering dispute involving claims of copyright infringement, misappropriation of trade secrets, and breach of contract.
• Successfully refuted allegations of trade secret misappropriation without litigation on behalf of an advanced technology corporation that manufactures contact image sensors for scanners, copiers, and facsimile machines.
• Successfully represented a National Hockey League franchise in a service mark cancellation proceeding before the United States Patent and Trademark Appeals Board.
• Obtained injunctive relief and an ex parte order for a national hair products company directing the search and seizure by the U.S. Marshal of all counterfeit products bearing the protected trademark.