Phillips Lytle’s Intellectual Property (IP) attorneys offer a full range of services to secure, defend and enforce our clients’ IP rights, including litigation, prosecution, licensing and technology transfers, and general counseling on intellectual property law.
Our IP attorneys have represented numerous U.S. and Canadian businesses in matters including patent and trademark prosecution, infringement and validity studies, and complex infringement litigation. These matters cover a broad range of technological disciplines, including those related to mechanical, electrical, computing and software fields, as well as those involving business methods and medical devices.
Our work in brand protection and intellectual property spans across multiple industries and professional fields. Examples of the areas where we excel in Intellectual Property includes:
Our Intellectual Property Team has developed trademark and brand protection strategies for some of the country’s most recognized brands. We’ve also coordinated anti-counterfeiting and other enforcement efforts for industry leaders. In addition, we have years of experience counseling clients in selecting and considering the availability of trademarks and service marks for use, as well as managing trademark portfolios worldwide.
Our trademark attorneys file and prosecute domestic and foreign trademark applications all over the world and are well versed in registering trademarks with U.S. Customs and Border Protection to combat counterfeiting. Our customized docketing system is updated frequently to help keep us abreast of ever-changing trademark laws. This positions the firm to offer comprehensive counsel and representation to clients in need of an intellectual property lawyer.
The Litigation attorneys on our Intellectual Property Team have extensive experience in copyright infringement litigation, representing both plaintiffs and defendants in intellectual property matters.
Representative cases of providing intellectual property protections in copyright cases include:
On behalf of two Buffalo firefighters, we successfully litigated a copyright infringement action against a major motion picture studio concerning the film Backdraft.
Our attorneys acted as lead counsel in a copyright and trademark action in Seattle where we successfully secured insurance coverage for our client. Following significant discovery, a settlement was reached during mediation.
Phillips Lytle offers web-related intellectual property services to our clients. Our Intellectual Property lawyers resolve disputes that involve domain names and draft website development, hosting and application service provider agreements, as well as terms and conditions of use agreements. We also provide legal advice related to Internet trademark use and licensing, and we have successfully resolved “cybersquatting” issues with minimal cost through domain name arbitration proceedings under the Uniform Domain-Name Dispute-Resolution Policy.
We have represented clients in cases involving insurance coverage for intellectual property claims and successfully obtained insurance defense for many who have been charged with infringement.
Our IP attorneys have extensive experience in negotiating and drafting technology transfer and related agreements employed in the commercialization of intellectual property. These include license agreements, technology transfer agreements, joint venture agreements, confidentiality agreements, consulting agreements, endorsement agreements, research agreements and production agreements.
Together with our Corporate and Business Law attorneys and Commercial Contracts attorneys, our Intellectual Property Team negotiates complex joint ventures, strategic alliances and licenses in domestic and international arenas. Such matters have included licensing arrangements with major research universities and large multinational corporations, as well as smaller, customized arrangements between companies wishing to share intellectual property, research resources and marketing opportunities. The subject matter of these agreements covers all types of intellectual property, including trademarks, patents, trade secrets and know-how, and copyrights, as well as various categories of technical arts such as genetically modified plants, medical devices, manufacturing processes, information technologies and multimedia works.
In addition to patent prosecution, our Intellectual Property lawyers regularly counsel clients with respect to patent claim scope and associated design issues, render invalidity and non-infringement opinions, and conduct freedom-to-operate studies across a wide range of industries.
The Litigation attorneys in our Intellectual Property Practice have extensive experience in prosecuting and defending actions for patent infringement before U.S. District Courts nationwide, as well as the Federal Circuit Court of Appeals. While patent disputes include some of the same legal issues as traditional business litigation, they also require litigators with more technical proficiency. Litigation attorneys at Phillips Lytle have extensive skill in managing intellectual property law matters as they pertain to patent litigation, protection of trade secrets and other key aspects of intellectual property law.
Our attorneys have acted as lead counsel in multiple patent infringement actions in Chicago, San Francisco, Cleveland and Seattle. The patentee was the worldwide leader in artificial turf systems. And, during the course of the litigation, our client became the second largest turf company in the country.
This litigation involved four separate patents covering artificial turf and was originally focused on high-profile turf projects at the Baltimore Ravens’ NFL stadium and UC Berkeley’s Memorial Stadium. We successfully opposed two separate temporary restraining order (TRO) motions, prevailed on a TRO motion relating to unfair competition, conducted a Markman hearing in Chicago, and conducted numerous fact and expert depositions throughout North America.
Attorneys from our Intellectual Property Team acted as lead counsel for a logging equipment manufacturer in three separate actions against a Fortune 100 industry leader. With venues in New York and Iowa, these actions related to three patents on tree-felling equipment. The lawsuits settled after significant discovery, a motion practice, and a Markman briefing.
We defended a dental restoration manufacturer in a patent infringement action in Connecticut District Court. After an evidentiary hearing, we successfully opposed a preliminary injunction motion, which was upheld on appeal to the Federal Circuit. The case eventually was tried before a jury, where we obtained a verdict in our client’s favor invalidating the subject patents.
We acted as lead counsel for a Canadian manufacturer of municipal/industrial valves in a patent action relating to energy-dissipating valves. Through mediation, we obtained a favorable consent decree from the court for our client.
We acted as lead counsel for the defendant in an infringement matter relating to commercial Vertical Package Air Conditioner (VPAC) units in the Western District of Texas. Our attorneys reached a favorable settlement through mediation in Dallas.
Our attorneys have extensive experience in preparing and prosecuting patent applications in virtually all technical disciplines, including those involving mechanical and electrical fields, medical devices, and computer hardware and software. And we’ve assisted clients small and large alike–from independent inventors to multinational technology companies.
Our patent attorneys make it their mission to meet directly with inventors in order to draft claims interactively, thereby enabling the “generic invention,” as opposed to the “species solution,” to be protected.
Our IP attorneys have broad experience dealing directly with the examiners at the United States Patent and Trademark Office and, when necessary, with the Patent Trial and Appeal Board on appeals as well as reexamination and reissue proceedings. In addition, we also regularly file and prosecute foreign patent applications under the Patent Cooperation Treaty. We have developed strong working relationships with 95 international law firms in 71 countries, allowing us to assist clients in obtaining patent protection and intellectual property laws all over the world.
The Litigation attorneys in our Intellectual Property Practice have extensive experience prosecuting and defending actions for trademark and trade dress infringement before state and federal U.S. District Courts nationwide.
Cases related to trademark protection include:
We defended a trademark infringement action brought on by Harley Davidson in an attempt to protect intellectual property. The case centered around the right to use the term “hog” and was tried by a jury in the Western District of New York. On appeal to the Second Circuit, we were successful in upholding the trial court’s decision that the term “hog” was generic with respect to motorcycles and, therefore, could not be asserted against our client.
We represented the defendant in a trade dress infringement action relating to the availability of trade dress protection upon expiration of design and utility patents. We successfully secured insurance defense for our client and, after discovery and motion practice, tried the case in the Western District of New York.
We brought trademark violation action against a New York City apparel company for infringement of our client’s trademarks and trade dress. After mediation, we obtained a favorable consent decree for our client.
We acted as lead counsel in a trademark infringement action in Madison, Wisconsin. The plaintiff was a leading supplier of trademark search and brand monitoring services, while our client was a more recent player in the market. After significant discovery, a favorable settlement was reached on the eve of expert/summary judgment deadlines.
We defended a trade dress infringement action in the Northern District of Illinois. Phillips Lytle Intellectual Property attorneys successfully secured insurance coverage for our client under its commercial general liability policy, and a favorable settlement was reached after significant discovery.
Our Intellectual Property attorneys regularly represent clients in right-to-register trademark opposition and cancellation proceedings in the United States Patent and Trademark Office before the Trademark Trial and Appeal Board.
Intellectual property (IP) is any creation of the mind that is legally protected against unauthorized use, imitation or reproduction. Common categories of IP include trademarks, trade secrets, copyrights and patents.
IP protection differs between countries, and it is recommended to pursue specific IP counseling for any country where protection or enforcement is desired. Phillips Lytle’s IP attorneys have a network of trusted foreign associates who assist us in protecting IP for our clients across the globe.
An IP attorney will work with you to develop and implement an intellectual property strategy that is tailored to your unique goals and circumstances. This process involves identifying the assets that either already possess or have the potential to require intellectual property protection, and determining how those assets fit into your business model and unique needs. Based on those findings, an IP attorney will advise you in developing and implementing a personalized intellectual property strategy that may include obtaining governmental copyright or trademark registrations, pursuing federal or foreign patent protection, obtaining necessary assignments, implementing confidentiality policies and protocols, implementing invention disclosure protocols, and reviewing employment agreements for confidentiality and IP ownership provisions.
Your IP strategy may evolve with your business goals, market changes, and other strategic decisions. Your IP attorney will maintain an open dialogue to best protect and leverage your IP assets to your benefit. An ongoing relationship also allows an intellectual property lawyer to advise you on licensing, selling, marketing, or enforcing any of your IP rights or assets.
A trademark is a sign or mark that distinguishes the goods or services of an entity from other goods or services on the market. A trademark may have certain common-law rights automatically once it is used in commerce in connection with the good or services it is related to, but the common-law rights are limited by geography (among other limitations). In order to maintain your trademark rights, you must be able to demonstrate continuous commercial use of the trademark.
Common marks include symbols, brand names, logos and slogans.
A trade secret is any commercially-valuable confidential information that derives value from its secrecy or exclusivity. A key characteristic of a trade secret is that it cannot be reverse-engineered or discovered independently by a third party using publicly available resources. Trade secrets are protected against misappropriation and unauthorized use by persons who gained access to the information legally or illegally (e.g., former employee, theft, breach of confidentiality). Trade secret protection does not require an application or registration, but you need to take reasonable steps to protect the secrecy of the information, including password protection, need-to-know access, confidentiality policies, non-disclosure agreements and restricted physical access.
Common types of trade secrets include client lists, client data, source code, methods, recipes, formulas and datasets for training AI tools.
Copyright protects original expressions of authorship or artistry fixed in a tangible medium. Copyright rights automatically belong to the author of the work, unless the work was commissioned under a “work-for-hire” agreement. These agreements are legally complex and should be drafted or reviewed by an intellectual property lawyer. While copyright rights are automatic, an author or owner can elect to file for a copyright registration at the U.S. Copyright Office. Copyright registration affords certain advantages in enforcement, and a registration is required to file a lawsuit for copyright infringement.
Common types of copyrighted works include books, music, photographs, film, poems, articles, blogs, digital art, graphic designs, paintings, murals, illustrations and computer code.
Both copyright and trademark are forms of intellectual property protection. In fact, a single asset may be protected by both copyright and trademark (e.g., a stylized logo design). Copyright and trademark present different opportunities for protection and enforcement and they are governed by separate federal statutes. An IP attorney can help you identify the types of IP protection appropriate for your assets, and can also advise you on how to best structure your IP portfolio to support your specific goals.
Patent protection provides a patent owner the right to prevent any party from making, using, selling, offering for sale or importing anything that infringes a claim of the patent. Patent claims are written descriptions of the invention that describe the scope of protection for the invention. A patentable invention is a machine, article of manufacture, process, composition of matter or any improvement thereof, which the U.S.P.T.O. has determined is useful, novel and non-obvious. The process to obtain a patent is complex and time-sensitive, and it is important to consult an IP attorney as soon as a potential invention is identified to ensure full protection.
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