blog icon linkedin icon facebook icon twitter icon

 

Intellectual Property

Does your company have IP issues?

Steptoe & Johnson has a broad-based intellectual property (IP) practice representing clients in all aspects of IP registration, enforcement, and value enhancement. The IP Team partners with the firm’s clients to assist in increasing the value of their important IP / proprietary information (trade secrets, patents, trademarks, copyrighted materials, and proprietary processes).

Representative Experience

  • Defended manufacturer of mine safety equipment in utility and design patent infringement litigation in the United States District Court for the Southern District of WV, resulting in summary judgment of non-infringement
  • Developed intellectual property policy for client with billion dollars in revenue to identify, assess value and protect its IP assets
  • Provided advice to clients on cost benefit assessment in protecting the client’s developed proprietary information and innovations
  • Developed various agreements for client to protect trade secrets and proprietary information in joint activities with third parties.
  • Represented plaintiffs in patent infringement actions
more...

Areas of Service 


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, and assist in maintaining IP portfolios.

Domain Names: Assist clients in the acquisition of domain names and arbitrate domain name disputes before international body.

IP Litigation: Represent patentees and accused infringers throughout the country in patent/trademark/copyright infringement cases, negotiate settlement agreements, and defend related claims involving antitrust, false advertising, and unfair competition issues.

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 attorneys create a partnership with clients to:

  • Identify which innovations should be protected and the best forms of protection based on the client's unique business goals
  • Collaborate with clients to develop strategies for increasing the value of their IP 
  • Assist 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 the protection of various IP, including cost-benefit of potential litigation
  • Identify agreements that should be in place to protect a client’s trade secrets, including restrictions on employees and outside third parties
  • Provide representation in litigation involving federally registered patents, trademarks, 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

 

>Back to Services

Areas of Concentration


Team Leaders:

Team Members:


 
 
Recent Articles & Publications
Survey: IP Theft Worries Execs,
June 3, 2010
DON’T MISS THE MARK: PROVIDING PROPER NOTICE OF PATENT RIGHTS ,
April 19, 2010
FTC Further Delays Enforcement of Red Flags Rule Until June 1, 2010 ,
December 14, 2009