Intellectual Property

Intellectual Property Services

Prior to private practice, our attorneys worked as engineers, scientists and research associates for various corporations and universities. Leech Tishman’s IP group benefits from the experience of former in-house IP counsel for several Fortune 100 companies and a former Patent Examiner with the U.S. Patent and Trademark Office, giving our team a broad understanding of the technical needs of our clients.

Some of the technologies we serve include:

• Chemicals
• Electrical/electronics
• Mechanical
• Materials
• Biomedical/life sciences
• Medical devices
• Computers/software
• Environmental
• Optics
• Nanotechnology

Patents

Whether our client is just starting the inventive process or are a well-established corporation or university, Leech Tishman’s patent attorneys are prepared to assist in all aspects of patent law, from patentability evaluations through to post-grant proceedings. We prepare and prosecute numerous patent applications in both the U.S. and throughout the world through our established network of foreign associates.

Leech Tishman’s Patent practice assists clients with:

• Patentability evaluations
• Preparation and prosecution of domestic/foreign patent applications
• Patent validity, infringement and freedom to operate analyses and opinions
• Patent licensing and assignments
• IP due diligence evaluations
• Patent litigation, including enforcement of patents and defense against claims of patent infringement
• Post-grant proceedings including inter partes reviews, post grant reviews and reexaminations

Trademarks

Leech Tishman’s Trademark practice assists clients in all aspects of trademark law. Our IP attorneys handle domestic clearance and registration of trademarks and service marks with the U.S. Patent and Trademark Office in virtually every business and technology, and can obtain foreign trademark and service mark registrations throughout the world. We are highly skilled in assisting clients with market projections and sale realities to determine where trademark coverage makes economic sense for their business.

Leech Tishman’s Trademark practice assists clients with:

• Trademark and service mark screening and clearances
• Preparation and prosecution of domestic/foreign trademark/service mark applications
• Monitoring trademark registrations for impermissible similar uses
• 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

Copyrights

Our Copyright team regularly advises clients on how to best establish and protect copyright interests and have a depth of experience in counseling clients on all aspects of copyright law. Leech Tishman has obtained copyright protection for a wide variety of subject matters including computer software, trade materials, books, articles and newsletters, architectural designs, artwork and music.

Leech Tishman’s Copyright practice assists clients with:

• Notice and registration procedures
• Protection of copyrights, including enforcement
• Licensing
• Litigation
• Fair use analysis and related areas of unfair competition

Trade Secrets

Leech Tishman’s Trade Secret Practice counsels clients on the protection of information and/or technology that is not protectable under patent, trademark and copyright law.

Our attorneys assist clients with a variety of trade secret issues including:

• Development of trade secret protection programs
• Creating employee handbooks and non-competition agreements, confidentiality agreements and non-solicitation agreements
• Defense against claims of misappropriation
• Obtaining temporary, preliminary or permanent injunctive relief to prevent the loss the trade secrets
• Conducting trade secret audits
• Licensing trade secret information
• Trade secret litigation

Technology Agreements

Technology agreements are rapidly becoming one of the most highly scrutinized areas of IP law.

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

• 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
• Website development and hosting agreements
• Terms of use, shareware and “Click-Wrap” licenses
• Online privacy policies

Intellectual Property Counseling

Leech Tishman’s IP attorneys work closely with our Corporate Practice Group to provide clients with sound business counsel on numerous related matters including:

• Evaluation and transfer of IP assets in mergers, acquisitions and divestitures
• Preparation and counseling regarding research and development contracts, including government and university contracts
• Employee and consultant IP ownership issues
• Transactions and licensing
• Privacy concerns
• HIPAA compliance
• Gramm-Leach-Bliley compliance
• General IP counseling