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Intellectual Property

Pietragallo's Intellectual Property group is dedicated to providing quality full-service protection of intellectual property rights in wide-ranging technologies and disciplines. Members of the Intellectual Property group have extensive experience, including:

  • Patentability evaluations
  • Preparation and prosecution of domestic and foreign patent applications
  • Patent validity, infringement and freedom to operate analyses and opinions
  • Patent litigation, including enforcement of patents and defense against claims of patent infringement
  • Post-grant proceedings including inter partes reviews, post grant reviews, and reexamination
  • Trademark and service mark screening and clearances
  • Preparation and prosecution of domestic and foreign trademark and service mark applications
  • Trademark litigation, including enforcement of trademarks and defense against claims of trademark infringement
  • Unfair competition matters, including trade dress, false designation of origin and false advertising issues
  • Trademark opposition and cancellation proceedings
  • Protection of copyrights, including registration and enforcement
  • Protection of trade secret rights
  • Negotiation and preparation of agreements including non-disclosure, license, assignment, development, reseller and value added reseller marketing, software and employment agreements
  • Evaluation and transfer of intellectual property assets in mergers, acquisitions and divestitures
  • Preparation of and counseling regarding research and development contracts, including government and university contracts
  • General intellectual property counseling

Our Intellectual Property attorneys practice in many forums, including the United States Patent and Trademark Office, the United States Copyright Office, foreign intellectual property offices and their appellate boards, Federal District Courts, the Court of Appeals for the Federal Circuit and other Federal Circuit Courts, and the Court of Federal Claims.

Patents

Our patent practice includes all aspects of patent law. Our attorneys have extensive experience prosecuting patents and counseling clients on a wide variety of patent issues. Prior to private practice, our patent attorneys worked as engineers or scientists for various corporations and universities. Our Intellectual Property group benefits from the experience of former in-house patent counsel for several Fortune 100 U.S. Corporations and two former Patent Examiners with the United States Patent and Trademark Office, giving us a broad understanding of the needs of our clients, whether they are individuals just starting in the inventive process or well-established corporations or universities.

We prepare and prosecute numerous patent applications in both the United States and throughout the world through our established network of foreign associates. Some of the technologies with which we have been involved include:

  • Computer Technology
    1. Data Storage Devices and Media
    2. Software
    3. Medical Information Processing and Display Software
    4. Patient Tracking Systems
    5. Interactive Graphics Systems
    6. Character Recognition
  • Electrical/Electronic
    1. Wireless Technology
    2. Microwave and Microelectronic Devices
    3. Digital Broadcasting
    4. Communications
    5. Digital Signal Processing
  • Biomedical
    1. Medical Devices and Equipment
    2. Pharmaceuticals
    3. Diagnostics
    4. Radiation Treatment and Planning
    5. Computer-Assisted Surgical Systems
  • Environmental
    1. Bioremediation
    2. Wastewater Treatment
    3. Oil Absorbents
    4. Oil and Gas Wellpad Liners
    5. Spill Containment Berms
    6. Water Purification
  • Chemical
    1. Coatings
    2. Pigments, Dyes and Toners
    3. Adhesives
    4. Batteries
    5. Pesticides and Herbicides
    6. Explosives
  • Materials
    1. Metallurgy
    2. Ceramics and Glass
    3. Composites
    4. Polymers
    5. Nanomaterials
    6. Semiconductors
    7. Concrete
    8. Low Observable Materials
    9. Armor
    10. Refractories
  • Mechanical
    1. Robotics
    2. Aerospace Technology
    3. Hybrid Vehicles and Fuel Systems
    4. Metal Cutting Tools
    5. Water Pipelines
    6. Power Generation
    7. Railway/Railroad Technology
    8. Materials Processing Equipment
  • Optics
    1. Camera Technology
    2. Image Capture and Generation
    3. Lens Technology
    4. Mirror Systems
    5. Image Encoding
    6. Laser Technology

The firm's patent practice also entails conducting patentability evaluations, patent validity opinions, right-to-use and infringement opinions, patent licensing and assignments, intellectual property due diligence evaluations, and general patent counseling.

Our patent litigation practice combines technical understanding of the substantive issues involved in patents with the talents and resources to effectively manage complex commercial litigation. Our attorneys are experienced in all aspects of patent infringement litigation including enforcement of patents and defense against charges of infringement.

Trademarks

Every business encounters trademark issues. Catchy logos, graphic designs and specific words and phrases can all be used to help distinguish certain products or services from those of competitors with proper use and protection. Our trademark practice assists clients in clearing trademarks for use, obtaining trademark registrations, monitoring trademark registrations for impermissible similar uses, initiating opposition and cancellation proceedings to terminate third party applications and registrations that bear too similar a likeness to our clients' trademarks and service marks, and trademark litigation.

Our attorneys handle domestic clearance and registration of trademarks and service marks with the United States Patent and Trademark Office in virtually every business and technology, and can obtain foreign trademark and service mark registrations throughout the world through our network of foreign associates.

We understand that economic constraints may make for difficult decisions on what marks to protect and in which jurisdictions to do so. That's why we engage in practices that help to avoid the adoption of marks that cannot be effectively used, registered or protected, and carefully evaluate our clients' markets and sales realities to determine where trademark coverage is most effective.

Our trademark litigation practice prosecutes and defends claims of trademark infringement, trade dress infringement, unfair competition, false advertising and trademark dilution. Our attorneys are highly skilled litigators and transactional attorneys well versed in the subtle nuances of trademark and unfair competition law.

Copyrights

We advise clients on how to establish and protect copyright interests. Our copyright practice includes counseling clients on notice and registration procedures, licensing, litigation, fair use analysis and related areas of unfair competition. Our attorneys have extensive experience with copyright protection for a wide variety of subject matters including:

  • Computer Software
  • Trade Materials
  • Books, Articles and Newsletters
  • Architectural Designs and Artwork
  • Music

Our copyright litigation practice is experienced in prosecuting and defending copyright infringement actions, conducting copyright infringement investigations, preparing cease and desist letters and filing all necessary pleadings in Federal Court.

Technology Agreements

Technology agreements are rapidly becoming one of the most highly scrutinized areas of intellectual property law. We have developed our practice to accommodate the needs of our clients with respect to this rapidly growing area of law.

Our attorneys offer a wide variety of services in the technology law area, including:

  • Non-Disclosure Agreements
  • Patent and Trademark License Agreements
  • Joint Development Agreements for Corporations and Universities
  • Material Transfer Agreements
  • Technology Transfer Agreements
  • Software Licensing Agreements
  • Software Development Agreements
  • CRADA and SBIR Contracts for various Federal Agencies
  • DOD, DOE, U.S. Military and other Federal Agency Contracts
  • Web Site Development and Hosting Agreements
  • Terms of Use, Shareware and "Click-Wrap" Licenses
  • Online privacy policies

Business Related Intellectual Property Counseling

Our Intellectual Property group works with our Business attorneys to provide sound business counsel on numerous related matters including:

  • Mergers, Acquisitions and Divestments
  • Employee and Consultant Intellectual Property Ownership Issues
  • Transactions and Licensing
  • Privacy Concerns
  • HIPAA Compliance
  • Gramm-Leach-Bliley Compliance

 

CONTACT

Alan G. Towner
AGT@Pietragallo.com