Practice/Industry Group Overview
Intellectual property has become a strategic business advantage. Since the creation of the Federal Circuit in 1982 established national uniformity and enforcement of patent laws, companies have come to recognize the value of patent licensing – revenues from which have quintupled in the United States since 1998 to approximately $500 billion by 2015.
Companies likewise see the potential costs involved in protecting their IP rights against infringement. The rise of globalization has created more opportunities to leverage IP, but also more markets in which companies must protect it.
Today more than ever, companies require IP strategies that provide protection – a solid platform for litigation avoidance that enables them to remain focused on their business. GT’s IP and Technology Practice provides strategic counsel for clients requiring in-depth understanding of both specialized technology and the complex dynamics of worldwide distribution. Our team includes approximately 180 full-time IP and technology attorneys, approximately 100 of whom are registered with the U.S. Patent and Trademark Office (USPTO).
Our experience encompasses an array of industries and technologies – from biotechnology, business methods, electronics and e-commerce to consumer products, fashion and apparel, media and entertainment. In addition, many of our attorneys gained firsthand experience in a range of technical disciplines – both in academia and industry – prior to entering the legal field.
GT has been ranked by numerous independent surveys, recognizing the depth and experience of our practice and attorneys:
- Named a “National Tier 1” Law Firm for IP Litigation, Patent Law, Trademark Law and Information Technology Law, U.S. News – Best Lawyers® “Best Law Firms” 
- Named a “National Tier 2” Law Firm for Copyright Law and Technology Law, U.S. News – Best Lawyers® “Best Law Firms” 
- Named a “National Tier 1” Law Firm for IP Litigation, Patent Law and Trademark Law, U.S. News – Best Lawyers® “Best Law Firms” [2011-2012]
- Named a “National Tier 2” Law Firm for Copyright Law, Patent Litigation and Technology Law, U.S. News – Best Lawyers® “Best Law Firms” [2011-2012]
- Managing IP’s “IP Stars” - 27 Greenberg Traurig attorneys named to Managing Intellectual Property magazine’s “IP Stars,” which covers over 80 countries and is based on extensive research among IP practitioners, Managing Intellectual Property (Managing IP) Magazine 
- Managing IP Magazine's “IP Stars-Top 250 Women in IP” – 6 Greenberg Traurig Women Shareholders were listed in the inaugural edition, Managing Intellectual Property (Managing IP) Magazine 
- Corporate Counsel Patent Litigation Survey - Greenberg Traurig ranked number 8 for overall patent cases filed in 2012 and ranked number 6 for defense cases. 
- WTR 1000 – A number of our attorneys were recognized as leading trademark individuals in addition to Greenberg Traurig having leading trademark practices Nationally as well as in New York, Los Angeles, Georgia and Washington, D.C., World Trademark Review [2011, 2012 and 2013]
- IAM Patent 1000 - 13 Greenberg Traurig attorneys named to IAM Magazine's IAM Patent 1000: The World’s Leading Patent Practitioners, a publication recognizing the top patent prosecution, licensing and litigation practitioners around the world, Intellectual Asset Management (IAM) Magazine [2012 and 2013]
- IAM Patent Litigation 250 – 3 Greenberg Traurig attorneys named to IAM Patent Litigation 250: The World's Leading Patent Litigators, a publication recognizing the top 250 leading patent litigators around the world, Intellectual Asset Management (IAM) Magazine 
- IAM Licensing 250 – 5 Greenberg Traurig attorneys named to IAM Magazine's IAM Licensing 250: The World's Leading Patent and Technology Licensing Practitioners, a publication recognizing the top 250 leading patent and technology licensing lawyers around the world, Intellectual Asset Management (IAM) Magazine 
- Ranked 2nd by CSC® Trademark Insider for the number of USPTO trademark applications submitted [Trademark Insider Annual Report 2010]
- Ranked 1st by CSC® Trademark Insider for the number of USPTO trademark applications submitted [Trademark Insider Annual Reports 2004, 2005, 2006, 2007, 2008 and 2009] and No. 1 National Law Firm Award [2008, 2009]
Intellectual Property Litigation
In today’s business climate, intellectual property can be a source of both major revenue and considerable risk. As infringement and counterfeiting cases have become more and more common, companies have seen the potential costs involved in protecting their IP rights rise dramatically. Companies need IP management strategies designed for maximum protection. However, when litigation is unavoidable, they can also draw on Greenberg Traurig’s experienced IP litigation team.
Enforcing IP rights against infringement often requires quick and decisive action to secure injunctive relief and skillful advocacy to recover monetary damages. With experience in federal and state courts, we have handled some of the most complex IP lawsuits involving patent, trademark, trade dress, and copyright infringement, as well as trade secret and computer software-related disputes, across the United States. With more than 180 intellectual property attorneys worldwide, GT’s approach to litigation is to utilize our wide breadth of experience to ensure that our clients are represented by counsel familiar with the technology or IP at issue and to handle cases efficiently so that our clients get the maximum benefit our talent pool can offer.
- Prosecute and defend patent litigation matters in U.S. federal district courts throughout the United States on behalf of highly diverse clients – from small private companies to some of the world’s leading corporations and institutions, with significant experience in the “rocket dockets” of Texas, Virginia and California
- Provide clients with the benefit of our experience arguing cases at the Court of Appeals for the Federal Circuit, which hears all patent appeals from district courts around the United States
- Tailor litigation strategies to meet each client’s business needs and objectives
- Protect clients’ rights in trademarks and trade dress through instruction, investigation and negotiation
- Conduct complex litigation involving trademark licensing issues, parallel trade, trademark infringement, trademark counterfeiting, trade dress infringement, trademark dilution, false advertising, copyright infringement and rights of publicity
- Resolve problems in difficult jurisdictions across Asia, the Americas, Europe and elsewhere with an established worldwide network to implement global brand protection programs on a fast, economical and effective basis
- Handle the many phases of litigation, including applications for emergency injunctive relief (temporary restraining orders, preliminary injunctions, seizures), declaratory judgment proceedings, trials and appeals, in federal courts throughout the United States and in judicial tribunals around the world
- Regularly defend clients in the technology, media and entertainment industries
- Represent clients in some of the most sophisticated cases in the courts today involving landmark issues such as entertainers’ rights of publicity and the liability of online service providers for IP violations occurring on their websites
- Draw on the capabilities of GT’s international and domestic copyright practice, which focuses on securing copyright registrations to protect original works of authorship and handles development, licensing and distribution for books, music, film, sound recordings, software, new media, photography, art and multimedia
The patent field is growing each year – in terms of the number of patents filed, the complexity of those patents, and the number of infringement lawsuits. Once considered the province of high-tech companies, patents have become a focal point for business strategy for companies in a wide array of industries. As such, it is vital for companies to consider patents from both the technology and business perspectives. As globalization sweeps through virtually every industry, companies are often required to file their patents in more than one country in order to ensure protection.
In today’s world, managing patents is a global undertaking. Our IP attorneys have experience in managing international patent portfolios for major companies and organizations – including prosecuting thousands of patents. We strive to provide broad yet focused claim coverage for the patents we obtain for our clients. Working within our clients’ strategic business and cultural definitions, we help determine the inventions and patents of importance that speak to their business objectives.
Our patent capabilities run the gamut from application preparation and filing to examination and appeal processes to maximizing technology transfer opportunities – as well as handling patent litigation, when necessary. Through our experience working with a wide range of clients, we have developed a structured process for obtaining patent claims that provides strategic flexibility for our clients to best achieve their business goals.
Patent Prosecution Strategy
- Conduct dialogue with the client’s in-house legal and business departments regarding the particular technology of interest – ensuring a thorough understanding of their business
- Develop an array of claim strategies, including commercialization, cross-licensing and defensive claim strategies
- Develop a platform for patent litigation avoidance, helping clients maintain a focus on business
- Conduct dialogue between investors and a GT team member with the appropriate technical background to highlight the critical features of the technical disclosure
- Determine a patent strategy which combines the technical components with the client’s business goals
- Obtain varying breadth of patent claims, as well as a comprehensive list of potential infringers
- Help develop a revenue stream for our clients’ patents, identifying target markets
- Draft and prosecute patents that provide an in-depth understanding of potential markets
- Draw on GT technology transfer professionals who can put clients in direct contact with high level executives in a variety of markets – and have experience with licensing, joint-ventures and spin-out companies
The evolution of our global information society has intensified the difficulties of enforcing copyrights around the world. Although much legislation has been passed in the past decade, copyright problems continue to grow in step with technological developments. Today, all copyrighted works are capable of being digitized and, in turn, transmitted instantaneously and reproduced cheaply and flawlessly – with or without the copyright holder’s permission. Protecting copyrights is especially challenging on a global level because current copyright laws vary widely from country to country – particularly when it comes to the length of time the copyright is enforced.
Our attorneys have obtained copyright registrations in a variety of fields including software, multimedia, on-line services, e-commerce, entertainment, toys and games. In addition to counseling clients regarding the registration, licensing, policing and enforcement of their copyright rights, we regularly litigate copyright issues. Often, our copyright litigation team will use copyright law to complement or replace trademark law, when the latter is either not available or not workable in a particular jurisdiction in the world.
International Copyright Services
- Obtain copyright registrations – including difficult registration in the United States on an expedited basis, in contemplation of litigation
- Advise on an array of development, licensing and distribution transactions
- Counsel on literary, personal and syndication rights, unfair competition and false advertising
- Litigate copyright issues
Trademark and Trade Dress
Two trends have shaped trademark counsel and enforcement in the past 15 years: globalization and the rise in international counterfeiting that has come with it. Our international trademark team comes to the table with specific knowledge of countries, legal systems and markets around the world – enabling us to help clients enforce and protect their trademarks against unlawful copying, use, sales, distribution, import, export or manufacturing, regardless of the country in which the event occurs.
GT’s Trademarks and Global Strategies Group brings together a vast network of resources to obtain, monitor, enforce and leverage trademarks and trade dress worldwide. We offer our clients a wide range of services, including clearance and registration, searches, rights of publicity, licensing and advertising. We also counsel clients on global anti-counterfeiting/anti-infringement, anti-parallel trade and brand strategies.
Trademarks and Global Strategies
- Assist clients with strategic portfolio management
- Conduct exercises to clear our clients’ trademarks throughout the world
- Develop brand guidelines to encourage proper trademark use by clients' employees, vendors, partners and media outlets
- Negotiate and document trademark licenses and assignments to maximize portfolio revenues
- Implement cost savings programs designed to avoid adoption of marks that cannot be protected
- Design staged registration programs to register our clients’ marks in various areas of the world depending on manufacturing, sales and economic realities
- Prepare and file all registration, opposition, litigation and post-registration documents
- Police trademark registrations
- Oppose and petition to cancel third-party applications and registrations which may be too similar to our clients’ trademarks
- Handle trademark and domain name enforcement
- Represent clients in resolution of international and domestic trademark disputes
- Defend clients against unwarranted charges that their trademarks or trade names may be too close to third-party trademarks or trademark registrations
Today, counterfeiting is a global enterprise – a rapidly growing problem for companies in numerous industries around the world. Revenues from sales of counterfeit goods are estimated to have grown by more than 400 percent since the early 1990s, while sales of the legitimate goods grew by just 50 percent. According to the FBI, counterfeiting now costs U.S. companies some $200-250 billion annually. With counterfeit goods accounting for approximately five to seven percent of world trade, it is hardly hyperbole when the FBI tags counterfeiting “the crime of the 21st century.”
Our attorneys have a broad range of experience dealing with the manufacture, sale and distribution of unauthorized products throughout the world. We have developed capabilities in resolving problems in otherwise difficult jurisdictions throughout Asia, the Americas, Europe and elsewhere. Our attorneys work closely with individuals and organizations in countries around the world that enable us to avoid protracted, expensive efforts, as well as offer the client knowledge of how things work culturally and legally, who can get things done, and how to do it efficiently. To date, we have conducted and testified in legal proceedings in more than 50 countries.
Global Anti-counterfeiting Services
- Lead intensive counterfeiting investigations around the world
- Conduct and testify in legal proceedings in jurisdictions around the world – including more than 50 countries to date
- Work with local law enforcement, politicians, customs services, finance/revenue departments, postal services and some of the highest ranking government officials to seek solutions where traditional IP-based solutions are either limited or not available
- Handle anti-counterfeiting actions ranging from a letter to face-to-face visits, writs/complaints and full-blown search and seizure actions, often coupled with criminal proceedings
- Assist with the registration of trademarks with customs authorities in the EU and Asia, ensuring an active approach to identify counterfeit products being imported and seizures of counterfeit shipments
- Provide in-depth knowledge of the legal and cultural landscapes in countries around the world – especially sensitive areas such as China, Thailand, Indonesia, the Philippines, Taiwan and Malaysia
Global Anti-Parallel Trade
Our group has designed a particular program to deal with the growing problem of parallel trade – genuine goods passing through unauthorized channels of distribution, such as goods destined for Venezuela showing up in Spain. We counsel clients in implementing an in-house anti-parallel trade program with sensitivity to special regulations such as those of the European Union. Our attorneys:
- Investigate both internal and external issues related to the transmission of such products around the world with a view to stopping the flow and tracing the source to help clients prevent future transmissions of such products
- Conduct international litigation using IP as a mechanism to stabilize a client’s distribution system
- Routinely examine all the client’s licenses and trade agreements to add provisions and programs dealing with these issues
- Make presentations at the clients’ national and international sales meetings designed to get the worldwide sales team all thinking and working together on this issue
To protect their interests, companies today often need to file patents, trademarks and copyright protection in more than one country. The staggering increase in global counterfeiting operations over the past several years makes such decisions vital to a company’s bottom line. Strategic international IP planning must also take into account the rising costs associated with foreign filing, as well as differences from country to country in IP laws and their enforcement. GT’s IP practice provides international IP advice to both U.S. and foreign companies, including:
- Counsel regarding the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights
- Advice on specific provisions for protecting IP rights under other international, regional and bilateral agreements
- Prosecution and defense of matters relating to unfair trade practices, including patent and trademark infringement, before the International Trade Commission
Internet Brand Protection and Domain Name Management
Greenberg Traurig has developed the Internet Brand Protection Program to help determine the most effective approaches for developing and protecting our clients' brands on the Internet. By coupling powerful technology with our attorneys' trademark capabilities and experience, we assist clients in targeting the most damaging forms of brand abuse occurring on the Internet, including:
- Trademark infringement/dilution
- Domain name abuse
- Traffic diversion
- Diverted sales
- Claimed affiliations
- Unauthorized/counterfeit sales
- Association with offensive content
- Other important abuses
- Clients can access program information via a convenient and secure online reporting and management system – designed to enhance collaboration and communication and help clients to measure their results in responding to reported online abuse.
GT Internet Brand Protection Program
- Provide clients with customized Internet monitoring to help track, prioritize and manage key forms of online abuse
- Collect and analyze relevant information based on the results of monitoring
- Provide advice on infringing domain name registrations and websites
- Assist clients in cybersquatting litigation, when needed
The United States is one of the few countries in the world that has a special procedure for excluding imports from its market that infringe a U.S. patent, trademark or copyright, or violate other U.S. laws. This procedure is set forth in Section 337 of the Tariff Act of 1930, as amended.
Section 337 investigations are fast, intensive and specialized. Successful Section 337 investigations require a multidisciplinary approach to the issues raised and an intimate knowledge of both the ITC procedure and its decision-making process, as well as that of the government in Washington. Section 337 investigations require experience in prosecution, litigation and licensing of intellectual property rights, the ITC special procedures and rules, the U.S. Customs’ enforcement rules and proceedings, and the presentation of public policy issues before the various federal agencies involved in the decision-making process.
Greenberg Traurig intellectual property attorneys have wide-ranging experience enabling them to handle Sections 337 investigations before the ITC. GT combines the broad litigation and international trade experience of a major international law firm with in-depth knowledge and experience on the IP issues common to Section 337 investigations. GT attorneys have represented a wide range of industries in Section 337 investigations before the ITC and have hands-on experience with such cases. Our attorneys have also been involved with some of the most complex and cutting-edge technology Section 337 investigations conducted by the ITC. They have been involved in all aspects of these cases, from addressing specific issues in bringing complaints before the ITC to litigating before the Administrative Law Judges at the ITC and to handling appeals before the Federal Circuit.
||Licensing IP and Technology: Advancing the Concepts in 2016, Chicago, Illinois, March 15, 2016
Licensing IP and Technology: Advancing the Concepts in 2016, Chicago, Illinois, March 15, 2016
Geekfest, Chicago, Illinois, December 1, 2015
Past Seminar Materials
Articles Authored by Lawyers at this office:
Dutch Appeals Court Finds Patent Invalid
Lei Huang,Radboud Ribbert, December 15, 2015
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Viola Bensinger,Carsten Kociok, October 29, 2015
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Ed Chansky,Erica Okerberg, July 16, 2015
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Supreme Court Decision Impacts Strategic Decision Making for Trademark Enforcement
Daniel I. Schloss, April 17, 2015
On March 24, 2015, the U.S. Supreme Court held that, in some cases, decisions made by the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office can preclude courts from addressing the same issue decided by the TTAB. The case is B&B Hardware, Inc. v. Hargis Industries,...
PTAB Moves Forward on Quick-Fix Rule Changes
Scott A. McKeown, April 06, 2015
The USPTO's Patent Trial & Appeal Board (PTAB) has announced some of their "quick fix" rule changes today in advance of the anticipated Federal Register Notice. In addition to expected changes to page limits, the Director also mentioned other changes that may be proposed through...
Much Ado About Tacking
Joel Ross Feldman, March 04, 2015
On Wednesday, the U.S. Supreme Court issued a rare trademark decision. In Hana Financial, Inc. v. Hana Bank, the Court held that whether an original trademark and revised trademark are “legal equivalents” and “create the same, continuing commercial impression” is a question...
Game Developers: What’s Your SWOT?
Chinh H. Pham, February 17, 2015
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Provisional Patents as a Strategy for Tech Start-Ups
Chinh H. Pham,Fang Xie, February 16, 2015
Filing a provisional patent application in the U.S. is often a useful strategy for start-up tech companies. A provisional patent application allows a company to preserve an earlier filing date at a minimal expense and delays a much more significant expenditure associated with a non-provisional...