Practice Areas & Industries: Sutherland Asbill & Brennan LLP

 




Mechanical Engineering Return to Practice Areas & Industries

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Practice/Industry Group Overview

With engineering backgrounds and significant IP experience, our lawyers provide critical technical insight to protect mechanical inventions.

Changes in consumer preferences and rapid advances in science and technology make protecting investments in mechanical engineering breakthroughs more important than ever. At Sutherland, our attorneys advise on intellectual property protection for mechanical innovations. Our team has an exceptional level of technical understanding acquired through training and previous work experience. The mechanical and civil engineering attorneys in our IP Group provide fast, in-depth perspectives on the potential and realized value from mechanical inventions.

Our practice provides a full range of services to companies seeking to protect and exploit mechanical engineering technology rights, both in the United States and internationally. Some of the world’s most recognizable consumer product brands rely on us for IP portfolio management.

Our Mechanical Engineering team advises on all aspects of patent prosecution, from preparing and filing applications through any type of appeals process. Our attorneys secure design patent protection for the novel aspect of various developments and products. Often this type of protection, which complements utility patent and trademark protection, is overlooked. When it comes to protecting consumer goods, design patent protection can be essential to building a robust portfolio.

Why Sutherland
Technical knowledge.
Sutherland has a significant number of attorneys with undergraduate and advanced degrees in mechanical engineering, material science, computer engineering and industrial engineering. Many have worked as engineers or researchers in various industries.

USPTO experience. Some of our attorneys have served as examiners at the U.S. Patent and Trademark Office. They prosecute patents with an understanding of the intricacies, challenges and considerations to work more effectively and efficiently for clients.

Wide range of products and industries. Among the products our mechanical engineering clients design and manufacturer are food processing equipment, beverage dispensers, refrigeration controls, environmental controls, medical devices, athletic and outdoor recreation equipment, fuel cells, and power generation equipment.

Advice every step of the way. Our advice extends beyond patent protection, portfolio management and technology licensing. We assist with the full range of IP services: patent prosecution, litigation and counseling; trademark prosecution, litigation and counseling; copyright litigation and counseling; licensing; trade secret and technology counseling and litigation; domain name registration and dispute resolution; due diligence reviews in connection with mergers and acquisitions; and IP audits and evaluations.

Trial experience. We have substantial trial experience litigating mechanical and design patent cases. For example, recent patent infringement cases involved medical devices, food preparation equipment and outdoor recreational equipment.

Nuts and Bolts
Our IP work spans the entire range of mechanical engineering inventions.

  • Patents
    • Prepare and file patent applications in all of the technological arts
    • Prosecute patents in the United States and internationally
    • Audit technology to identify patentable subject matter and develop protection strategies
    • Advise on alternative methods to protect patentable, commercially valuable information
    • Map client patents and/or competitor patents for strategic analysis
    • Develop and implement patent programs to grow and manage patent portfolios
    • Perform due diligence reviews and negotiate IP-related provisions in mergers and acquisitions
    • Prepare non-infringement invalidity and clearance opinions
    • Analyze and advise with regard to infringement claims by patent-holding companies
    • Draft, negotiate and advise with regard to technology development and acquisition or licensing
    • Litigate issues of ownership, licensing, validity and infringement
  • Trademarks and service marks
    • Perform searches to determine the availability of names and marks for use and/or registration
    • Prepare and file trademark applications in the United States and abroad
    • Prosecute trademark applications
    • Represent clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board
    • Advise on marketing, advertising or promoting regarding trademark use and protection
    • Supervise trademark audits and perform due diligence during corporate structuring and restructuring
    • Handle transferring marks or rights by licensing, assignment, security agreements, mergers or acquisitions
    • Police potentially infringing uses of our clients’ marks in the United States and abroad
    • Litigate in federal and state courts regarding trademark grants, infringement and dilution, unfair trade practices, licensing and assignment
    • Represent clients in Section 337 cases before the International Trade Commission
  • International IP portfolio management
    • Docket and maintain deadlines for registrations, pending applications, enforcement activities and litigations on a worldwide basis
    • Counsel on developing IP rights, taking into account particular language or cultural issues for the target market, clearance of those rights and ad copy review prior to promotion and sale
    • Advise on protecting those rights via filing, prosecution and registration, if appropriate, on a worldwide basis
    • Engage and supervise foreign associate counsel
    • Negotiate and draft license agreements and track use by licensees to monitor and maintain quality control
    • Enforce and defend IP rights worldwide and in cyberspace
    • Conduct due diligence worldwide
    • Advise on forming and maintaining IP holding companies, the transfer of IP rights into such companies and licensing those rights for use
    • Record registered user or license agreement assignments and security interests in connection with transactions
    • Conduct IP audits
  • Know-how, confidential information and trade secrets
    • Analyze affected information and identify appropriate protective measures
    • Design employee policies regarding the treatment of sensitive information
    • Prepare and assist with noncompetition and confidentiality agreement enforcement
    • Advise on implementing security measures
    • Represent clients in trade secret litigation

Take Action
Increased competition, a risky business landscape and the Internet make IP more vulnerable than ever. We help companies protect their mechanical engineering IP and keep their businesses moving forward.

Selected Experience
Sutherland helps Lennox International with patent prosecution, counseling and portfolio management.
Sutherland provides patent prosecution, counseling and portfolio management to Lennox International.