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Intellectual property permeates modern economic life and plays an important role in almost all business dealings, even if its role isn’t always obvious. Every business is dependent upon the development and protection of intellectual property assets of one sort or another. Every company needs to protect its commercial reputation, which is identified by its trade name and trademarks. But, given the demands of global competition, a business must increasingly rely on proprietary know-how, software, databases and internet domains, even if it does not have a portfolio of patents or copyrights.
Curtis has extensive experience counseling clients in a wide range of sectors, such as publishing and film production, computer software, internet gaming, advertising, the development and exploitation of various technologies, such as medical instruments, nanotechnology, biopharma, and oil and gas, and the marketing of consumer products including apparel, beverages, and household appliances. Drawing on this experience, the firm provides its clients with the expertise needed to build and protect a portfolio of intellectual property rights, to register their rights both within and outside the United States, to enforce their intellectual property rights through litigation, to defend them from claims of infringement, and to exercise strategic due diligence regarding the intellectual property of their prospective business partners.
Intellectual Property in Corporate and Commercial Transactions
In any corporate or commercial transaction, a key question is how intellectual property assets may be used to create and build commercial value. One of the first issues to be addressed is whether and how the various intellectual property rights of the participants may be protected, expanded or exploited in order to achieve the client’s strategic goals. This issue is especially critical in cross-border transactions, where the differences in the treatment of various intellectual property rights from one country to another may have dramatic consequences for the feasibility or value of the transaction. The Firm’s breadth of experience across industry sectors and geographic areas enables it to provide strategic legal analysis of the intellectual property aspects of its clients’ corporate and commercial transactions.
Building and Protecting a Portfolio of Intellectual Property Rights
The Firm helps its clients to recognize and protect the intellectual property rights that they develop or acquire in the course of business, including trade secrets in know-how and business information, copyright in software and content, and trademark rights in names, logos, and product configurations. For a well established business, an intellectual property audit may uncover both unrecognized intangible assets and potential threats to intellectual property assets. For a company intending to expand its area of operations, either to new sectors or geographic regions, a review of its existing intellectual property assets is an indispensable first step.
Assistance With Registered Intellectual Property Rights
In dealing with registered intellectual property rights, the Firm has long utilized computer docketing of intellectual property information and electronic access and processing of information at the Patent and Trademark Office and the Copyright Office in the United States and, when available, foreign patent and trademark offices. This experience translates into efficient, comprehensive, and cost effective handling of registered intellectual properties. With respect to all intellectual property, the Firm provides general counseling, surveillance, litigation, and transactional support, including assignments, licenses and the filing of security interests. With respect to trademarks, the Firm provides clearance and registration, both in the United States and internationally, and U.S. customs recording. The Firm also provides U.S. registration and customs recording of U.S. copyrights, and assistance with international copyright protection. With respect to patents, the Firm utilizes its international network of patent attorneys and agents to identify the appropriate technical expertise and resources for patent application processing.
Litigation & Arbitration
The Firm protects its clients’ intellectual property rights and defends them from infringement claims in the United States and worldwide in court actions, arbitration proceedings and administrative trademark proceedings. The Firm also initiates and defends arbitration claims concerning the registration of Internet domain names under the Uniform Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers.
TRANSACTION SERVICES
Curtis, Mallet-Prevost, Colt & Mosle LLP assists its clients in identifying and protecting their intellectual property assets in a wide variety of commercial transactions. In both domestic and cross-border corporate and commercial transactions, each party must be assured of the adequacy and legitimacy of the other party’s assets, including its intellectual property. Since intellectual property assets are intangible rights granted by law, they are both portable by nature and geographically restricted. This duality of intellectual property assets means that any commercial transaction involving intellectual property assets must be analyzed carefully to ensure that the client obtains the intellectual property rights that it needs and expects.
Strategic Due Diligence in Mergers, Acquisitions and Joint Ventures
It is not enough to know if a prospective business partner or acquisition target has the right to use the intellectual property rights that it already uses in the jurisdictions in which it currently operates. It is equally important to know whether these rights can be extended to cover the strategic goals of the transaction. The Firm’s international experience enables it to provide its clients this sort of strategic due diligence, as well as audits of the clients' native intellectual property rights.
Licensing
The licensing of intellectual property assets involves opportunities for the development of new intellectual property as well as risks to the maintenance of existing intellectual property rights. The Firm has experience with licensing of intellectual property in a wide variety of contexts, including manufacturing and technology license agreements, traditional and electronic publishing and content agreements, advertising distribution agreements, and software marketing and distribution agreements.
Development and Out-sourcing Agreements
The fluid nature of intellectual property rights means that development and out-sourcing agreements must be very carefully constructed to anticipate the rights that may be created and to allocate them properly among the parties. The Firm’s experience includes a wide range of agreements, including joint technology development and exploitation, software development, website development, contract manufacturing, and advertising and content development, production and distribution.
Confidentiality, Non-disclosure and Employment Agreements
Intellectual property often takes the form of unregistered trade secrets and know-how. Protection of rights in trade secrets requires that the owner enter into confidentiality and non-disclosure agreements with its employees and its existing and prospective contractual partners. The Firm routinely provides clients with assistance in non-disclosure agreements, confidentiality agreements, employee confidentiality and intellectual property assignment agreements.
Industry-specific Agreements
Certain industries require particular types of transactional agreements relating to intellectual property rights. The Firm’s experience includes the following industry-specific areas:
- Advertising, promotion, and marketing agreements, including agreements for the distribution of advertising content to motion picture exhibitors
- Book publishing agreements
- Drug royalty securitization
- Internet services agreements
- Materials transfer agreements for the life sciences industry
- Talent and production agreements
- Brand and art licensing agreements
TRADEMARK SERVICES
Curtis, Mallet-Prevost, Colt & Mosle LLP handles all questions relating to the registration, maintenance and protection of trademarks, service marks, trade names and trade dress. We have access to the files and records of the U.S. Patent and Trademark Office, as well as to trademark offices in many other countries, permitting rapid searches to determine whether particular marks our clients wish to use have already been registered by others.
Counseling
The Firm counsels clients as to the optimal way to secure and commercialize their rights to names, logos or marks used to identify their goods and services, in the U.S. and worldwide, in the context of trademark filing programs and licensing or other commercial transactions.
Clearance of Trademarks
The Firm conducts searches for trademarks in the U.S. and countries throughout the world to determine whether a particular trademark is available for use and registration by our clients. The searches range in scope from checking online databases for “knockout” searches to ordering and reviewing detailed search reports from third-party vendors for comprehensive availability and registrability clearance opinions.
U.S. Registration
The Firm evaluates proposed marks and prepares and prosecutes applications for registration of trademarks and service marks with the U.S. Patent and Trademark Office (USPTO). Most filings are done through the electronic filing system and, where possible, utilizing the standard identification of goods so as to take advantage of lower filing fees and expedited processing. The Firm maintains an electronic database of client marks to assure the timely filing of trademark renewals and statements of use worldwide and the proper prosecution of applications in trademark offices throughout the world.
Foreign Registration
The Firm coordinates worldwide and regional trademark filing programs for clients seeking trademark or service mark registrations outside of the U.S. For U.S.-based clients, the Firm files applications for International Registration under the Madrid Protocol, utilizing local trademark agents where required. The Firm also coordinates trademark applications worldwide, working through its own foreign offices and a network of local trademark agents. The Firm gathers the information and documentation required by each local jurisdiction for registration of the mark, and helps to conform the documentation to particular foreign requirements, including any necessary international legalization of the documents.
Licensing and Agreements
The Firm prepares and negotiates licenses and agreements regarding the protection and proper use of trademarks and trade names, both domestically and internationally.
Due Diligence
The Firm investigates and conducts due diligence in trademarks acquired or licensed by its clients, both domestically and internationally.
Internet and E-commerce
The Firm counsels its clients in the proper use and licensing of trademarks on Internet web sites and in electronic commerce transactions.
Surveillance
The Firm provides surveillance of trademark and service mark applications by other parties to give clients the opportunity to oppose registration of marks which are similar to their own registered or common law marks or trade names.
Opposition and Litigation
The Firm prepares and files opposition and cancellation proceedings against trademark applications and registration in the USPTO as well as infringement proceedings in federal and state courts in the United States. In addition, the Firm coordinates efforts to protect its clients’ trademark rights worldwide.
U.S. Customs Recording
The Firm arranges for the recording of registered trademarks with the U.S. Customs and Border Protection in order to block the import of products bearing or identified with infringing trademarks.
COPYRIGHT SERVICES
Curtis, Mallet-Prevost, Colt & Mosle LLP handles all questions relating to the protection and registration of copyrighted works and copyrights. The Firm has access to the files and records of the U.S. Copyright Office, allowing it to investigate the status of existing works.
Counseling
The Firm counsels clients as to the optimal way to protect their creative works in the U.S. and worldwide, regardless of whether the works are embodied in text, computer software, jewelry, print, fabrics, artwork or other media.
U.S. Registration
The Firm prepares and files copyright applications with the U.S. Copyright Office, and advises clients in arranging their own copyright application filing protocols.
Licensing and Agreements
The Firm prepares and negotiates licenses and agreements regarding the protection and use of copyrighted works, including software.
Due Diligence
The Firm investigates and conducts due diligence in copyrighted works purchased or sold by its clients, whether the copyrighted works are the only assets in the transaction or part of a larger collection of assets.
Internet and E-commerce
The Firm counsels its clients in the use and licensing of copyrighted works on Internet web sites and in electronic commerce transactions.
Litigation
The Firm protects its clients’ valuable rights in their creative works, and defends claims against its clients through litigation in U.S. Federal courts and in proceedings worldwide.
Customs Recordation
The Firm arranges for the recording of U.S. registered copyrights with the U.S. Customs and Border Protection in order to block the import of infringing products.
TRADE SECRET AND PATENT SERVICES
Curtis, Mallet-Prevost, Colt & Mosle LLP assists its clients in connection with legal issues and transactions relating to the protection and commercial exploitation of trade secrets and patents in inventions and designs.
Counseling
The Firm counsels clients with respect to the strategies available for domestic and international protection of their inventions and creative works, including the choice between patenting or maintaining inventions as trade secrets. The Firm does not itself file or prosecute patent applications but, in order to ensure that its clients obtain the appropriate technical expertise and local experience, the Firm utilizes a worldwide network of patent counsel and agents for the filing and prosecution of patent applications.
Licensing and Agreements
The Firm prepares and negotiates licenses and agreements involving inventions and patent rights, including employment, confidentiality, non-disclosure, secrecy, consulting, research and development agreements. The Firm has an expertise in transactions involving the sale and transfer and finance of royalty streams generated from patent licenses.
Litigation & Arbitration
The Firm protects and defends its clients’ inventions and designs through litigation in U.S. Federal courts and in arbitration proceedings.
Partners & Counsel
The following partners and counsel practice in this area:
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