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Practice/Industry Group Overview
Fennemore Craig's intellectual property practice continues to grow and thrive as companies add intellectual property assets to their portfolios. Fennemore Craig attorneys advise clients on procuring and protecting intellectual property rights, patents, copyrights and trademarks; protecting trade secrets; licensing intellectual property rights; joint technology development; Internet and e-commerce issues; enforcing intellectual property rights; and branding strategies. The intellectual property practice group includes attorneys with business degrees, as well as registered patent attorneys with advanced technical degrees and specialized knowledge in a wide variety of technical areas. Representative clients span a spectrum, from universities to start-ups to multinational domestic and international businesses in industries such as mining, metallurgy, film coating, geospatial imagery, pharmaceuticals, biotechnology, agriculture, optics, non-destructive testing, electronics, computer software and hardware, and agriculture.
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Services Available
Protection
Our attorneys focus on clients' goals for protecting their intellectual property assets and developing appropriate and effective strategies. In many instances, intellectual property protection can be enhanced by filing for patent protection in the United States and foreign jurisdictions. However, in other instances, seeking patent protection may be inconsistent with a client's overall objectives, such as those regarding cost and public disclosure.
Patents
Our registered patent attorneys have significant experience in both interacting with the U.S. Patent and Trademark Office during patent prosecution and maintaining and protecting patent rights once a U.S. Patent in issued. In addition, we understand the importance of and timing for obtaining foreign patent rights. We also manage the national and international patent portfolios for a number of clients.
Fennemore Craig has one of the largest pharmaceutical and biotechnology patent practices in Arizona, with attorneys handling matters in such diverse areas as genomics, proteomics, immunology, microbiology, gene therapy, vaccine development, drug discovery platforms, medical devices, diagnostic kits, monoclonal antibodies, drug delivery systems, agriculture inventions, cosmetics, nutraceuticals, and methods for treating diseases such as cancer and diabetes. Additionally, we have experience with patent applications in the areas of general mechanical and hydraulic powered machinery; optics; nuclear power systems; radiation detection systems; non-destructive testing systems; firearms; planar and linear sputtering apparatus; power supplies for sputter deposition and film coating systems; high pressure cutting and abrading systems; particle classifiers; sonic nozzle flow meters; ion mobility spectrometers; chemical processes for extractive metallurgy; inorganic chemical compositions and processes; geospatial and radar imagery; path planning; and business methods.
Trade Secrets
Intellectual Property may be protected by preserving it as a trade secret. We help clients by developing strategies and policies to protect and preserve trade secrets. We also work to ensure that intellectual property rights are clearly established with respect to our clients' employees and independent contractors. When employees arrive, it is vital to set forth clearly what intellectual property will belong to the employers. Similarly, when employees leave, it is vital that the business intellectual property assets do not leave with them. We prepare appropriate form agreements, as well as custom drafted documents when circumstances warrant. If disputes do arise, we work on behalf of clients to resolve them through negotiating with or pursuing claims against former employees and their new employers.
Trade Marks
With the emergence of global markets, protecting trademarks and brands has become increasingly important. We help our clients register, maintain and license their trademarks both in the U.S. and around the world. As part of that process, we help clients develop branding strategies and select strong marks. We manage significant worldwide trademark and service mark portfolios for clients, ranging from large multinational companies to start-ups. We also develop Internet and e-commerce policies and guidelines for our clients and counsel on these issues. We plan and implement strategies for domain name acquisition and protection, and advise clients regarding copyright protections and copyright registration.
Protection Strategy
Sometimes clients need help identifying intellectual property that may lack adequate protection. We conduct intellectual property audits or engage in other due diligence to identify such property. Then we work with clients to develop appropriate strategies to protect intellectual property and commercially leverage it. Often, the most significant manner in which intellectual property and other business assets can be protected is by avoiding legal entanglements with others. It is very important to determine the intellectual property rights owned by others. Where competitors have patented certain inventions, we determine the extent and breadth of third party rights and advise our clients about appropriate design-around or other non-infringement strategies.
Commercial Use
Fennemore Craig regularly advises clients on acquiring rights from others and maximizing the value of existing intellectual property. We have regularly advised clients on how best to protect their intellectual property and financial interests in joint development projects based on a clear understanding of the clients' objectives. We have extensive experience in negotiating and preparing licensing and distribution agreements, both in the U.S. and around the world. We counsel clients on ways in which they can expand their businesses and generate additional revenue, not only by developing new technologies, but also by expanding existing technologies into new product and geographic markets. To develop new technologies and enhance their existing intellectual property assts, our clients frequently need additional capital. We regularly represent clients in negotiating and structuring public offerings, private placements, joint ventures, corporate reorganizations, mergers and acquisitions, product acquisitions and sales, leveraged lease financings, leveraged buyouts and venture capital financing.
Enforcement
We have successfully enforced our clients' intellectual property rights and have defended our clients against attacks from others. We also have considerable experience in resolving intellectual property disputes through negotiation, mediation, settlement or arbitration. Fennemore Craig attorneys have successfully litigated significant intellectual property disputes involving patent and copyright infringement; trade secret misappropriation; trade dress and trademark infringement; nondisclosure and non-competition agreements; computer hardware and software licenses; cyber piracy; domain names; software piracy; false advertising; e-commerce issues; and unfair competition, patent misuse and patent-related antitrust allegations. The stakes in these cases often are high, and necessary legal action often involves requests for preliminary injunction or temporary restraining orders. We have both obtained such injunctive relief and successfully defended against actions seeking to restrain or enjoin our clients. We have the experience to respond swiftly and effectively in this environment, whether in asserting or defending against claims.
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