Practice Areas & Industries: Sutherland Asbill & Brennan LLP


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Practice/Industry Group Overview

Leading universities and research institutes call on Sutherland for comprehensive advice on protecting their valuable intellectual property.

Universities and research institutes face unique challenges when developing, protecting and leveraging proprietary technology. For these groups, furthering the organization’s non-profit mission and maintaining its academic reputation add extra layers of complexity to the legal picture. When universities and research facilities need trusted IP advisers, they look to Sutherland’s IP Practice Group to protect patents, trademarks, copyrights and trade secrets. Some of the country’s best-known universities trust us with their most valuable, breakthrough developments. We assist numerous prominent universities in patenting a broad array of research tools to enable further discoveries, with a particular emphasis on the life sciences industry.

We help universities build their patent portfolios, develop and negotiate licensing and technology transfer agreements and, when necessary, diligently enforce IP rights through litigation. Sutherland’s Intellectual Property Practice Group brings an exceptional amount of technical knowledge and industry experience to all of our work. Of our approximately 30 attorneys devoted to IP, a significant number hold advanced technical degrees and are registered to practice before the U.S. Patent and Trademark Office (USPTO).

When litigation presents the best course of action, our attorneys have proven courtroom skills. Our attorneys understand complex technology and can explain it to a judge, jury, arbitrator or mediator. We have represented plaintiffs and defendants in more than 100 trials and legal proceedings in all forums—state, federal and foreign courts; arbitration and mediation inside and outside the United States; and administrative proceedings before the U.S. International Trade Commission (ITC), the USPTO and international patent offices.

Why Sutherland
Significant university client base.
Sutherland’s Intellectual Property Group protects and enforces the IP rights of many prominent universities and research institutes.

National reach. We advise leading universities and research institutes across the United States, Europe and China with their IP issues.

Deep technical knowledge. Many of our attorneys hold degrees in technical fields, including organic chemistry, chemical engineering, computer engineering, electrical engineering, mechanical engineering, molecular genetics, medicine, biomedical engineering, pharmacology and public health. We understand the complexities of the technologies developed by our clients and use that knowledge to efficiently and effectively protect and expand their portfolios.

Academic experience. Our team includes attorneys who previously served as research assistants, engineers and professors, so we are intimately familiar with the inner workings and needs of universities and research institutes.

Nuts and Bolts
Our Intellectual Property Group provides the full range of services to universities and research facilities:

  • Patents
    • Preparing and filing patent applications in all of the technological arts
    • Prosecuting patents in the U.S. and internationally
    • Auditing technology to identify patentable subject matter and developing strategies for protecting it
    • Advising about alternative methods of protecting patentable, commercially valuable information
    • Mapping client patents and/or competitor patents for strategic analysis
    • Developing and implementing patent programs to grow and manage a patent portfolio
    • Performing due diligence reviews and negotiating IP-related provisions in mergers and acquisitions
    • Preparing non-infringement invalidity and clearance opinions with regard to patents
    • Analyzing and advising infringement claims of patent-holding organizations
    • Drafting, negotiating and advising about technology development and acquisition or licensing
    • Litigating issues of ownership, licensing, validity and infringement
  • Trademarks and service marks
    • Counseling clients about their choice of names and marks, including performing searches to determine the availability of names and marks for use and/or registration.
    • Preparing and filing trademark applications in the U.S. and abroad
    • Prosecuting trademark applications
    • Advising about marketing and advertising brands, products and services as they relate to trademark use and protection
    • Policing potentially infringing uses of our clients’ marks online and around the world
    • Representing clients in opposition and cancellation proceedings before the USPTO’s Trademark Trial and Appeal Board and advising clients in connection with foreign opposition or cancellation proceedings
    • Supervising trademark audits and performing due diligence as part of corporate structuring and restructuring
    • Counseling clients about resolving conflicts concerning trademark or service mark infringement, unfair competition, trade practices and related matters
    • Handling issues relating to the transfer of marks or rights, such as by licensing, assignment, security agreements, mergers or acquisitions
    • Litigating in federal and state courts involving issues of trademark grants, infringement and dilution, unfair trade practices, licensing and assignment
    • Representing clients in Section 337 cases before the International Trade Commission
    • Representing clients in domain name arbitration proceedings
  • Copyrights
    • Establishing ownership of copyrighted works
    • Registering copyrights
    • Handling licensing, transfer and assignment
    • Litigating claims of infringement and related matters
  • Trade secrets and other confidential information
    • Assisting in analyzing affected information and identifying appropriate protective measures
    • Designing employee policies regarding the treatment of sensitive information
    • Preparing and assisting in enforcing non-competition and confidentiality agreements
    • Advising clients on implementing security measures
    • Representing clients in trade secret litigation

Take Action
Protecting and licensing proprietary technologies present significant opportunities and unique issues for universities and research institutes. Sutherland attorneys know how to identify proprietary technology, leverage it to achieve the organizational goals and strategically defend it.

Selected Experience
Sutherland secures patent protection for a leading research university’s proprietary biotechnology inventions.
We provide patent prosecution and counseling services to a top research university and have secured patent protection for their numerous biotechnology innovations.

Sutherland provides patent prosecution and counseling to university for numerous medical technologies.
Sutherland provides patent prosecution and counseling services to a renowned research university for bioadhesives, implantable drug delivery devices, viral particle traps for viral load detection, oxygen sensors and cardiac biomarkers of medical product technologies.

Sutherland represents University of Georgia Research Foundation in pharmaceutical patent litigation.
Sutherland represented this university technology transfer organization in a lawsuit involving a unique combination of disputes involving the ownership, monetization and licensing of pharmaceutical patents. The case settled after Sutherland defeated numerous claims by the patent inventor in summary judgment, including terminating an exclusive field of use license, and dismissing the inventor/licensee’s claims of ownership of the patent and breach of fiduciary duty.