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Intellectual Property

IP Smart

Connolly Bove Lodge & Hutz LLP handles all types of intellectual property matters, many of national and international significance. We have served as lead counsel in trials and appeals in courtrooms throughout the country since the inception of the Firm. Our patent work has always concerned important inventions of the time, including miniaturized electronics, pharmaceuticals, industrial chemicals, films, herbicides, and freeze-dried coffee.

We have continued as a major player over the decades, with significant depth in biotechnology, crop science, computer and Internet technologies. We remain at the forefront not only in patent litigation, but also in patent prosecution and counseling, trademarks, trade secrets, copyrights and all other facets of intellectual property law. The Firm has handled numerous patent cases centering on important issues of first impression.

Antitrust

Our practice includes counseling and litigation to protect our clients from antitrust and unfair competition claims.

We have also invoked the antitrust laws to protect our clients’ rights and we have utilized our extensive knowledge of the antitrust-patent interface to gain greater flexibility in licensing transactions. Many of our litigations involve the antitrust-patent interface.

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Copyrights

We help clients protect and enforce rights in their creative works, including publications, music and software. We initially walk clients through the copyright registration process so that they can handle subsequent registrations themselves where appropriate.

Expedited Copyright Applications

We have experience in filing and obtaining expedited processing of copyright applications when needed to institute copyright infringement actions. We regularly counsel authors and copyright owners on suitable licensing agreements and other contractual arrangements with publishers and promoters.

Software Copyright

Protection of software innovations through copyright is a significant part of our practice. When infringement occurs, we have experience enforcing and defending copyright claims in court.

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Counseling

Our attorneys provide a full range of patent counseling, including validity, infringement, and patentability opinions, and technology protection strategies and techniques.

We provide advice on such matters as whether a novel technology should be patented or protected as a trade secret, whether our clients’ rights have been infringed and whether our clients have “freedom to operate“ in a given area in light of the intellectual property rights of others.

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Due Diligence

As part of assisting clients with technology transfers, we offer due diligence review of intellectual property portfolios.

We advise our clients on the strengths and weaknesses of the patents being transferred, the legal formalities that apply to the transfer and the technological conflicts that may affect the value of the patent portfolio under review.

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International Trade Commission

The U.S. International Trade Commission (“ITC”) provides a remedy under Section 337 of the Tariff Act against unfair acts and unfair methods of competition in the importation of goods into the United States. For companies with operations in the United States, success in a Section 337 action can provide needed relief from the importation of unfairly traded goods. For importers, a 337 action raises the possibility of imminent exclusion from the U.S. market. Section 337 cases move very quickly, are subject to unique procedural and substantive rules, and typically involve complex, technical subject matter. As a result, intellectual property disputes under Section 337 present a special set of challenges that can be met most effectively by lawyers who are familiar with the ITC’s procedures and precedents. The speed, complexity, presence of the ITC’s investigative staff as an equal party, and unique procedural and substantive issues in 337 cases, all call for counsel who understand the ITC.

Experienced Professionals

Connolly Bove’s ITC practitioners have decades of experience before the Commission, including years of service in the ITC’s Office of Unfair Import Investigations. They have hundreds of hours of trial time in the federal courts and the ITC, including more than 200 hours of trial time before the ITC’s Administrative Law Judges in 337 cases. Using the knowledge gained at the ITC, they have achieved a number of significant firsts. They have handled all phases of 337 matters, from pre-institution through post-trial proceedings, including relief modification and advisory opinion proceedings, as well as parallel federal court actions. Even in cases involving complex technology, trials can be held as quickly as six months after the commencement of 337 proceedings. Connolly Bove’s ability to field an experienced team is particularly important in such cases.

Section 337 Cases and Patent Infringement Disputes

Most Section 337 cases involve patent infringement disputes. Like patent infringement actions in the federal courts, 337 cases require patent litigation expertise, strong engineering or scientific backgrounds, and in-depth understanding of the patent prosecution process. Connolly Bove’s ITC litigation team brings strength to bear in all of these disciplines, in a full range of technologies, including the electrical, chemical, biotechnology and mechanical arts.

Your choice of ITC counsel can be outcome determinative.

Connolly Bove is ITC Smart - Business Savvy - Client Connected®.

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Licensing and Transactions

We have helped hundreds of licensees and licensors transfer rights in patents, trademarks, copyrights and other forms of intellectual property. We listen to our clients and remain mindful of their business objectives as we proceed through each licensing transaction.

Expertise in Licensing and Transactions

We have the expertise to assess all intellectual property issues presented by the transaction, including any potential patent misuse and antitrust issues implicated by a licensing arrangement. Our tax experts can help structure royalties and assist in value calculations, while our bankruptcy experts can assist with intellectual property assets in bankruptcy proceedings. Our litigators have handled numerous cases involving licenses.

Employing our legal and technical expertise, we assist clients with technology transfers, whether purchases or sales. In our thorough due diligence review, we evaluate the intellectual property portfolio involved in the transfer, and advise our clients on its value and any potential to create conflict.

Services to Support Mergers & Acquisitions

We also provide clients with a range of services for all stages of the Mergers & Acquisitions process. Our corporate lawyers have represented public and private buyers and sellers, investment bankers, private equity funds and individuals in negotiating merger and acquisition transactions, including several companies in which intellectual property was the key asset in the transaction. Our expertise allows us to structure and manage any type of merger or acquisition from its inception through the negotiation and drafting processes and to counsel our clients concerning any related matters through the closing of the transaction. We perform all of the corporate, intellectual property, tax and securities law aspects of the transaction.

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Patent Interferences

We have extensive experience in patent interference practice before the United States Patent and Trademark Office Board of Patent Appeals and Interferences. We represent clients in all phases of patent interferences

  • Strategies to anticipate and provoke interferences.
  • Preliminary motion practice and preparing preliminary statements.
  • Taking testimony and framing the issues for final hearing.
  • Bringing closure in the federal courts, where interference decisions are reviewed or appealed.

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Patent Litigation

Connolly Bove has one of the oldest and most preeminent patent litigation practices in the United States. At both trial and on appeal, the firm has frequently handled notable cases of first impression and it continues to set new standards in patent law. Our attorneys have protected some of the most economically and technologically important inventions of our time.

We offer litigators with a broad base of technical backgrounds and Patent Office experience. We combine this experience with battle tested first chair litigation expertise. We handle both complex cases and cases involving smaller entities, staffing each case in a manner most suited to our client’s needs. Our attorneys also coordinate international patent enforcement strategies and litigations, working closely with foreign attorneys.

Courtroom Technologies

We use all available litigation technologies – litigation docket and support databases, document imaging, OCR technology, trial presentation software and video animations. We employ mock trials and jury focus groups when appropriate and cost-justified.

Teamwork Approach

Our teamwork approach keeps discovery focused and cost-effective. We supplement our litigation efforts with arbitration, mediation and other forms of alternative dispute resolution that have become effective approaches to resolve patent disputes. Our attorneys have extensive experience in both domestic and international arbitrations. We have a large staff of experienced litigation paralegals who work closely with our attorneys to manage and control document review and production, case scheduling, exhibit preparation, trial organization and other important functions.

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Patent Prosecution

Each year, Connolly Bove Lodge & Hutz LLP prepares and files hundreds of United States and foreign patent applications in order to serve our clients worldwide. Our prosecution attorneys handle applications in all major technical fields.

International Network

We have developed a network of foreign associates, giving us access to patent offices in every country in the world where patenting is meaningful.

Protecting Patents From Litigation

Our prosecution attorneys also work closely with our litigation attorneys to identify and implement strategies during prosecution that will enhance each patent before it ever reaches litigation. Whether ex parte or inter partes procedures are warranted, our practitioners have experience to guide our clients to the best results.

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Patent Reissue and Reexamination

To protect our clients’ interests, our attorneys make use of all available procedures to improve patent quality, including seeking reissue or reexamination of issued United States patents.

We carefully review all aspects of patents before litigation to determine whether reissue or reexamination would strengthen the patent and its prospects for successful enforcement.

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Trademarks

From its inception in the early 1940’s, the firm has engaged in a national and international intellectual property practice that includes trademarks and all trademark-related work.

Trademark Services

We perform every type of trademark service, including:

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Trademark and Copyright Litigation

Our attorneys have tried cases before judges and juries nationwide in trademark, trade dress and related licensing litigations.

We have frequently handled expedited proceedings to obtain restraining orders and preliminary injunctions. We have obtained many favorable decisions for our clients enjoining unfair competitive acts, such as copying of our clients’ distinctive product shapes (product configurations), packaging (trade dress) and names (trademarks).

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Unfair Competition and Trade Secrets

Our clients rely on us to protect their unpatented proprietary technology and confidential business information from unlawful use by others.

We have successfully obtained injunctions and damages in trade secret misappropriation cases, trade dress litigation for copying distinctive packaging and other unfair competition claims, such as illegal use of customer lists and data.

We advise on security and contractual measures to protect trade secrets, and we prepare agreements prohibiting unfair competition and wrongful disclosure of trade secrets.

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Venture Capital and Emerging Growth

From formation to exit, our Venture Capital and Emerging Growth Group advises entrepreneurs, investors, and businesses on multiple levels. Our business attorneys work with our intellectual property attorneys in client service teams, resulting in cost savings and comprehensive representation.

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