PRACTICE AREAS
Practice Areas
Practice Areas

Intellectual Property


Practice Leader: Vincent V. Carissimi and William D. Belanger

Pepper Hamilton LLP’s Intellectual Property Department is an interdisciplinary team that procures intellectual property rights, and litigates or otherwise resolves intellectual property problems.

Our lawyers are capable and experienced in all intellectual property areas, including patents, copyrights, trademarks, trade secret protection, unfair competition, false advertising, and defamation, publicity and privacy issues. We also handle technology-related transactions and litigation, domestic and international technology transfer, author/publisher relations and U.S. government proprietary rights regulation.

A significant portion of our IP practice involves helping clients maximize the value of their intellectual property while minimizing the risk of liability. Patents, trademarks, copyrights and other intellectual property can represent a substantial portion of a company’s assets. We help clients commercialize their technology and other IP assets, align their IP management practices with the company’s overall business goals, implement methods to preserve and protect IP assets, and analyze the real value and commercial potential of intellectual property, whether it is developed by the client or acquired/sold in a transaction. More specific information is outlined below.

Patents

Our patent-related services include:

  • preparing, filing and prosecuting applications for patents involving a wide range of technologies, including pharmaceuticals, biotechnology, electrical and computing devices, computer software, mechanical devices and business methods
  • negotiating and preparing technology-intense agreements, including material transfer, pilot study, sponsored or collaborative research, option, license, supply or asset purchase agreements
  • conducting interference proceedings before the U.S. Patent and Trademark Office
  • analyzing patent infringement and validity issues, and preparing right-to-practice, non-infringement and invalidity opinions, where appropriate
  • conducting intellectual property audits and due diligence analyses in transactional matters.

Representative Engagements

  • procured patents for chemical compounds, pharmaceuticals, nutraceuticals, cosmetics, nanotechnology, video display technologies, portable electronic devices, surgical compositions, infra-red-based and radio communications systems, security and encryption technologies, semiconductors, industrial designs, environmental monitoring systems, financial business methods and computer software
  • provided legal opinions on the validity, enforceability, and infringement of patents and related technology
  • counseling drug companies on unique patent issues relating to drug development, including Orange Book listing, label claims, patent term restoration and extension, and subtle issues of written description, enablement, genus and species issues, and anticipation and obviousness in the “unpredictable arts”
  • rendering legal opinions on issues of patentability, inventorship, ownership, infringement, invalidity, enforceability and freedom to operate
  • assisting venture capital groups and investment funds in evaluating biotechnology and life science opportunities
  • advising on the interplay of FDA and patent law on cosmetic, pharmaceutical, nutraceutical and medical device products
  • managed diverse patent portfolios and helped businesses ensure that new inventions are adequately documented and protected, whether through patent or trade secret laws
  • handled license/settlement negotiations that include evaluation of relative strengths of competing patent positions, including formulation of potential theories of non-infringement, invalidity and unenforceability.
Trademarks and Copyrights

We counsel clients on obtaining trademarks and copyrights, perform searches and render viability opinions. We file hundreds of applications to register trademarks and copyrights each year, and monitor thousands of domestic and foreign registered trademarks. We often represent trademark and copyright owners in actions against persons selling pirated, bootleg and counterfeit goods. The group also helps numerous composers, authors, software developers and publishers protect their copyrighted works from unauthorized copying, distribution and performance.

Members of the Intellectual Property Group also practice before the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board in cancellation and opposition proceedings.

Representative Engagements
  • oversight and management of the intellectual property requirements of a major U.S. apparel manufacturer; the largest U.S. manufacturer/retailer of maternity clothing, an international petroleum producer and retailer, a large medical equipment manufacturer and an international yeast company
  • manage and prosecute many U.S. and foreign trademark programs, including for one of the largest U.S. financial institutions; prepare and prosecute trademark applications in the United States and throughout the world; enforce trademark rights; protect against trademark infringement on the Internet
  • organized trademark enforcement program for one of the largest professional sports leagues in the United States
  • negotiated trademark license agreements for university client.

Trade Secret Protection

We are experienced in preparing domestic and international trade secret licenses and crafting corporate confidentiality, security and non-competition programs. We enforce these protections in many fields, including computer software design, petrochemical product formulae and retail customer list protections.

Technology Transfer and Licensing

We represent universities and research institutions that develop and license technology to industry, including sponsored research agreements and licensing involving equity components. We also represent start-up companies that license technology from university incubators and develop and commercialize that technology. We frequently help such clients obtain debt or equity financing, including mezzanine and venture capital financing, and a registered offering of securities. We also represent venture capital funds that target technology-based companies and large corporations in their cooperative research and licensing transactions with start-up companies and research institutions, including government-funded laboratories and the National Institutes of Health.

Our lawyers structure, draft and negotiate a variety of agreements between domestic companies and between domestic companies and their foreign counterparts, including research and development joint ventures, territorially defined licensing arrangements, multi-state distributorships and equity arrangements. Representative transactions have included technology sharing arrangements within the former U.S.S.R. and the Peoples’ Republic of China as well as companies throughout Europe, the Middle East and Latin America.

Representative Engagements

  • represented universities in connection with their technology development and transfer programs, including license and sponsored research transactions, and related equity features
  • counseled a biotechnology company in a coordinated international licensing and development program, including (1)the licensing of patents and trade secrets from multiple U.S. and foreign patent holders, (2)the negotiation and documentation of research and development agreements with multiple U.S. and foreign research institutions, and (3)the negotiation and documentation of debt and equity financing to fund the research and development program
  • represented a pharmaceutical company in negotiations with a publicly traded biotechnology company to acquire the rights to various potential cancer therapies, and its parent company, in negotiations to create a corporate partnering relationship to support development of a promising cancer therapy and to distribute the resulting products to the world market
  • assisted the developer of a new drug delivery system in negotiating a license agreement with a major pharmaceutical company
  • counseled an international pharmaceutical company in its acquisition of and license to certain antibodies, intellectual property rights and other related assets
    represented a privately held biotechnology company in the acquisition of a publicly traded biotechnology company
  • advised a U.S. subsidiary of a German pharmaceutical company in a series of acquisitions of products from other pharmaceutical companies.


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