Practice Areas
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Intellectual Property Patent Procurement & Trademarks

Practices Main

Potter Anderson is well positioned to offer our clients the full range of services required to negotiate, restructure and expand their businesses, and in this context we recognize that many of our clients' business  transactions will involve aspects of intellectual property.  We are skilled in providing the necessary IP due diligence required in such transactions, and in negotiating, drafting and finalizing the IP contracts and documents required to close your deal.

The negotiation and drafting of licenses is one of the key services we offer in this area, and in this regard we understand that licensing programs must be uniquely and creatively tailored to the needs of our clients' particular transaction.  In some instances the purpose of a license will be to leverage the value of our client's patent as a business asset in order to generate revenue.  In other instances licenses form the basis for joint venture and other collaborative undertakings between companies, and particularly in this context an understanding of ways in which to structure such licenses in a balanced and workable manner will be crucial to the success of the collaboration.  Our IP transactional team has a wealth of experience in negotiating, structuring, drafting and closing transactional intellectual matters, involving all areas of intellectual property including patents, trademarks, trade secrets and copyrights.

Our IP transactional team also offers services in e-commerce, information systems and computer software transactional matters.

Patent Procurement and Opinions

Potter Anderson provides patent procurement legal services focused squarely upon the particular business and technology needs of our clients.  Our patent drafting and prosecution team includes several Ph.D. level practitioners with an array of technical specialties including in the areas of biochemistry, physics, nanotechnology, chemistry, polymer science, computer, chemical engineering, cell biology, food science and molecular biology.  Also, in response to the increasing importance of patents in the financial and insurance industries, our IP team has developed expertise in assessing, preparing and prosecuting patents protecting business methods in the banking and insurance industries.  Our clients include major universities, banks, nonprofit agencies, and global chemical and pharmaceutical companies.

In conjunction with patent procurement, Potter Anderson’s patent services include providing strategic advice geared toward developing our clients' intellectual property portfolios in the most effective way, in order to build market barriers to protect our clients' business.  We understand the key importance patents play in business strategy, and we work with our clients to develop their patent estates in a comprehensive, yet cost-effective manner. 

A crucial aspect in our overall intellectual property strategy must include knowledge of the IP existing in our client's competitive marketplace.  We are skilled in providing guidance to identify potential freedom to operate obstacles our clients' products may face, and also in assessing the validity of possible third-party patents in the clients' respective market areas.  Our advice may take the form of routine due diligence reports and product clearance opinions, or may involve formal written infringement and/or invalidity opinions that will serve to protect the long term legal needs of our clients' business.  In providing these legal opinion services, we use a variety of outside, professional searching firms who have demonstrated expertise in the variety of technical areas in which our clients operate. 

Potter Anderson understands that an increasing number of business transactions involve intellectual property aspects, and an integral component of our clients' business growth will likely involve the acquisition or transfer of intellectual property.  We routinely provide assistance in transactional IP matters, including conducting due diligence of intellectual property estates for our clients.  Our practitioners will assist our clients' businesses in identifying and assessing the strength of the IP in a targeted estate, including patents, copyrights, trade secrets, patents and trademarks.

In addition to IP strategic guidance, patent drafting, prosecution, due diligence and opinion work, our team also provides guidance in patent post-issuance matters such as post-grant review and inter-partes review.

Trademarks

Potter Anderson understands the importance of trademark protection in establishing and advancing our clients' market position, and toward this end we offer a breadth of trademark services in conjunction with our other intellectual property services areas.  We are able to assist our clients' business in strategic development of marks, including in the evaluation of proposed trademarks and trade names, and in the registration and maintenance of trademarks in the U.S. and in foreign countries.  We also offer advice and assistance on trademark enforcement issues, and in the assessment of trademark rights of others.  Additionally, we are prepared to help our clients create strategies for both initiating and responding to cease-and-desist letters and for other third-party issues.

Our attorneys also provide counseling on trademark licensing, internet domain names, and trade dress.  We will provide assistance in proactively monitoring for infringement in order to properly maintain and defend your trademarks, recognizing that trademarks may well constitute an important asset in your overall business strategy.  We are willing and able to work with our clients to develop cost-effective trademark portfolio filing, maintenance, and enforcement strategies.  Once developed, we help our clients pursue those strategies by using efficient staffing and by leveraging technology.