Sonnenschein’s Intellectual Property & Technology (IPT) practice includes some 30 licensed patent attorneys with technical expertise in electrical engineering and semiconductors; computer science and cryptography; telecommunications; aerospace and mechanical engineering; and chemistry, pharmaceutical, biotech and medical devices. Our experienced patent lawyers include several with Ph.D.’s in fields such as botany, molecular genetics and cell biology. We regularly represent the inventors, creators, owners, licensees and users of patents, trademarks, copyrights and other intellectual property. We have managed some of the best-known technology portfolios, brand identities and copyright works. In addition to our work in the prosecution of patent, trademark and copyright applications before the relevant government agencies domestically and internationally, we are known for our strategic approach in counseling and transactions, helping our clients achieve the results they seek in their intellectual property matters.
When disputes arise or are threatened concerning these rights, we have experienced litigators whose practice focuses on litigating all aspects of intellectual property law in the state and federal courts and administrative tribunals. We have handled significant and landmark proceedings concerning intellectual property matters before state and federal trial courts throughout the U.S., numerous appellate courts (including the Court of Appeals for the Federal Circuit), the International Trade Commission, the U.S. Patent and Trademark Office and the U.S. Copyright Office. Our ranks include former law clerks and examiners who have worked within many of these courts and agencies.
As warranted to fulfill our clients’ needs, the members of Sonnenschein’s IPT group regularly join forces with other Sonnenschein attorneys who concentrate in the breadth of areas that make our firm unique, such as Internet security, franchising, international trade, antitrust, labor and employment, and taxation. Our multidisciplinary team approach allows us to provide our clients with a broader perspective on how intellectual property issues affect key legal and business decisions.
Capabilities and Experience
Sonnenschein has significant experience representing companies and individuals involved in the development, production, advancement and exploitation of technology, information, brands and artistic creations. Our clients include established companies with teams of researchers, as well as start-ups and emerging growth companies on the cutting edge of the technology of tomorrow. Our practice and our experience reflect the reality that issues related to intellectual property command growing importance and attention for companies in virtually every type of business in today's technology-driven global economy.
Our capabilities and experience in intellectual property matters fall generally within the following broad categories: planning, prosecution and implementation of intellectual property protection; licensing and transactional matters; infringement and other disputes; and international. The following summaries provide a brief overview of our experience in each of these categories.
Planning, Prosecution and Implementation Services
Our licensed patent attorneys draw upon their technical backgrounds in taking invention disclosures and preparing and prosecuting patent applications for our client's inventions. We prosecute patents with a trained eye toward withstanding the challenges they may later face in licensing negotiations or litigation. We handle patent prosecution in the U.S. and oversee prosecution in foreign patent offices through our worldwide network of patent counsel. We are skilled at patent portfolio management, helping clients expand or cull their portfolios to achieve the desired balance to best develop and leverage their holdings. We provide carefully crafted opinions on the patentability of our clients' inventions and analyzing our clients’ rights to use their technical innovations free of charges of patent infringement.
We routinely assist clients with the selection and clearance of new brands and logos as trademarks for a wide variety of products and services in many fields. We prepare opinions on availability and counsel clients on nuances of use and notice. We handle the preparation and prosecution of applications for registration of trademarks in the U.S. and supervise protection programs on a worldwide basis using our network of foreign counsel. We also handle copyright clearance and registration for artistic, architectural, software, audiovisual works (such as computer games) and other types of works.
We help clients in developing their Internet presence and marketing campaigns, preparing web site privacy policies, terms of use, email programs and customer service operations. For online and offline advertising campaigns, we work with clients on copy clearance, sweepstakes, promotions and contests. We advise clients on protection of their valuable trade secrets through internal and external policies and procedures.
Licensing and Transactional Matters
Exploitation of intellectual property goes beyond the owners' direct use into licensing, joint marketing, joint development, publishing, distribution and other activities. Sonnenschein's intellectual property lawyers have worked with numerous clients on the structure, negotiation, development, drafting and implementation of diverse licensing arrangements, joint ventures, collaborations, acquisitions, dispositions and other contractual agreements. We achieve creative solutions addressing non-competition and exclusivity issues, employee and independent contractor relationships, financing and sales transactions, multinational alternative dispute resolution, cross licensing, coexistence agreements and much more.
We have extensive experience with merchandise licensing programs for clients who wish to expand the reach of their brands both domestically and internationally. Our lawyers have been in the forefront of the burgeoning field of computer law; several of our patent attorneys have technical backgrounds in computer science, and we have handled all aspects of hardware and software design, development, testing, production, licensing, maintenance, escrow and related contracts. Our representations run the gamut of such Internet-related deals as web site development and hosting, ASP and exchange agreements, affiliate agreements, email marketing campaigns and other agreements for monetizing Web traffic. We have handled the intellectual property aspects, including due diligence, of major loans, asset sales, and other transactions in which intellectual property may serve as collateral or be transferred.
In addition, our intellectual property lawyers handle publishing deals, production of documentaries and television series, model and talent agreements, and other rights agreements for clients in the entertainment, communications and new media fields.
Infringement and Other Litigation
Our experience in patent, trademark, copyright and trade secret infringement litigation and other types of litigation involving intellectual property includes developing and pursuing policing programs, pursuing infringers and counterfeiters, and defending infringement claims and actions. Our clients have enjoyed our successful pursuit of their interests through temporary restraining orders, preliminary injunctions, Markman hearings, and jury and bench trials. We also have extensive experience in alternative dispute resolution, mediations and arbitrations.
Our litigation takes us into state and federal courts across the country. With the recent opening of our Dallas office, we are poised to be a leader in the patent litigation epicenter of the Eastern District of Texas. Our experienced patent litigators have handled major patent cases before the International Trade Commission (ITC) and significant appeals in the Court of Appeals for the Federal Circuit. We also handle complex and technical procedures in the Patent and Trademark Office, such as patent interferences, strategic reexaminations, trademark oppositions and cancellation proceedings. Our lawyers actively address domain name disputes under the Anticybersquatting Consumer Protection Act and the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Policy (UDRP). We also serve as panelists deciding multinational trademark disputes over domain names under the UDRP.
International Activities
Sonnenschein's lPT group includes an active and extensive international trademark and patent practice. The firm has established a network of foreign counsel—local intellectual property practitioners in countries around the world—who provide vast and wide-ranging expertise in the laws of the countries in which the firm's clients conduct business, source manufacturing, distribute products or chase infringements and counterfeits. This network enables us to combine our familiarity with our clients' needs with our foreign counsels' practical knowledge of the local laws in their respective countries. As a result, we are able to oversee and direct the work of our foreign counsel, in prosecution, counseling, transactions and disputes, in an effective and comprehensive manner.
In addition to patents and trademarks, our international intellectual property practice encompasses advising clients on copyrights, advertising, sweepstakes, contests and promotions, franchising and distribution issues, trade secrets, encryption and technology transfer issues, packaging and labeling, money transfers and other international issues. We have the benefit of consulting with other members of the firm with additional international experience. Our international efforts have serviced domestic companies expanding to new territories outside of the U.S. and clients based in countries outside the U.S. seeking to enter the lucrative U.S. market.
