Practice Areas & Industries: Jones Day

Practice/Industry Group Overview

Intellectual property assets have steadily gained importance in corporate boardrooms around the world. As the pace of new product development and scientific advances has accelerated, market leaders have turned to intellectual property laws to protect investments. Jones Day has approximately 300 IP lawyers, located in most of the Firm's offices. The majority of our professionals have undergraduate or graduate degrees in technical or scientific fields, and many previously worked in technical disciplines, including electrical engineering, computer science, mechanical and electromechanical engineering, chemistry and chemical engineering, biotechnology, and genetics, before attending law school.

Jones Day combines more than a century of experience in traditional industries with know-how gained at ground zero of the technology revolution. We were present at the creation of the Internet Corporation for Assigned Names and Numbers (ICANN) -- a unique private-sector organization at the intersection of private, governmental, and technical interests seeking to find new ways to manage a global medium, the internet. In a partnership that has endured more than 100 years, we work with iron ore supplier Cleveland-Cliffs on projects such as its multimillion-dollar investment in the Mesabi Nuggets Project, a joint venture whose participants are developing a new ironmaking technology. Today, our technology clients include global players such as Verizon, Texas Instruments, Nextel, Lucent, and Dell, in addition to our collaboration with ICANN and other new technology entrants.

Services Available

Our core Intellectual Property & Technology Practice includes:

Life Sciences. In January 2004, nearly 100 lawyers and professionals from the leading intellectual property firm Pennie & Edmonds joined Jones Day, bringing us particular strength in the areas of biotechnology and pharmaceuticals. Pennie was among the first firms to recognize the potential impact of biotechnology on the pharmaceutical industry, as well as the importance of obtaining meaningful patent protection to support the growth of the biotechnology industry.

Copyrights & Trademarks. Our experience extends from the creation, maintenance, and exploitation of trademark, domain name, and copyright rights to their protection in worldwide competition against infringement, misappropriation, deceptive trade practices, and counterfeiting. A current focus in this area is antipiracy and anticounterfeiting. We provide clients with a global approach to combating the problem, both in the source countries -- China and Taiwan -- and in the distribution/end user countries -- Japan, the EU members, and the U.S. We have particular strength working with vulnerable industries: pharmaceuticals, software, telecommunications, and luxury goods.

Europe. Our full service practice in Europe handles both self-standing European matters and the European side of multi-jurisdictional matters. Our capabilities and experience in patent and trademark prosecution (including oppositions), enforcement in the primary European jurisdictions (UK, Germany and France), co-ordination of European-wide disputes as well as licensing and transactions mean we are well-placed to assist clients in negotiating the complex IP scene in Europe.

Federal Circuit and IP Appeals. With a reversal rate on patent claim-construction issues that some estimate near 50 percent, the U.S. Court of Appeals for the Federal Circuit plays a major role in patent litigation. Whether seeking to protect or overturn a trial-court judgment, it is crucial that companies take their cases to the Federal Circuit accompanied by experienced advocates who bring both excellent general appellate abilities and a particularized knowledge of the "ins and outs" of this unique appellate court. No other firm exceeds the depth and breadth of Jones Day's experience in the Federal Circuit, nor its long and distinguished history of overall appellate excellence.

ITC Section 337. The ITC trial lawyers at Jones Day have represented both complainants and respondents in these extremely fast-paced cases. These experiences provide Jones Day lawyers with a unique perspective and allow us to focus on preparing for the trial at the ITC without engaging in expensive and time consuming distractions.

Patent Litigation. Intellectual property boundaries require serious enforcement. Experienced trial counsel form the linchpin in every complex case, from initial motion practice through discovery to presenting evidence and cross-examining witnesses at trial. Patent litigation represents the largest activity of Jones Day's Intellectual Property Practice.

Patent Prosecution. Far too many companies neglect their intellectual capital, taking up the issue of IP protection too late to protect their innovations. In most countries, a patent application is barred if there has been any public disclosure of the idea. We develop and implement intellectual property acquisition and management programs for clients. These programs are integrated with companies' product development processes so that important IP is captured in time.

Licensing & Technology Transactions. Our lawyers advise clients on the acquisition, transfer, and exploitation of technology and intellectual property assets through commercial transactions, such as licensing, strategic alliances, and joint development. We have conducted multijurisdictional privacy/data protection reviews, providing a coordinated approach to international data transfer regulations, including those imposed by the EU Data Protection Directive.

CONTACT(S)

Kenneth R. Adamo
Cleveland
Tel: 1.216.586.3939
Dallas
Tel: 1.214.220.3939

Tony Chen
Shanghai
Tel: 86.21.2201.8000
San Diego
Tel: 1.858.314.1200

Laura A. Coruzzi Ph.D.
New York
Tel: 1.212.326.3939

Blaney Harper
Washington
Tel: 1.202.879.3939

Peter Homberg
Munich
Tel: 49.89.20.60.42.200

Robert C. Kahrl
Cleveland
Tel: 1.216.586.3939

Greg Lanier
Silicon Valley
Tel: 1.650.739.3939

Alastair J. McCulloch
London
Tel: 44.20.7039.5959

John J. Normile
New York
Tel: 1.212.326.3939

Brian M. Poissant
New York
Tel: 1.212.326.3939