Practice Areas & Industries: Roetzel & Andress, A Legal Professional Association

Practice/Industry Group Overview

Our Intellectual Property and Information Technology (IP) attorneys work closely with in-house counsel, executive leadership teams, and technical professionals to develop comprehensive programs focused on the procurement, counseling, protection, and enforcement of IP rights.

Services Available

We help ensure that our clients understand the value of their IP and technology assets and counsel them towards maximizing the full value and benefits of these assets. Our attorneys conduct audits by implementing a thorough analysis of existing IP assets. This includes documentation of ownership and licenses and establishment of litigation positioning. We are extensively involved in the creation and management of international patent and trademark portfolios, utilizing the latest portfolio management software and electronic filing procedures. After measuring the strength and contribution of the IP assets to the company's long-term objectives, we develop proactive approaches to protect these intangible assets.

We counsel inventors, developers, and marketing professionals in entrepreneurial, regional, national, and international companies regarding all IP-related matters. We represent a wide range of clients in industries such as chemical, mechanical, and computer technologies; telecommunications; pharmaceuticals; manufacturing machinery; biochemicals; liquid crystal displays; electrical / electronic; fiber optics; polymers; logistics software; MEMs; circuit boards; medical devices; and materials testing equipment.

Our IP team integrates its undergraduate and graduate degrees in physics, chemistry, and chemical, environmental, and mechanical engineering degrees, along with its associated legal experience, to maximize its understanding of the technical issues involved in IP matters. In addition, most of our attorneys are registered to practice before the U.S. Patent and Trademark Office.

Representative Services

• Comprehensive intellectual property portfolio management
• Confidentiality, non-disclosure, and technology escrow agreements
• Consulting and development agreements
• Copyright
• Domestic and international trademarks, service marks, and trade names
• Domestic intellectual property investigation and enforcement programs
• Internet and e-business
• Intellectual property-based financing
• Marketing, licensing, and exploitation of intellectual property rights
• Technology transfer and commercialization

Representative Matters

• Negotiated and completed a patent license agreement on behalf of a licensee in an eight-figure transaction involving fuel cell technology
• Served as special counsel to a state's attorney general, representing state agencies in connection with major purchases of customized software applications
• Represented software development companies in identifying and implementing licensing strategies and protecting code through patent, copyright, and trade secret laws
• Managed significant domestic and international trademark estates with marks in Europe, South America, the Middle East, and the Pacific Rim
• Drafted comprehensive policies on behalf of a university system relating to intellectual property assets, copyright issues, and acceptable use of the Internet
• Conducted pre-acquisition due diligence of intellectual property assets obtained as part of a manufacturing company acquisition
• Served as counsel in patent and contract arbitration under the World Intellectual Property Organization Tribunal
• Conducted intellectual property audits to develop commercialization strategies for global consumer products and technology companies
• Represented publicly-traded licensee in obtaining rights to an environmental control system
• Served as IP counsel in preparation for, negotiation of, and during nine figure divestiture of all assets including substantial worldwide intellectual property estate
• Represented a university in preparing and prosecuting patent applications