Intellectual Property

The Intellectual Property Group regularly interacts with our Corporate Group on various transactions, covering such areas as contract and joint development, transactional, licensing, and securities, as well as the intellectual property aspects of mergers and acquisitions. This collaboration has proven to be an increasingly significant resource as the IP component of transactions continues to rise. The Gibbons Intellectual Property Group advises on M&A and other transactions for technology companies in the healthcare, biotech, pharmaceutical, and other areas, as well as on the technology, patent, licensing, trademark, copyright, contract, joint development, securities, employment, and related intellectual property issues inherent in broader mergers and acquisitions. Specific services include valuation of assets; expansion of scope of protection by acquisition of complementary companies or assets; identification of complementary IP or targets with IP; and handling the acquisition of the target’s assets.

While intellectual property assets are critical assets, their value is sometimes difficult to determine. For example, the existence of competing patents in the marketplace and their impact on new entry and profit margins require analysis. At Gibbons, we provide a full range of evaluative services, such as asset evaluation as part of due diligence consideration; validity studies; right-to-use evaluations; and assessment of appropriate licensing rights and pitfalls. Much of this plays a role in the risk/reward evaluations of new businesses and business expansion. Because not all intellectual property is as readily identifiable as a patent, we also assist companies in evaluating whether they are taking the appropriate steps to protect their intellectual property by identifying the intellectual property they should protect, advising on the appropriate forms of protection, and putting procedures into place to maximize protection. For example, some intellectual property is best protected as a trade secret. Working with our firm’s Employment & Labor Law Group, we advise clients on employment, non-disclosure, and confidentiality agreements, as well as employee policies and procedures designed to help protect these kinds of assets.

The IP Group litigates patent, trademark, copyright, unfair competition, and trade secret matters before federal and state courts, arbitration panels, and alternative dispute resolution forums. Team members include focused Hatch-Waxman litigators representing brand pharmaceutical clients in major drug patent litigations, particularly in the District of New Jersey, as well as litigators concentrating in cases involving sophisticated electronic, networking, and computer technologies. Our IP attorneys devise and execute litigation strategies that are cost effective and fully compatible with the business objectives of our clients, whether in court, before the ITC, or at arbitration. Our litigation management approach leverages the Gibbons technology platform for electronic document management and seamless communication and integration among the litigation team members and the client. Our IP litigators typically team with the Gibbons E-Discovery Task Force to create workable and efficient e-discovery plans.

In the patent area, members of the Group have handled litigation matters involving technologies ranging from pharmaceutical compounds, medical apparatuses, telecommunications, motion simulators, dynamic electronic sensors, internet/e-commerce software, air and water filtering devices, optical devices, plastics, and even multidimensional trading cards. The firm’s strategy for staffing patent litigation matters is to have an intellectual property litigator work together with one of the Group’s “technical” attorneys with scientific experience in the relevant patented technology.

The Intellectual Property Group’s litigation experience also extends to trademark, copyright, and trade secret matters. Litigators within the Group regularly handle, on a nationwide and overseas basis, trademark and copyright infringement and dilution matters involving internet commercial websites, “cybersquatting,” pirated and “knock-off” commercial goods, domain name disputes, foreign and domestic customs seizures, and international and domestic licensing and distribution disputes. Recognizing the continued development of internet technology and the tremendous expansion of e-commerce as a means of transacting business, the Gibbons Intellectual Property Group has made a sound commitment to forging creative alternatives to protecting and enforcing its clients’ trademark, copyright, and trade secret rights in the worldwide market.

Gibbons recognizes that strategic licensing is a key component to any client’s successful exploitation and protection of its intellectual property portfolio. Over the years, the Intellectual Property Group has, on both sides of the table, negotiated numerous license, distribution, and collaboration agreements in the biomedical, pharmaceutical, fashion, electronics, e-commerce, telecommunications, chemical, and other industries in the domestic and international business communities. In addition to license negotiation and drafting, members of the Gibbons Intellectual Property Group regularly counsel clients on licensing and assertion strategies and strategic product development and distribution. Highly capable of handling patent prosecution matters and trademark and copyright registrations, as well as strategic licensing and evaluation counseling, the Gibbons Intellectual Property Group offers clients attorneys who are both familiar with the technology and experienced in achieving long- and short-term licensing business objectives.

Gibbons has been representing companies with respect to internet and e-commerce issues since the mid-1990s, when clients began exploring the use of the internet as a method for distribution of publications, data, and software to replace direct dial-up systems. We regularly counsel clients on the licensing, copyright, trademark, patent, risk management, and other issues that impact such e-commerce businesses. Our clients range from small startups to multinational corporations trying to handle substantial transactional volume, and many of the issues remain the same for all of them. We also handle licensing and litigation for clients doing business online in connection with the misuse of brand names, HTML metatags, and other protected e-commerce rights. From co-branding to chat rooms, from sales of products to maintenance of software, from the courtroom to the inventor’s home office, the Gibbons Intellectual Property Group has worked on an array of issues in a range of locations to help companies succeed in today’s e-commerce business and legal environments.

The firm has many years of experience in the preparation, filing, and prosecution of a large variety of patent applications before the United States Patent and Trademark Office (USTPO) in the fields of electronics; telecommunications; computer software; e-commerce; mechanical devices; and pharmaceutical, biopharmaceutical, and chemical compounds and formulas. The Group also provides supporting prosecution of corresponding foreign applications.

We are skilled in educating our clients to recognize and protect emerging and potentially new technologies, keeping abreast of the rapidly changing patent law. We evaluate patent novelty, from a patent office viewpoint, with the client’s economics in mind. Patent applications are carefully prepared by a staff of licensed patent professionals to emphasize commercial value, target markets, and the technologies’ growth potential.

The expansion of global markets requires every client to consider foreign patent protection. Principally through our participation in Geneva Group International, a private association of select law firms worldwide with which Gibbons regularly works on international matters in all practice areas, as well as through a network of foreign agents, Gibbons designs each client’s foreign patent portfolio to assure proper protection in the appropriate countries. In addition, the firm coordinates the domestic and foreign prosecution effort to maximize coverage and minimize conflicts and costs during U.S. and foreign prosecution and during maintenance periods. Our intellectual property attorneys are also experienced in appeals and interferences, as well as oppositions in foreign countries. In particular, the Group is well versed in coordinating these diverse proceedings for the maximum benefit of our clients worldwide.

We work hand-in-hand with our clients to help them avoid unnecessary conflict and to maximize the strength and value of their trademark and copyright assets, from inception through enforcement and beyond.

In the trademark arena, Gibbons helps companies:

• Search and clear trademarks
• Create strategic plans for establishing worldwide and domestic trademark portfolios
• File and prosecute trademark applications in the United States
• File and prosecute non-U.S. trademark applications through foreign counsel
• Police and protest trademark infringement
• Litigate trademark disputes in federal court
• Litigate oppositions and cancellation proceedings before the Trademark Trial and Appeal Board
• Litigate cybersquatting disputes in federal court and in Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings
• Negotiate and draft trademark licenses, trademark assignments, co-branding agreements, coexistence agreements and sponsorship agreements
• Conduct due diligence in connection with mergers and acquisitions
• Audit trademark portfolios to determine where gaps exist or streamlining is needed
• Draft brand use guidelines
• Review packaging, advertisements, and websites to ensure proper trademark use
• Implement the eBay VERO program to halt sales of counterfeit and infringing goods
• Oversee and instruct foreign counsel in trademark disputes brought outside the U.S.

Our trademark attorneys help with the selection of trademarks, establishing and maintaining domestic and worldwide trademark portfolios, protesting infringement, protecting against third-party claims, overseeing trademark disputes brought outside the United States, and assisting with the transfer and acquisition of trademark rights. We understand that a company’s brands may be among its most important assets, and we help clients increase and protect their value.

Copyrights also may be among a company’s most valued assets and should be developed and protected accordingly. Registration is not a prerequisite to developing copyrights, but it is a prerequisite to being able to bring an action for copyright infringement and to recovering certain types of damages. At Gibbons, we regularly handle the preparation and filing of copyright applications for an array of different types of works, ranging from written works, music, and film to computer software and the underlying source code. In addition, we litigate copyright infringement disputes in federal court and protest infringement through third-party dispute resolution mechanisms, including those of eBay, YouTube, Facebook, and Twitter.

Gibbons attorneys help companies:

• Audit and establish copyright registration portfolios and practices
• Litigate copyright infringement actions in federal court
• Protest online infringements through third party dispute resolution policies
• Draft and issue “takedown” notices under the Digital Millennium Copyright Act
• Draft website terms and conditions, privacy policies and affiliate agreements
• Conduct copyright due diligence
• Evaluate fair use and other copyright issues