Intellectual Property

Intellectual property rights are valuable assets for small and large companies alike. Woods Rogers helps clients identify, manage, protect, and enjoy their valuable IP assets to their fullest potential. Our team is comprised of registered patent attorneys and litigation attorneys who work together to enforce IP and defend against claims of infringement. 

Comprehensive IP Protection

The Intellectual Property (IP) practice group at Woods Rogers provides a comprehensive range of services for IP protection, including:

• Identifying, registering, and protecting all forms of IP, including patents, trademarks, trade secrets, and copyrights
• Patent and Trademark prosecution and appeals
• Patent and Trademark opinions
• Inter Partes Reviews and Post-Grant Reviews at the Patent Trial and Appeal Board of the U.S. Patent Office
• Trademark Trials and Appeals at the Trademark Trial and Appeal Board of the U.S. Trademark Office
• Enforcement and licensing analysis of patent infringement assertions
• Enforcing IP and defending against infringement claims, both in federal district courts and courts of appeals
• Trademark and Patent licensing
• Trade Secret protection programs, including confidentiality and non-disclosure agreements
• Domain name counseling and protection
• Software protection and licensing agreements, including in the fields of Artificial Intelligence and Machine Learning
• Assessment of IP as part of mergers and acquisitions
• IP management and audits
• Association with international counsel regarding protection of IP in other countries

Patents

Patents are often the most valuable asset for a business or an inventor. Woods Rogers assists clients in evaluating their inventions and in preparing and filing patent applications, as well as engaging in patent infringement litigation. Our attorneys provide a full range of services in the patent area including patent prosecution, counseling, licensing, acquisition, litigation, and opposition proceedings.

Our patent work includes counsel on:

• Biotechnology, including medical devices
• Computer applications, including Artificial Intelligence and Machine Learning
• Video game software and development technology
• Life Sciences industry inventions
• Electrical and electronic circuitry, including augmented reality
• Mechanical engineering
• Green technology, including packaging solutions

With offices in key U.S. locations, plus relationships with law firms around the world, we have extensive experience filing and successfully prosecuting U.S. and international patent applications and adjudicating patents post-issuance. We also conduct and supervise prior art searches, such as patentability, landscape validity, and state-of-the-art searches. Woods Rogers also conducts infringement searches and provides infringement and freedom-to-operate opinions.

Trademarks

Most businesses have trademarks eligible for protection—the name of the business, its logo, a tagline, or an advertising slogan—that the business uses to differentiate its products or services in the minds of its customers. Woods Rogers attorneys help clients in choosing, protecting, and enforcing trademarks.  Woods Rogers attorneys also have a deep bench of litigators available for enforcement when a third-party infringes upon existing marks owned by our clients, as well as defending against infringement claims. We also assist businesses in:

• Conducting and reviewing trademark searches
• Advising clients on risks associated with branding decisions
• Preparing and prosecuting trademark applications, both U.S. and internationally
• Implementing trademark policing programs
• Trademark infringement, unfair competition, and false advertising litigation

Copyrights

Copyright protection can be particularly effective for businesses that create software, write instruction manuals, or create artistic or literary works such as movies, photographs, and books. Even businesses that do not create ‘copyrightable’ works must be cognizant of copyright laws to avoid infringement lawsuits and disputes over ownership of ‘copyrightable’ materials.

We assist clients in registering all types of ‘copyrightable’ works with the Copyright Office, as well as bringing and defending copyright infringement claims in federal court.

Trade Secrets

Trade Secret protection, being the easiest to acquire but hardest to maintain, requires a strong understanding of both the confidential and proprietary information, but also the business and operational relationships of the client.  We work with clients to develop cohesive policies and agreements to not only restrict access to confidential information, but also carefully monitor and control granted access.  We also work with clients to ensure accurate recognition of those corporate assets deemed Trade Secrets as a precursor to any protection campaign.

Commercialization, Licensing, and Assignments

The transfer of rights to IP can be an important source of revenue for businesses, most commonly through licenses and assignments. Because licenses and assignments are formal contractual relationships, it is essential that both parties to the transaction have a full understanding of the exact terms of the license.  We assist clients in negotiating and drafting license and assignment agreements, and our attorneys are available to apply experience and familiarity with license and assignments for clients seeking to enter into or enforce these agreements.

• Lead counsel for plaintiff in patent litigation relating to medical device technology.
• Lead counsel for defendants in patent litigation relating to shoe technology.
• Lead counsel in post-grant review procedures before the Patent Trial and Appeal Board at the U.S. Patent & Trademark Office.
• Lead counsel in litigation against multi-national company that settled after complete victory in claims construction (Markman) ruling.
• Pursued and successfully resolved claims against former employees and a competitor of a manufacturer for trade secret misappropriation and unfair competition.
• Pursued trade secret misappropriation claims on behalf of national and foreign companies.
• Pursued trademark infringement claims on behalf of national and foreign companies.
• Managed numerous start-up companies with IP asset development programs, concluding with successful acquisitions by public companies.
• Guided numerous start-ups through multiple raise rounds by developing IP asset development strategies and timelines concurrent with financial raise objectives.
• Defended start-up company against patent infringement claims by having case successfully thrown out.
• Helped defend lucrative electrical engineering patent and license in significant jury trial victory.