Steptoe & Johnson has a broad-based intellectual property practice representing clients in all aspects of intellectual property registration, enforcement and value enhancement. The IP Team partners with the firm’s clients to assist in increasing the value of their important intellectual property/proprietary information (trade secrets, patents, trademarks, copyrighted materials, proprietary processes).
REPRESENTATIVE EXPERIENCE
Trademarks: Prepare, prosecute, maintain and monitor federal and state trademark registrations; represent clients in cancellation, opposition and concurrent use proceedings
Copyrights: Prepare and file copyright registrations for works such as books, photographs, product designs, commercial material and software
Patents: Prepare, prosecute and appeal utility and design patent applications including foreign patent applications; draft patentability, freedom to use, validity and non-infringement opinions; assist in maintaining IP portfolios
Domain Names: Assist clients in the acquisition of domain names; arbitrate domain name disputes before international body
IP Litigation: Representation of patentees and accused infringers throughout the country in patent/trademark/copyright infringement cases; negotiate settlement agreements; defend related claims involving antitrust, false advertising, unfair competition
Counseling & IP Agreements: Develop IP policies to identify and protect IP assets; draft licenses, non-disclosure, confidentiality, transfer and R&D agreements
PARTNERING WITH CLIENTS
Steptoe & Johnson strives to create a partnership with its clients, which allows clients to manage all aspects of their legal needs effectively. Examples of partnering on IP matters with our clients include:
• Work together with clients in identifying which innovations should be protected and the best forms of protection based on the clients’ unique business goals
• Collaborate with clients to develop strategies for increasing the value of their intellectual property
• Assist clients in implementing best practices for protecting their IP
• Develop an internal IP Committee composed of members having technical, marketing and legal expertise to identify and protect client innovations
• Provide cost-benefit considerations to enable clients to make well-informed decisions relating to protection of various intellectual property, including cost-benefit of potential litigation
• Identify which agreements should be in place to protect a client’s trade secrets including restrictions on employees and outside third parties
• Negotiate, review, revise, draft agreements involving: licensing, sale and/or purchase of IP; protection of client’s IP rights in joint ventures, and/or joint research; limitations on access to client’s facilities, research projects, strategies, goals, and/or developing innovations
• Provide representation in litigation involving federally registered patents, trademarks and copyrighted works, trade secrets and trade dress
• Negotiate settlements in infringement litigation that further clients’ short and long-term objectives
• Counsel clients on the intersection of IP law and antitrust/unfair competition laws
• Offer fee flexibility to include traditional hourly rates, flat rates and creative variations thereof to meet clients’ financial requirements
