With nearly 200 lawyers, the Intellectual Property and Technology practice group of DLA Piper is among the ten largest IP practices in the US, according to the 2007 survey by Managing Intellectual Property magazine. DLA Piper was also recently recognized as one of the top law firms that "The 50 Most Innovative Companies in the World" rely on to protect their intellectual property (IP Law & Business, 2008).

DLA Piper's highly-regarded patent litigation group is ranked as one of the top US practices in patent litigation (IP Law & Business, 2004-2009). Notably, we have won 18 out of 21 patent trials since 2002. Our patent prosecution team, which includes more than 60 lawyers admitted to practice before the United States Patent and Trademark Office (USPTO), has vast experience in prosecuting patents and helping clients maximize business returns. Additionally, more than 60 of DLA Piper's lawyers have advanced scientific degrees, providing the technical depth many emerging growth businesses and Fortune 1000 companies require.

Our extremely active trademark group manages more than 50,000 trademarks in over 150 countries. In fact, recent surveys in Intellectual Property Today (2004-2010) ranked DLA Piper as one of the top five law firms in US trademark registrations, based on the number of trademarks registered with the USPTO. We represent a broad variety of clients, including many of the top 100 global brands.

We help industry-leading companies develop IP asset management and protection strategies designed to manage risk, continue growth and protect market share. The group advises clients on how to best leverage IP assets into revenue streams through licensing agreements, royalty structures, and other dispositions. The group's lawyers also undertake IP due diligence and IP audits for clients looking to make acquisitions or venture capital investments.

For clients whose business models depend on strategic collaborations with other companies, our lawyers help form joint ventures and strategic alliances, channel and distribution agreements, and joint research and development agreements. We have also formulated OEM/software licensing and outsourcing agreements for some of the largest companies in the world.

The IP group boasts a large number of highly regarded trial lawyers who have represented clients in complex IP disputes, including disagreements over IP ownership, value, and validity. Although our lawyers are well-known for patent and trademark litigation, particularly in the technology, consumer, and retail industries, we also handle trade secret, trade dress, and copyright disputes for clients in these and other industries. We advocate arbitration, mediation, and other forms of alternative dispute resolution, when these options are in the client’s best interests.

Not only do our lawyers provide clients with comprehensive representation in core IP areas (patents, copyrights, trademarks, and IP litigation), the group also advises clients on IP-related matters, such as advertising and promotion law, data security, digital media content, e-commerce/Internet transactions, and privacy protection. We also help clients develop compliance programs in response to new corporate policies or federal, state, and local government regulations, including assisting clients with internal IP, privacy, or quality control audits.

The Intellectual Property and Technology practice group handles all aspects of IP matters for our clients, including:

Trademarks

Domestic Prosecution and Counseling

• counseling clients on the proper use, selection and protection of trademarks, including strategies to reduce exposure for infringement of the rights of others and strategies to maximize the protection of valuable IP rights;
• strategic trademark portfolio management and counseling to position and protect famous or well known marks, as well as extending brands into new product lines;
• conducting and evaluating trademark searches to determine the availability of marks considered by clients or to locate marks of competitors;
• preparation, filing, and prosecution of applications to register trademarks at the state and federal levels and internationally;
• preparation and filing of affidavits of use and renewal applications;
• litigating trademark opposition and cancellation proceedings in the PTO, and trademark, copyright, and patent infringement actions in federal and state courts;
• handling opposition proceedings and litigation involving marks in more than 200 countries around the world;
• preparation of license agreements, trademark distribution agreements, confidentiality agreements, and know-how licenses and IP transfer agreements;
• maintaining a computerized database of client marks and monitoring the status of our clients’ trademark applications and registrations;
• preparation and recording of trademark assignments and security agreements;
• conducting due diligence on trademark assets both with respect to PTO status and use in the marketplace in the context of complex mergers and acquisitions, financing, and other transactions;
• registration of trade or fictitious names under state laws; and
• Internet domain name disputes.

We understand that time is valuable when it comes to finding a brand, preparing marketing materials, and going to market. We offer preliminary name searching capability through available on-line trademark databases and can typically respond to a request for a preliminary trademark search within a day, or even faster if necessary. We report on the results of full searches within a day of receiving the search reports. We have established relationships with outside search vendors and “runners” who can quickly obtain materials from the United States Patent and Trademark Office. We regularly review our clients’ marketing, promotional materials, and web sites for appropriate trademark usage and the inclusion of adequate proprietary rights legends and terms.

International

We deal extensively with international trademarks as well, working with extensive resources within DLA Piper as well as with a network of established trademark counsel worldwide, through whom we are able to offer the same services on an international basis that we offer domestically. We are also actively involved in designing global trademark protection strategies for a number of our clients, including taking advantage of available group filings and convention filings. We handle international trademark litigation and enforcement actions (including police raids). We regularly review and report to clients on worldwide watch and alert services to which our clients subscribe for possibly-infringing activity overseas.

DLA Piper has lawyers in the United States and 29 other countries worldwide who have extensive experience in trademark prosecution and litigation. We also maintain a network of primary associates in many countries who concentrate in these areas. We monitor and supervise our foreign associates by reviewing their quality of services, responsiveness, and costs. Since we work with a number of associates in many countries, we have a basis for comparing the service we receive from each of our foreign associates and their fees. The volume of work that we send to foreign associates puts us in the position of a preferred customer, entitled to superior services and immediate responsiveness when requested. We also probe the advice provided by our foreign associates based on our own knowledge of foreign trademark law as another way of measuring quality of services.

Transactional

Our IP lawyers have extensive experience in negotiating and drafting documents relating to rights to use trademarks and other IP, including license agreements in a variety of industries, transfer and security documents, electronic contracts for use of downloadable properties, concurrent use agreements, manufacturing, private labeling, distribution, and collaborative agreements, and marketing ventures. We have done extensive work in drafting securities disclosure statements relating to intellectual properties, and participate in perfecting security interests with respect to these properties. We routinely conduct audits of our clients’ IP portfolios and procedures. We counsel clients on structural issues for establishing IP holding companies, and implemented those procedures. We have conducted presentations for our clients, and particularly their marketing departments, on proper trademark usage and how to best develop strong and protectable trademarks. We have also prepared trademark use manuals for our clients.

Patents

DLA Piper's Patent practice consists of more than 60 lawyers who are admitted to practice before the United States Patent and Trademark Office (USPTO) and handle all aspects of patent matters, including:

• evaluating new technology for patentability, including conferences with a client’s engineers, scientists and other technical employees;
• formulating and carrying out patentability and right-to-use searches of the prior art through various computer databases through the USPTO files in Washington, DC;
• preparation, filing, and prosecution of patent applications in the USPTO and in counterpart entities in foreign countries, including the European Patent Office--including Patent Cooperation Treaty applications;
• maintaining a computer database of clients’ patents to provide reminders of amendments and renewal deadlines, and handling the maintenance fees for patents;
• preparation of “cease and desist” letters to enforce patent rights, and responding to such letters when clients are accused of infringing upon someone else’s rights;
• handling reexamination and reissue proceedings in the USPTO and patent infringement actions in federal courts nationwide; and
• preparation of patent license agreements, confidentiality agreements, know-how licenses, and IP transfer agreements.

The Patent group maintains two full-time patent paralegals and a patent docketing clerk to manage the details of our active patent prosecution practice. Our docketing staff ensures timely responses to outstanding communications from the USPTO and from foreign patent offices, timely notification to the client of foreign filing deadlines, issue fee payment dates, and patent annuities.

A number of sophisticated searching techniques are employed in connection with searches conducted for patent prosecution functions, right-to-use investigations, non-infringement opinions, validity opinions and due diligence efforts in support of acquisition and licensing situations, including the use of both manual and computerized searches through the USPTO database, the information available in The Hague, and the Japanese patent literature. In addition, we use and have experience with reliable investigators and technical experts selected from academia, both for their credentials and their proven ability to peruse the literature to find relevant unpatented prior art.

Further, the patent team undertakes regular "good and welfare" meetings with in-house counsel and with any business or operating personnel affected by the patent services. Holding these meetings on a regular basis each year (or as desired) can be an effective method of ensuring that matters are handled in a prompt and responsive manner and any outstanding concerns are resolved promptly. As part of these regular meetings or as a separate program, we can present educational segments or full-fledged seminars on particular existing or emerging aspects of patent law or practice.

Copyrights and Software

Our patent practice is international in scope. On behalf of our clients we are responsible for patents and applications in more than 165 countries.

• counseling clients on the protection, exploitation, registration, and enforcement of proprietary rights in copyrights, software, and computer databases including preparation of copyright licenses, source code escrows, software licenses, and software development agreements;
• counseling clients on the protection of content on the Internet;
• copyright infringement determinations and enforcement of proprietary rights in software and copyrights in courts nationwide;
• preparation of software development agreements;
• assisting clients in the acquisition and sale of computer systems, software, hardware, and networks;
• evaluating ownership of copyrighted works, including work-for-hire issues;
• determining the subsistence of copyright in works under the 1909 and the 1976 statutes;
• preparing and prosecuting copyright registration applications, including computer works and Internet properties;
• “fair use” determinations;
• database and compilation protection issues, including advising on the currently evolving framework and proposed legislative actions on database protection, both domestically and in Europe;
• transfers of copyrights;
• representing clients in copyright infringement litigation, both in enforcing rights in copyrighted works, including action against software and other counterfeiters, and defending clients in claims of copyright infringement; and
• E-commerce considerations, including jurisdictional issues for infringement actions, linking, metatags, and content distribution rights.

In particular, in addition to the traditional copyright functions, we have extensive experience in the area of copyrights and computer/electronic works. Our lawyers have been extensively involved in the development of copyright treaties before the World Intellectual Property Organization and the passage of pivotal legislation in Congress which sets the framework for copyright protection and the Internet (Digital Copyright Millennium Act). We also assist our clients with issues relating to copyright management and anticircumvention devices, software encryption, and use of personally identifiable information/privacy. One of our lawyers is co-chair of the American Bar Association subcommittee developing an international position on the issue of jurisdiction based on Internet activities and currently leads a coalition of large domestic media companies in addressing issues of jurisdiction and consumer protection as they affect e-commerce.

We also have extensive experience in handling the protection, development, and acquisition of IP and data rights of government contracting. In addition to the lawyers in the group, the firm has a large Government Contracts group that is able to assist should the proprietary rights issues arise in that context.

Advertising, Promotion and Trade Practices Law

DLA Piper is well equipped to handle the most sophisticated legal needs for clients in the area of advertising, promotion and trade practices law. We have lawyers with backgrounds in advertising, marketing, business and government enforcement that form our Advertising, Promotion and Trade Practices Law group. The broad backgrounds that our lawyers bring to the practice provide the breadth and depth necessary to handle the most sophisticated advertising and promotions on a national and international basis. Our group has extensive experience in each of the following areas:

• consumer and trade promotions
• advertising network clearance
• sweepstakes and games
• licensing
• rebates and couponing
• labeling and FDA requirements
• talent agreements
• employment agreements