Intellectual Property

Intellectual Property

We understand that intellectual property (IP) is an important asset for our clients, particularly in today’s competitive marketplace. Our clients look to our lawyers and specialists for guidance and assistance with identifying, protecting, managing, and when necessary, asserting and defending their intellectual property assets and rights. From patent, trademark and copyright assets to trade secret, and domain name issues, the lawyers in our Intellectual Property Practice are versed in all nuances of intellectual property law.

Our intellectual property lawyers and specialists advise clients big and small, from multinational companies dealing with cross-border IP issues to start-ups wanting to protect the next big idea. We counsel clients from various industries on complex IP litigation, transactions, licensing and IP management matters and provide our clients with seamless support and advice across the global marketplace.  We can provide clients with successful and comprehensive IP strategies to protect, manage and optimize IP assets, in courts, the board room and at the negotiating table.

Our team is made up of experienced IP lawyers many of whom are bilingual.  We also actively engage with technical consultants, and patent agents.With offices in key business centers and an extensive network of international IP lawyers, we secure and enforce worldwide IP assets and help clients optimize their market position under the US, China, and European national patent laws, and where applicable, under the Patent Cooperation Treaty (PCT).

Intellectual Property Litigation

Our lawyers have substantial experience with intellectual property litigation and enforcement matters and have acted as lead counsel, local counsel, and co-counsel for our clients.  We have appeared in trials and regulatory actions in state and federal district courts, as well as before administrative agencies, including the U.S. Patent and Trademark Office (USPTO), the Copyright Office, Patent Trial and Appeals Board, and the Trademark Trial and Appeal Board. When intellectual property theft or infringement occurs, our experienced lawyers work closely with our clients to take quick and decisive actions to protect their valuable assets and rights.

Intellectual Property Portfolio Counseling

Our attorneys, patent agents, advisors, and consultants have deep experience in counseling our client with the management of their intellectual property portfolio.   We work closely with our clients to evaluate not only individual intellectual property assets, but the collection of assets and their impact on our clients’ revenue and profitability. Our team is knowledgeable and skilled in portfolio evaluation tools and technology, including invalidity and knock-out searches, assignments and recordation, freedom to operate search and analysis, and trademark, copyright, and patent watch services. We also advise our clients on how to implement a trade secret protection program that meets the requirements of the applicable rules and formulate a strategy to limit access and maintain the secrecy of their trade secrets.

IP Audits and Due Diligence

We are often asked by clients to advise on and undertake (or respond to) IP due diligence exercise in connection with a venture investment, financing, or merger and acquisition transaction. Whether conducting or responding to an IP due diligence investigation, our lawyers and advisors help our clients evaluate their IP inventory and make the necessary disclosures. We also assist our clients with their operational IP review and management, including assisting the clients with creating formal processes to systematically review inventions created by the client’s inventors and implementing track and monitor works of authorship, trademarks, licenses, trade secrets, and any other client confidential, proprietary information and property rights.

Licensing and Technology Transfer

Businesses often wish to monetize their IP by authorizing third parties to commercialize such IP through technology license or transfer. We work with our clients to fully understand their business and technical goals before entering into licensing and technology transfer transactions. Our team also helps the clients to effectively negotiate and prepare IP licensing or technology transfer agreements, as well as collaboration or joint development agreements. Beyond providing legal advice, we understand that our value to our client is to help them effectively protect and utilize their technology and its related IP.

Patent Prosecution and Maintenance

Our lawyers and specialists advise clients on key patent issues and in procuring IP rights on their behalf, including patent applications, prosecution, procurement and maintenance in connection with US and international non-provisional utility patents, design patents, industrial designs, plant patents, and provisional patents.  We also handle a variety of patent post grant proceedings, including derivation proceedings, ex parte reexaminations, inter partes reviews, patent reissues, post-grant reviews, and supplemental examinations. Our team will also assist our clients on global patent protection and enforcement strategies and seeking protection under the Patent Cooperation Treaty (PCT).

Trademarks & Copyrights Prosecution and Maintenance

Our lawyers and specialists work closely with our clients on the development, adoption, registration, management, and enforcement of their trademark and trade dress rights, and copyrights.  Our team advises on the prosecution of federal, state and foreign applications (MADRID Protocol), as well as to conduct trademark availability and clearance searches and the monitoring of third-party trademark and domain name use.  We also counsel clients on copyright law issues and advise them on how to protect their valuable creative works of authorship, including computer software, graphics designs, music, paintings, sculptures, and written works of authorship. We work closely with foreign counsels and agents in various jurisdictions to meet our clients’ needs around the world, including the protection of global trademarks under the Madrid Protocol.

Practice Head

Scott Kaliko
(212) 837-2600
skaliko@yklaw.us

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