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Practice/Industry Group Overview
Saul Ewing's Intellectual Property & Technology Practice Group
Saul Ewing's Intellectual Property & Technology (IP/T) Practice Group focuses on two areas: (1) intellectual property protection and enforcement, and (2) technology contracting, primarily for information technology.
Intellectual Property
Our IP/T attorneys understand that a company’s intellectual property is often its strongest asset, one that can be protected and leveraged to gain a competitive advantage. Access to an experienced, diverse and business-savvy team of IP/T attorneys is vital to the success of emerging and mature companies alike. Attorneys in our IP/T Practice Group bring to clients a 360-degree perspective of IP matters, having knowledge and experience in the three key IP service areas:
Patent, Trademark, and Copyright Procurement
- Preparing and prosecuting patents in all technical disciplines including biotechnology, pharmaceutical, chemical, nanotechnology, electrical, telecommunications, software, mechanical, and medical devices
- Conducting invention-capture sessions with development teams to identify and document innovations
- Securing trademark and copyright registrations
Counseling and Transactions
- Assessing third-party IP rights through infringement and validity studies
- Navigating around third-party IP rights through freedom-to-operate, clearance, and design-around studies
- Developing strategies to protect trade secrets from misappropriation by employees and competitors
- Conducting IP due diligence for mergers, acquisitions, and investments in companies
- Preparing companies for, and assisting them with, IP due diligence by potential investors, lenders, and merger partners
- Formulating action plans for optimizing acquisition and use of IP
- Performing IP audits and mining portfolios for licensing/sale opportunities
- Advising on compliance with privacy and data protection laws and regulations
Litigation
- Litigating patent, trademark, and copyright infringement claims
- Arbitrating and mediating IP disputes
- Protecting proprietary markets and generating licensing revenue through the assertion of IP rights
- Enforcing and defending trademark and trade dress rights
- Handling International Trade Commission §337 proceedings to bar infringing imported goods
- Advocating at emergency hearings for restraining orders and injunctions
- Protecting domain names through ICANN UDRP arbitrations and court proceedings
- Handling bid protests with respect to governmental technology procurements
Technology Contracting
Our IP/T attorneys represent both customers and vendors across a wide range of industries, particularly healthcare, financial services, and manufacturing. Common types of transactions include:
- Complex system procurement and implementation arrangements, including hardware, software, and services elements
- Development of RFPs and responses for technology acquisitions
- Licensing of patents, trademarks, copyrights, software, and data
- Technology transfer agreements
- Software as a Service (SaaS), application service provider (ASP), and hosting agreements
- Telecommunications systems and services agreements
- Business process outsourcing agreements
- Joint development, joint marketing, joint venture, and strategic partnership agreements
- Support for technology and intellectual property aspects of mergers, acquisitions, and other general business transactions
- Internet and e-commerce agreements
- Governmental technology procurement contracts, particularly involving school districts and state agencies
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