The Intellectual Property Group at Sideman & Bancroft is on the leading edge of technology and intellectual property law. Setting the pace in this rapidly evolving practice area, we help companies in a broad range of industries address laws and regulations governing national and global commerce, technology uses, branding strategies, inventions and inventorship, media, privacy, data security and creative expression. We provide legal advice and representation in licensing and other transactions in which rights to technology and other intellectual property assets are at issue. We assist clients in protecting their intellectual property assets through registration of trademarks and copyrights and obtaining patents.
Our intellectual property attorneys have extensive experience enforcing intellectual property rights and handling intellectual property disputes, including those involving counterfeiting, infringement of trademarks, copyrights, and patents, and misappropriation of trade secrets. When these matters arise, our experience allows us to offer clients a broad spectrum of responses, from filing takedown requests with online marketplaces, to temporary restraining orders and other equitable remedies, to representation in the courts, and before administrative bodies including the Trademark Trial and Appeal Board and the Patent Trial and Appeal Board, to alternative dispute resolution (ADR), to working with customs officials around the world, and to criminal referral, where appropriate.
AREAS OF CONCENTRATION:
- Technology Transactions
- Online Transactions
- Trademarks – Counseling
- Copyrights – Counseling
- Trade Secrets and Confidentiality
- Social Media
- Intellectual Property Portfolio Audits
- Copyrights – Enforcement
- Trademarks – Enforcement
- Trade Secrets – Enforcement
- Anti-Counterfeiting and Anti-Piracy
- Domain Names
- Patent Licensing
- Patent Litigation and Contested Patent Office Proceedings
- Patent Prosecution
Attorneys in the Intellectual Property Group assist both large and small companies in all areas of technology development and licensing transactions. We regularly draft and negotiate agreements affecting the full range of intellectual property rights, including patents, copyrights, trade secrets, trademarks, trade dress and know-how. Our experience includes domestic and international transactions involving computer software, computers and electronic devices, databases and information rights, and medical technologies. We have substantial expertise in software development and licensing transactions for personal computers, application service providers (ASPs), cloud computing and dedicated embedded systems. We help our technology clients write and negotiate agreements related to technology development, electronic rights, distribution and reselling, end-user licensing, original equipment manufacturers (OEMs), manufacturing of components and electronic and medical devices, and sales or purchases of businesses having substantial technology assets, among other transactions. Our brick-and-mortar clients look to us for assistance with acquisitions of hardware and software systems and investments in technology-related businesses.
We routinely address electronic commerce issues—including privacy and online contracting issues—for a variety of clients, including clients establishing online stores, games and social networks or providing other Internet services. We also advise our clients with regard to the ever-changing landscape of rights in digital content.
Trademarks – Counseling
Whether a client is the owner of a single trademark registration or several hundred, Sideman & Bancroft offers personalized, timely and cost-effective service. We work with clients to design trademark and branding strategies that function best for them, whether in the context of company start-ups or new product rollouts, or taking an existing successful company to the next level of brand protection. We routinely offer advice regarding what, where and when to file, all with an eye toward calculated brand growth and development. Our advice includes counseling as to the availability of proposed trademarks. Our multistage clearance process begins with a basic search and can proceed all the way to a full international search. This maximizes the number of proposed marks searched while minimizing expense.
Upon completing a brand development strategy that fits with a client’s needs, we take action to implement it. Our attorneys provide full representation in relation to trademark registration and enforcement before the United States Patent and Trademark Office. This includes filing and prosecuting applications, maintaining existing registrations, and representing clients before the U.S. Trademark Trial and Appeal Board. We work with our network of trusted foreign legal counsel to implement a global reach.
Copyrights – Counseling
Our attorneys help clients protect their copyrights in valuable works of authorship such as computer software, multimedia products and other technology products; books, articles and other literary works; audiovisual works; works of fine art and design; sound recordings; musical compositions; architectural designs; and other copyrightable works. We regularly analyze the scope of copyright protection available for clients’ works; provide advice on copyrights in the context of the Internet; and work with clients to register, license and otherwise exploit their copyrights.
Trade Secrets and Confidentiality
Sideman & Bancroft regularly assists clients in protecting trade secrets and other confidential information relevant to their technologies, production processes, business and marketing plans, and customer lists. Our efforts include working with our clients to design, negotiate and enforce nondisclosure and non-solicitation agreements, including agreements with employees, to protect company-confidential information. These elements are a part of an overall trade secret protection plan, which we help our clients to develop and implement. We also advise our clients on their rights and obligations when receiving confidential information from others.
From their company blogs to Facebook “like” campaigns, our clients are some of the pioneers of social media, and we have been on their side every step of the way. Whether a company is new to web marketing or fairly sophisticated, our attorneys help identify the unique legal issues associated with a social media presence, including IP protection, advertising and promotions/contests regulations, and privacy concerns.
Intellectual Property Portfolio Audits
Attorneys in the Intellectual Property Group work with clients to assess the strength of their intellectual property assets, including copyrights, trademarks, trade secrets and patents, and to identify potential issues regarding those assets. These assessments may be for internal audit purposes or for the purposes of evaluating existing or potential investments in technology companies or other companies with meaningful intellectual property assets. Sideman & Bancroft also assists clients in resolving issues identified through the audit process.
Trademark portfolios have a tendency to expand. Without a watchful eye, this results in unwanted costs and fees for the trademark owner. We specialize in auditing “runaway portfolios” and have been successful in significantly reducing trademark costs for clients. The goal of these audits is to cut unnecessary expenses while allowing for initiation and maintenance of registrations deemed valuable to our clients and their brands.
Copyrights – Enforcement
The proliferation of electronic media and Internet commerce has dramatically altered and increased the risk of infringement of copyrights and other rights of authorship. Sideman & Bancroft attorneys help clients meet this challenge, as well as protect copyrights in traditional media, by applying litigation skills to protect important interests. This includes infringement litigation involving computer programs, literary works, sound recordings, musical compositions, works of art and design, architectural designs, and many other protectable works. We also are experienced in litigating the often complex issues surrounding disputes involving authorship, ownership, works for hire, copyrightability, originality and fair use.
Trademarks – Enforcement
The value of trademarks, service marks and trade dress is greater than ever before. Our Intellectual Property Group routinely prosecutes and defends infringement, dilution, unfair competition and false advertising claims involving both registered and unregistered trademarks and service marks, in addition to pursuing a wide variety of trade dress claims. We do so in all forums for resolving these types of disputes, including the federal courts, the Trademark Trial and Appeal Board, the state courts, and a variety of alternative dispute resolution settings. Working closely with our Business Crimes Group, we advise technology clients and other brand owners on counterfeiting and customs issues.
Protection of a global brand means understanding risks and concerns regarding enforcement issues in the U.S. as well as in foreign jurisdictions. Our attorneys work with each client to design an individualized plan for protection and enforcement. We have obtained ex parte writs of seizure for counterfeit parts and labels in the U.S. and other countries. In collaboration with local counsel, we also have pursued and defended trademark and service mark claims in numerous jurisdictions around the world.
Trade Secrets – Enforcement
The vast majority of intellectual property assets consist of compilations of confidential information that is not subject to the protections of patent, copyright or trademark laws. Instead, these assets are protected under the body of trade secrets law that gives the owner certain rights to prevent their use or disclosure, providing the owner can demonstrate that the information is, in fact, a trade secret.
Our lawyers regularly handle cases in which the use or disclosure of critical trade secret information is at issue. We have extensive experience with cases in which preliminary injunctive relief has been sought, along with claims of significant monetary damages. Our experience in this area is invaluable to clients facing the threatened use or disclosure of valuable trade secret information or claims that they have engaged in the theft of others’ trade secrets. Our lawyers also have acted for claimants and creative companies on issues relating to the alleged misuse of creative ideas presented in confidence.
Anti-Counterfeiting and Anti-Piracy
Sideman & Bancroft has developed a unique practice referring counterfeiting cases to law enforcement agencies and to prosecuting authorities when a client company has been the victim of a significant crime. We actively collaborate with law enforcement (including the FBI, Secret Service, ICE, and other state and federal law enforcement agencies) in connection with our representation of victimized companies. Our attorneys also have developed and implemented criminal enforcement programs for clients addressing trademark violations (counterfeits) and copyright violations (piracy).
Not every case is appropriate for criminal referral. We assist clients in assessing potential cases, making criminal referrals where appropriate and pursuing civil remedies for counterfeiting and piracy when criminal enforcement is not warranted.
We advise clients on using domain name registrations to protect their valuable brands and reputations. We also advise clients on strategies for dealing with the many changes to the online landscape that will be effected with the imminent opening of new generic top level domains (gTLDs).
Our attorneys are also well versed in arbitrations under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN) and in the alternative dispute mechanisms set up for many individual country code top level domains. We have obtained cancellation or transfer of dozens of domain names that infringed or diluted clients’ marks in multiple domain name arbitrations.
Patent licensing allows a patent owner to generate a revenue stream by permitting others to use their patented invention while giving technology users an umbrella of patent protection to help grow their business. In formulating patent licenses, we draw upon our decades of patent licensing experience to first understand the respective business postures of our client and its counterpart. We draft patent licenses that are clear and understandable to avoid future disputes about the parties’ respective rights and obligations.
Patent Litigation and Contested Patent Office Proceedings
Litigation of patent rights is complicated and, frequently, the stakes are high for both the patent owner and accused infringer. We have decades of experience in skillfully navigating the complexities of patent litigation and obtaining successful results for our clients in district courts, the U.S. International Trade Commission and the Court of Appeals for the Federal Circuit.
When a patent lawsuit is brought, or sometimes even before it is brought, accused infringers have increasingly initiated contested proceedings at the Patent Office, such as reexaminations, inter partes review, interferences and post-grant review, to have the patents declared invalid. We have decades of experience in skillfully handling these types of contested proceedings at the Patent Office and, if necessary, all the way through final hearing at the Patent Trial and Appeal Board.
In a highly competitive marketplace, obtaining broad, enforceable patent rights can mean the difference between success and failure for a technology company. Our technically trained, registered U.S. patent attorneys have obtained U.S. patents for their clients in such fields as medical devices, electronics, computers, mechanical devices, chemicals, consumer products and military equipment. Working with an outstanding network of international associates, our patent attorneys have also obtained international counterpart patents throughout the world. Taking advantage of their extensive experience with litigating and licensing patents, our patent attorneys aggressively endeavor to obtain patents that are broad in scope and enforceable.