Practice Areas & Industries: GrayRobinson, P.A.

 




Intellectual Property & Technology Return to Practice Areas & Industries

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INNOVATION & IP PROTECTION

Companies and individuals seek GrayRobinson's experience and knowledge in intellectual property matters. From start to finish, our attorneys direct clients through the process of obtaining copyrights and trademarks and protecting valuable trade and business secrets. They are also experienced in enforcing rights related to trademark and copyright matters, including copyright and trademark infringement actions. We provide due-diligence, IP audit and freedom-to-operate counseling and opinions.

Our team of intellectual property attorneys includes lawyers registered to practice before the U.S. Patent and Trademark Office and attorneys Board Certified in Intellectual Property Law by the Bar of the State of Florida.

Software

We regularly counsel clients on different mechanisms for protecting their software applications and products.  Whether through copyright, patent, trade secret, licensing, or other method, our lawyers have extensive experience in the technical issues specific to software products.  Our Intellectual Property lawyers have a diverse background, including lawyers with software degrees from Stanford University and the Massachusetts Institute of Technology, possessing hands-on experience as software engineers, who now regularly assist software clients with their legal needs.

Our lawyers are also experienced in performing patentability, right-to-use, infringement, and invalidity studies concerning software and business method related innovations, as well as providing a belts-and-suspenders approach to protecting software applications through copyright, trade dress, trade secret, confidentiality, patent, and other mechanisms.

Patents

Intellectual property, in many cases the most valuable and least protected asset of companies and individuals, consists of several forms of intangible property including copyrights, trademarks, patents, and trade secrets. For business executives and creative individuals, these are vital components of success. Intellectual Property law protects your innovations from unauthorized use and exploitation by third parties, allowing you to fully benefit from what you have created.

Intellectual Property law can be intimidating and confusing without knowledgeable counsel. GrayRobinson's Intellectual Property Practice Group eliminates your headaches by providing a broad range of services to protect and enforce your intellectual property rights.

Companies and individuals seek out GrayRobinson's experience and knowledge in intellectual property matters. From start to finish, our attorneys can direct you through the process of obtaining copyrights and trademarks and protecting valuable trade and business secrets. They are also experienced in enforcing rights related to trademark and copyright matters, including copyright and trademark infringement actions.

For companies or individuals interested in obtaining a registered trademark, the Intellectual Property Law Group can conduct searches to determine whether the desired name or logo is already taken and prepare applications when appropriate. Our attorneys also can provide advice on whether the logo or name is suitable, and whether it would be more appropriate to register a trademark in Florida or with the U.S. Patent and Trademark Office. In addition, the firm prepares copyright applications and assists with registration of copyrights with the U.S. Copyright Office.

In today's high-tech society, trademark and copyright infringement is prevalent on the Internet. It is becoming increasingly common for a company's website content to be stolen or extensively plagiarized by a competitor. Web site content can be protected by copyright law. GrayRobinson can take the steps necessary to protect your intellectual property rights on the Internet.

Our attorneys also provide legal counsel regarding trade secrets, Confidentiality and Non-Disclosure Agreements, Noncompetition Agreements, and Employment Agreements with restrictive covenants related to the protection of your intellectual property. We also prosecute patent applications and engage in patent-related litigation.

Patent Searches

Due Diligence will likely include patent searches. There are various types of patent searches provided by GrayRobinson in supporting clients, with each requiring its own unique process.

GrayRobinson provides guidance and recommendations to its client wishing to patent their ideas or determine if marketing their product will cause them to infringe rights of others. There may be general interest in learning about patents and applications for patents by others within a  technology area of interest. The type of patent search will depend upon the needs of the client and will typically differ based on scope. After preliminary discussions with a client, a patent search may include:

Patentability Search

A patent may be obtained if the invention is useful, new and not obvious to those of ordinary skill in the art to which it pertains. A patentability search is typically conducted to determine if meaningful patent protection is potentially available in support of a marketing or business strategy. The patentability search employs a multitude of databases, including both patent and non-patent databases,  looking for patent references that an Examiner is likely to use in evaluating patentability of claims presented in an application for patent.  Patent references used by the Examiner as prior art may include issued patents, published patent applications, journals and other non-patent literature and made public prior to a filing date of the invention.

Clearance Search

A clearance search is directed locating unexpired patents that may potentially block commercialization of a product or service.  A clearance search, also referred to as an infringement or right to use study, will also locate published patent applications that may be of concerns if issued as patents. The clearance search may result in potentially problematic patents, applications and patent holders to be monitored, and may result in efforts to design around the patent rights identified in the patent, obtaining a license from the patent owner, or obtaining a non-infringement opinion.

Validity Search

A validity search is similar to the patentability search evaluating novelty and non-obviousness, but the evaluation is made on an issued patent or published patent application instead of for a product or process. The validity search may provide support in evaluating the strength of a patent in preparation for enforcement of the patent or when an accused infringer wants to evaluate the validity of the patent being asserted against him. The validity search typically results in both patent and non-patent publications being examined.

State-of-the-Art Search

A state-of-the-art search is typically done to locate potential competitors or known solutions within a given technology. This type of search will generally include patent and non-patent publications searches.

Assignee Search

An assignee search is performed to locate patents and patent applications owned by an entity. This type of search is useful in evaluating a patent portfolio. The patent assets uncovered in such a search may then be rated for licensing or for maintenance decisions, by way of example.

International Patent Protection

There is no international patent that protects an invention throughout the world. A patent application must be filed in each country where patent protection is of interest. A patent application may be filed internationally through a number of avenues including filing in individual countries, filings in regional patent offices or organizations (such as the European Patent Office, the African Regional Industrial Property Organization, the African Intellectual Property Organization) or the Eurasian Patent Office) or filing through treaties such as the Patent Cooperation Treaty (PCT).

Gray Robinson prepares and files PCT applications for its clients and works closely with patent law firms in other countries throughout the world for filing patents whether directly or in specific selected countries for filing through a National Phase Entry of the PCT.

Filing an application through the PCT allows for a single international patent application to be reviewed by a designated patent office for patent protection prior to filing in multiple countries.  The PCT process allows time to intelligently assess which countries are most likely to offer the best sales opportunities, which countries have patent laws affecting their technology and which claim approach is most appropriate for each of the selected countries.

The PCT application process can allow a US applicant to defer having to file in individual countries for up to thirty months while preserving foreign filing rights. The PCT Application is a good way to plan for foreign patent applications without having to immediately decide on the specific countries in which to seek protection. Applicants are given valuable time to determine commercial markets for their invention.  International Search and Preliminary Examination Reports provide insight into a level of patent protection potentially available before having to file in selected countries. Obtaining a favorable patentability opinion can significantly reduce expenses associated with prosecuting foreign applications in the many selected countries.  Further, claims in the PCT application can be amended to potentially avoid having to amend the claims planned for filing in multiple foreign applications.

In addition to National Phase Entry into a selected country, the PCT application may be filed with the European Patent Office, the African Regional Industrial Property Organization, the African Intellectual Property Organization) or the Eurasian Patent Office, as may be appropriate.

Trademark

Intellectual property, in many cases the most valuable and least protected asset of companies and individuals, consists of several forms of intangible property including copyrights, trademarks, patents, and trade secrets. For business executives and creative individuals, these are vital components of success. Intellectual Property law protects your innovations from unauthorized use and exploitation by third parties, allowing you to fully benefit from what you have created.

Intellectual Property law can be intimidating and confusing without knowledgeable counsel. GrayRobinson's Intellectual Property Practice Group eliminates your headaches by providing a broad range of services to protect and enforce your intellectual property rights.

Companies and individuals seek out GrayRobinson's experience and knowledge in intellectual property matters. From start to finish, our attorneys can direct you through the process of obtaining copyrights and trademarks and protecting valuable trade and business secrets. They are also experienced in enforcing rights related to trademark and copyright matters, including copyright and trademark infringement actions.

For companies or individuals interested in obtaining a registered trademark, the Intellectual Property Law Group can conduct searches to determine whether the desired name or logo is already taken and prepare applications when appropriate. Our attorneys also can provide advice on whether the logo or name is suitable, and whether it would be more appropriate to register a trademark in Florida or with the U.S. Patent and Trademark Office. In addition, the firm prepares copyright applications and assists with registration of copyrights with the U.S. Copyright Office.

In today's high-tech society, trademark and copyright infringement is prevalent on the Internet. It is becoming increasingly common for a company's website content to be stolen or extensively plagiarized by a competitor. Web site content can be protected by copyright law. GrayRobinson can take the steps necessary to protect your intellectual property rights on the Internet.

Our attorneys also provide legal counsel regarding trade secrets, Confidentiality and Non-Disclosure Agreements, Noncompetition Agreements, and Employment Agreements with restrictive covenants related to the protection of your intellectual property. We also prosecute patent applications and engage in patent-related litigation. 

Trademark Protection

GrayRobinson’s Intellectual Property practice covers a wide range of services, including Trademark protection and prosecution.  Our international group of attorneys and paralegals has extensive experience that includes trademark applications and registrations, counseling, responding to office actions, conducting surveys and attending conferences with Trademark Examining Attorneys and the Commissioner of Trademarks. Our team of attorneys routinely represent clients in trademark disputes and litigation. Intellectual Property is a global initiative with far reaching consequences.

Applying for Registration

GrayRobinson attorneys have applied for many different types of trademarks. Our experienced attorneys are well versed in the rules of the United States Patent and Trademark Office (USPTO) and our international group of attorneys assist client’s with their registrations around the world.

Unfair Competition and Trade Practices

Through our intimate knowledge of the Lanham Act, we are focused on ensuring our client’s brand and goodwill are protected from false statements, deceptive advertising, and unfair competition and trade practices.  In these instances, we make sure to seek immediate relief in the interest of our clients.  Such action can include preliminary injunctions or restraining orders, which our team has been successful in obtaining.

DISPUTES & LITIGATION

The firm has extensive experience and depth across the full spectrum of intellectual property procurement and enforcement disciplines.  Our attorneys and patent agents have been instrumental in shaping the success of countless clients.  Our dedication to finding the most effective solutions in the context of each client’s specific circumstances renders the firm’s Intellectual Property Practice Group uniquely qualified to assist our clients.

Copyright Infringement

Our lawyers regularly enforce and defend against claims of copyright infringement.  We effectively leverage our Florida based platform to efficiently advocate on behalf of business and content producers.  Our preeminent entertain and media practice, discussed below, regularly represents well-known performers and entertainers both in counseling and copyright litigation.

Injunctions

We regularly advise clients on the intricacies of defending, obtaining, and enforcing injunctive relief in court.  Often presenting an opportunity for an early resolution of a matter, we regularly advocate preliminary injunction motions both in Federal and state courts, dealing with injunctive relief relating to all forms of intellectual property protection including patents, copyrights, trademarks, trade secrets, non-competes, and non-disclosure agreements.

Litigation

Our trial-ready litigators have a breadth of experience that enable us to provide representation to nearly any business.  We represent clients in state and federal courts, and many administrative agencies, in connection with:

  • Patent, trademark, trade secret and copyright infringement matters
  • Ex-parte and inter-parties proceedings in the US Patent and Trademark Office
  • US International Trade Commission (ITC) Section 337 cases
  • Arbitrations, mediations and appeals
  • Temporary restraining orders and preliminary injunctions, and
  • Litigation abroad in conjunction with foreign counsel.

We provide due-diligence, IP audit and freedom-to-operate counseling and opinions.  We also regularly litigate related antitrust and unfair competition issues.  Representative subject matter in dispute includes:

  • Electrical and mechanical devices
  • Communications technology
  • Life sciences/biotechnology
  • Software, hardware and website content
  • Trademarks/service marks
  • Title to intellectual property and employee/employer disputes
  • Business practices
  • Trade secrets, non-disclosure and non-competition agreements

Our extensive experience in the courtroom translates to effective, focused representation of our clients’ interests, while at all times maintaining a pragmatic view of the big picture.  Our litigators are able to rapidly deploy response teams to address any circumstance, and, while we possess large-firm capability, we are adept at staffing just the right personnel to each matter.

Non-competes

Our lawyers possess considerable experience in drafting, enforcing, and defending claims concerning confidentiality, non-competition and non-solicitation agreements.  The firm regularly litigates these issues throughout the state of Florida, as well as in Federal courts throughout the country.

Patent Infringement

Our lawyers have collectively spent decades litigating patents through the U.S in various technological areas.  We regularly represent clients in complex patent disputes concerning mechanical, electrical, software, and other patents.  We represent large and small clients in both enforcing and defending patent infringement claims.  Our platform enables our lawyers to efficiently litigate patent cases from prior to suit through trial and appeal in “bet the company litigation” as well as smaller matters. 

Often times, the Markman process of claim construction in patent litigation matters serves to focus the disputed issues between the parties.  Our lawyers have deep technical knowledge in software, electrical, and mechanical technologies enabling our lawyers to efficiently and effectively advocate sophisticated positions as a means to resolving patent litigation disputes.

Domain Names Disputes (UDRP)

Internet Law

Our lawyers have experience in representing large and small clients in a full range of matters related to the law surrounding the Internet.  Our experience encompasses issues related to cloud-computing, data protection and privacy, e-commerce, website hosting and development agreements, web-based application and services, domain name issues and disputes including UDRP proceedings, issues related to social media websites and applications, CAN-SPAM Act, issues related to the Digital Millennium Copyright Act, website terms of use and privacy policies and other related matters.  We offer a full range of services from protecting your trademarks and copyrighted materials to negotiating complex cloud-computing and mobile application development agreements.

Customs Enforcement

U.S. Customs & Border Protection (CBP), a bureau of the Department of Homeland Security, maintains a trademark recordation system for trademarks registered with the United States Patent and Trademark Office. The Customs and International Trade Law Group at GrayRobinson records these trademarks with CBP to prevent the importation of counterfeit goods. The CBP recordation database includes information regarding all recorded trademarks, including images of these trademarks. Customs officers will then be on the lookout for infringers and knock-offs — helping to police the trademark for you — at its 317 ports of entry. GrayRobinson works with CBP officers to monitor imports in an effort to prevent the importation of counterfeit goods. Customs notifies GrayRobinson of any imports appearing to be counterfeit, not permitting the product into the U.S.

Trade Secret Misappropriation

Our attorneys have filed and defended numerous trade secret misappropriation claims in both state and federal court.  Florida statutory law contains unique remedies afforded to victims of trade secret theft, and our team can consult you on how to apply these remedies to your situation.  Moreover, trade secret claims often require quick action, whether in the form of filing or responding to a demand for injunctive relief.  Our experience and state-wide presence make us an ideal choice in these time-sensitive situations.

As a separate consideration, trade secret misappropriation claims often arise in the larger context of employment disputes.  We have a top-tier employment department with offices throughout the state that can assist in the breach of non-compete cases that often go hand-in-hand with trade secret theft.

Arbitration and Mediation (ADR)

Because IP litigation is complex, lengthy, costly and the outcome can be  uncertain, alternative dispute resolution including arbitration, mediation, use of private judges and special masters may be especially useful.  Federal and state court judges are referring IP cases to mediation with increasing frequency and in those cases, attendance of party representatives with authority to settle the matter is mandatory.  Mediation is a structured negotiation, requiring special skillsets for counsel, and our lawyers have extensive experience as counsel in mediation, and several are certified by the Florida Supreme Court as mediators, so we can see the issues from multiple perspectives.

We are also experienced and qualified as panel arbitrators, and as counsel to the parties in binding arbitration matters, including all aspects of IP litigation.  Arbitration, and the use of private judges are generally the result of negotiated agreement between the parties, or  where  dispute arises  from a contract containing an arbitration provision. We can help develop arbitration agreements either at the contract phase, or by agreement after a dispute arises.

Whether the alternative approach is arbitration, mediation, private judge, special master or any hybrid,  GR IP litigators have the skill and experience to help efficiently craft  resolution of the dispute.

E-Discovery

The failure to deliver and maintain electronically stored information (“ESI”) can be disastrous to a case. Understanding the rules and procedures regarding ESI is important but understanding how such information is stored, organized, and retrieved, as well as how the data can be lost could be critical. Companies who fail to comply with the new rules and requirements face some stiff risks, including : (1) Spoliation which can result in dismissal, sanctions, fines, or preclusion of evidence; (2) Increase cost of retrieval; and (3) Inability to defend a claim due to loss of critical evidence.

GrayRobinson prides itself on its ability to handle cutting-edge ESI issues, from the initial stages of a company-wide document retention policy, to the identification and collection of ESI in-house, to the later stages of reviewing, sorting, and eventually creating a production set for use in litigation or a given transaction.  Besides the collection and protection of ESI, GrayRobinson attorneys, litigation support staff, and IT professionals have significant experience with the ever increasing demands of complex electronic document discovery and production.  With the transition from a paper-world to a digital one, more cases are decided by the presence of an electronic evidence.  GrayRobinson utilizes its own software to review, sort and identify those key electronic documents in an in-depth, strategic and cost-effective manner.

Outside litigation, GrayRobinson attorneys also provide consulting and give in-depth analysis and advice regarding risks, costs and best practices as they relate to handling electronic information. Risk-averse companies could potentially save money if later litigation required significant discovery.

Trademark Prosecution

GrayRobinson’s Intellectual Property practice covers a wide range of services, including Trademark protection and prosecution.  Our international group of attorneys and paralegals has extensive experience that includes trademark applications and registrations, counseling, responding to office actions, conducting surveys and attending conferences with Trademark Examining Attorneys and the Commissioner of Trademarks. Our team of attorneys routinely represent clients in trademark disputes and litigation. Intellectual Property is a global initiative with far reaching consequences.

Trademark Infringement and Dilution

Our team comprised of trademark attorneys has experience in all aspects of trademark infringement and dilution cases involving trademarks, service marks, trade dress, product configuration, trade names, domain names, letters, numbers, colors, and telephone numbers.  Our seasoned attorneys implement a variety of tactics to help our clients achieve their goals, whether by filing a motion to dismiss, obtaining a preliminary injunction, positioning a case for settlement, moving for summary judgment, or taking the case to trial. We assess the potential risks and rewards of disputes and provide creative solutions for clients of all sizes.

Trademark Litigation

Our vast litigation experience makes our attorneys well versed in the best ways to approach cases, whether large or small, complex or straightforward.  We assess the potential risks and rewards of disputes and provide creative solutions for clients of all sizes.  For more detailed information, please view our Intellectual Property Litigation section.

Trademark Trial and Appeal Board Litigation

In addition to civil litigation, we are well-versed in the rules and procedure of the Trademark Trial and Appeal Board (TTAB).  Our team has filed and defended a substantial number of trademark oppositions and cancellations and is well-prepared to guide you through this process. We will work with you to determine the best way to go forward based on your ultimate goals, resources, and the merits of the case. Our experienced team of trademark attorneys understand what is at stake in an opposition or cancellation and how to navigate the process.

BUSINESS & COMMERCIALIZATION

Intellectual property, in many cases the most valuable and least protected asset of companies and individuals, consists of several forms of intangible property including copyrights, trademarks, patents, and trade secrets. For business executives and creative individuals, these are vital components of success. Intellectual Property law protects your innovations from unauthorized use and exploitation by third parties, allowing you to fully benefit from what you have created.

We have experience in assisting organizations with developing, sourcing, sorting, processing and ultimately commercializing technology and other intellectual property assets developed by your business.  Our services ranges from setting up and creating a brand new technology transfer office or function for your organization, to assisting experienced professionals with matters that arise in the day to day operation of a technology transfer office all the way through negotiating, running and closing technology transactions including sales, purchases, licensing arrangements and other commercialization or development deals.

Technology Transfer

We have experience and expertise in assisting organizations with developing, sourcing, sorting, processing and ultimately commercializing technology and other intellectual property assets developed by your business.  Our services ranges from setting up and creating a brand new technology transfer office or function for your organization, to assisting experienced professionals with matters that arise in the day to day operation of a technology transfer office all the way through negotiating, running and closing technology transactions including sales, purchases, licensing arrangements and other commercialization or development deals.


 
 
Articles Authored by Lawyers at this office:

Florida Supreme Court Weighs In On Patent Licensing Agreements
Robert M. Norway, July 17, 2014
While the interpretation and assertion of patents is a matter of federal law, whether the transfer of rights to a patent typically is contract matter under state law. This can be problematic because agreements transferring substantially all of the rights to a patent, called an assignment, are...

The Supreme Court Elaborates on the Concept of Patent Eligibility and Patents Directed to Abstract Ideas
Kristin Shusko, July 17, 2014
In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, the Supreme Court considered whether computer-related patents were patent eligible under 35 U.S.C. § 101 and faced the question of defining an abstract idea. The Court found that generic computer implementation of an abstract idea could not...