Intellectual Property

Chair

Overview

Walter | Haverfield's Intellectual Property (IP) practice group serves independent entrepreneurs, start-ups, Fortune-rated corporations, universities and other research-based institutions, and just about every organization in between. The industries we serve are equally as broad, including financial services, space exploration, manufacturing, high tech, health and food service, gaming, to name just a few. And our geographic coverage is even broader, spanning across the country and even the world.

We offer a full-service approach made possible by our extensive team of seasoned legal professional who focus their practices on all facets of IP law. From procurement and litigation involving patents, trademarks and copyrights to domain names, digital platforms, trade secrets, legal opinions and licensing agreements....we manage and protect them all here in the U.S. and abroad.

Our bench strength and depth of experience allow us to tackle even the most complex IP issues, maximizing opportunities and revenue for our clients, while minimizing their risk for exposure and competitive threats. Working in conjunction with the full resources of the firm, we provide clients with innovative IP strategies and solutions that help them leverage some of their most valuable assets--their intellectual capital.

Experience

The Intellectual Property group’s experience and services include the following:

Patents
  • Prepares and prosecutes hundreds of utility and design patent applications.
  • Representation of a client in the semiconductor industry in an ex parte reexamination proceeding, resulting in a reissued patent.
  • Works with clients in various technology industries including telecommunications, electrical and computer science, gaming, robotics, computer software, e-commerce, digital signal processing, semiconductor chip fabrication, financial services, medical devices, and the mechanical arts.
  • Prepares and prosecutes utility and design patents for high profile domestic and international clients.
  • Prepares patent availability, infringement analysis, and freedom to operate reports.
  • Performs patent searches relating to patent availability and patent infringement.
  • Manages all aspects of international (PCT) and foreign patent applications including communicating with foreign associates.
  • Prepared thousands of replies to Patent Office Actions arguing for the patentability of patent applications.
  • Drafted over a hundred patent applications ranging in technology fields from artificial intelligence, wireless communications, antenna design, semi-conductors and memory chip design, industrial automation, online banking systems, encryption, software defined networking, and network function virtualization.
  • Prepared and filed over 50 new patent applications for a variety of clients having expansive technical fields.
  • Prosecuted numerous patent applications through to allowance as patents in the fields of medical devices, imaging devices, financial software, business methods, and more.
Global IP Management and Protection
  • Experienced in domestic and foreign patent law.
  • Global preparation, procurement, enforcement, and maintenance of trademarks.
  • Works closely with non-U.S. patent and trademark attorneys to secure global IP protection for her clients.
  • Prosecutes foreign patent applications in various European countries through the European Patent Office, as well as the Indian Patent Office, the Korean Intellectual Property Office, and Chinese Patent Office.
  • Consults with foreign companies to achieve U.S. intellectual property protection.
IP Litigation
  • Prepares numerous patentability, non-infringement, and invalidity opinions.
  • Analyzes products in all stages of develop to provide freedom-to-operate opinions.
  • Performs legal research and analysis related to complex IP issues.
  • Drafts patentability and infringement analysis opinions for clients large and small.
  • Provided litigation support through claim analysis and opinion work for International Trade Commission Section 337 investigations.
  • Drafts freedom to operate opinions for emerging businesses with new technology.
Business Related IP Services
  • Counsels clients on best practices related to how to protect and increase the value of their intellectual property.
  • Facilitates numerous ideation and forward-patenting planning sessions.
  • Assists multiple clients with portfolio development related to all components of intellectual property.
  • Performs intellectual property risk management assessments.
  • Performs due diligence of intellectual property for business transactions, including mergers, acquisitions, and licensing agreements.
  • Develops and implementing global IP strategy assistance for inhouse counsel.
  • Works with R&D teams to identify and harvest IP.
  • Design patent portfolio strategies to protect core and emerging business.
Trademarks, Domain Names & Copyrights
  • Provides advice regarding copyright law issues such as ownership, works made for hire, fair use analysis, and use of copyrighted work in educational settings.
  • Prepares and prosecutes trademark applications and obtaining trademark registrations for clients.
  • Prepares numerous trademark clearance opinions.
  • Routinely performs trademark availability searches.
  • Strategically advises clients with recommendations related to selection of trademarks.
  • Representation of a consumer electronics company in trademark opposition proceedings involving a multinational, fortune 500 company.

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