Intellectual Property

Dilworth Paxson's Intellectual Property (IP) Group includes not only attorneys seasoned in the intricacies of patent, trademark, copyright, trade secret, and other IP laws, but also includes lawyers whose experience spans related fields, such as corporate law, tax, finance, litigation, and international law.  By selecting professionals whose skills correspond with our clients' needs for their IP matters, we are able to assemble teams of attorneys to pursue our clients' goals in a highly cost-effective manner.  This unique blend of technological, business, corporate, and litigation experience enables Dilworth Paxson to deliver comprehensive solutions to clients including:

  • The evaluation, acquisition, perfection, licensing, and enforcement of domestic and international patents, trademarks, copyrights, and trade secrets
  • Counseling and due diligence analysis for businesses and the financial community, including venture capitalists, angel investors, and other lenders considering investments, corporate restructuring, and mergers and acquisitions
  • Patentability opinions
  • Freedom-to-use assessments for products and services, as well as evaluations of competitors’ technologies and intellectual property
  • Enforcement of and defense of clients’ intellectual property rights, and the defense against assertions of others’ intellectual property through negotiation, mediation, and litigation

To promote commercialization of our clients' intellectual property assets, the firm's lawyers have been an integral part of major intellectual property transactional matters including asset and stock purchases, financial transactions, franchise arrangements, software development, as well as more traditional licensing and assignment agreements.

Effective licensing may be quite valuable for the holders of patents, trademarks or copyrights because significant royalty income is paid each year to companies, universities, and individuals for the right to develop and use their technology and other intellectual property. Conversely, when licenses are terminated or licensees default, protection of the intellectual properties of our clients becomes of paramount importance, and we have on several occasions recovered valuable holdings of our clients from their licensees.

Trademarks and domain names may also represent a significant portion of the intellectual property assets of our clients. To protect these valuable assets, we are skilled in the selection of names and marks associated with goods and services, and successful registration of marks on both state and federal registers. We have an extensive background in policing and enforcing trademark and domain name rights.

Representative Matters

  • Litigation counsel on behalf of Signature Financial Group, Inc. before the U.S. Court of Appeals for the Federal Circuit. In State Street Bank & Trust Co. v. Signature Financial Group, Inc., the Federal Circuit upheld the validity of Signature Financial's patent for its Hub and Spoke® mutual fund administration program. As industry watchers predicted, the fallout from State Street has had profound effects on the computer software and financial services industries, and beyond. The decision was cited in IP Worldwide as one of the "10 Patents that Changed the World."
  • Provided intellectual property counseling to a stem cell and cord blood preservation company regarding patent searching, procurement of domestic and international patent and trademark rights, and leveraging of intellectual property rights through licensing and collaborative research.
  • Successfully policed and enforced trademark rights through several Uniform Domain Name Dispute Resolution Policy actions to a leading U.S. based financial institution.
  • Represented an environmental testing company in trademark litigation matters and trademark portfolios.

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