Intellectual property issues are critical to the success of any business, regardless of its size. Andrews Kurth helps clients in virtually all industries obtain, protect and enforce patents, trademarks, copyrights, trade secrets and other intellectual property rights. Our IP lawyers have strong technical backgrounds and extensive legal and commercial experience as in-house IP counsel, patent and trademark examiners, engineers and scientists.

We routinely interact with patent and trademark examiners in the U.S. Patent and Trademark Office, and secure and protect intellectual property rights around the world. Andrews Kurth intellectual property lawyers speak the business and technical languages of our clients. The whole focus of our IP counsel is securing for clients the maximum competitive advantage from effective exploitation and protection of their intellectual assets.

Complete practice and service package

Strategic portfolio management. Andrews Kurth brings a business perspective to the formation, implementation and enforcement of a client’s intellectual property strategy. Our IP lawyers team with colleagues from other practices, such as corporate, international and Internet/e-commerce to develop strategies for protecting and enhancing the revenue stream from patents, trademarks and copyrights. We develop global portfolios that optimize a client’s technology position in light of a thorough cost/benefit analysis of the various strategic options.

Patents. We regularly procure patents from the U.S. Patent and Trademark Office for clients in all technologies, and frequently perform patentability, validity, infringement and enforceability analyses of client and third party patents. We have extensive experience in ex parte and inter partes proceedings and routinely interact with patent examiners and with the Patent Office’s Board of Patent Appeals and Interferences. Our patent law counsel includes:

• Advising clients if an invention or technology can or should be patented
• Filing and prosecuting patent applications in the U.S. and in foreign countries
• Preparing agreements for patent and technology licensing, research and development
• Preparing infringement and validity opinions
• Litigating patent infringement claims

Trademarks. We help our clients with all aspects of trademarks and branding, including searches and selection, opposition and cancellation actions, prosecution of federal and international applications, trademark portfolio management and protection in the U.S. and foreign jurisdictions. We also work to protect against trademark dilution, draft and negotiate private label and co-branding agreements, assist with trademark licensing and transfers, and conduct trademark-related due diligence in mergers and acquisitions.

Copyrights. We advise clients on copyright ownership and authorship issues and register works with the Copyright office. We prepare agreements for licensing and transferring works protected by copyright, including those used on the Internet. Our lawyers litigate copyright and trade secret misappropriation claims, and handle claims relating to online infringement under the Digital Millennium Copyright Act.

Trade secrets and proprietary information. Protecting trade secrets often makes the difference between being first to market and losing competitive advantage. We advise clients on the effective strategies to maximize the value and minimize the disclosure risk of their trade secrets. This includes employee IP and confidentiality agreements, covenants-not-to-compete, employee training programs, and effective document classification and retention policies. When trade secrets are misappropriated, we pursue all remedies available in the courts to halt their unauthorized use.

Enforcement of intellectual property rights. Our lawyers have extensive intellectual property litigation experience in federal and state courts, government agencies, and in international forums. We successfully assert our clients’ intellectual property rights, defend against claims asserted by others, enforce contracts, and counsel on intellectual property disputes involving such matters as corporate acquisitions and takeovers, product liability and defect claims, and antitrust and trade regulation disputes.

International counsel. Andrews Kurth recognizes that procuring, exploiting and enforcing intellectual property rights and building intellectual property portfolios must be done globally. We use an extensive network of foreign associates to assist us in establishing and protecting the IP rights of our clients, including opposition and other foreign patent office proceedings and foreign litigation.

Transactional counseling. Andrews Kurth IP, corporate and transactional lawyers work as a team to insure that the IP components of major transactions are handled to our client’s maximum benefit. Our IP team has been involved in seed, private equity, IPOs, debt financings and refinancings, licensing in/licensing out, and many other types of deals. We also negotiate and draft cooperative research and development agreements and other forms of joint ventures and strategic alliances involving the development or transfer of intellectual property.

Comprehensive technology and industry application experience

Software and electrical engineering. Andrews Kurth’s team dedicated to software and electrical engineering combines patent law, technology and business skills to give clients the benefit of a global perspective. Several lawyers have technical backgrounds (often with advanced degrees) in computer science and mathematics, combined with extensive industry experience. As a result we can grasp developing interdisciplinary technologies such as bioinformatics, and cover diverse technical disciplines including software, business methods, hardware, networks, Internet, communications, semiconductors, instruments and other related technologies involving:

Mechanical. Our lawyers use their extensive backgrounds in electrical, mechanical, aeronautical and civil engineering, and physics to counsel the manufacturers of production and processing equipment in a wide range of manufacturing technologies, including:

Biotechnology/chemical/medical devices. We obtain patents for pharmaceuticals, biotechnology innovations (including genomics, gene therapy, immunology and genetically modified organisms), medical devices, diagnostic instruments and electrochemical devices. We help our clients exploit their patent assets through effective licensing and joint venture agreements, guide them in navigating the U.S. FDA’s product approval maze, and deal regularly with international patent issues involving European Union and GATT requirements.

Energy. Andrews Kurth has a long history of protecting the intellectual property assets of energy companies, including the prosecution of patents on down-hole and offshore drilling. Our technical expertise in the field encompasses organic and inorganic chemistry, petrochemicals, refining processes and polymers. Team experience also encompasses the oilfield service industry, including work as in-house patent counsel and as outside counsel representing an oilfield technology company.

Internet. Internet law is on the frontier of IP counsel, and Andrews Kurth lawyers have a firm grasp of the industry’s technology, business and legal needs. We help clients efficiently leverage Internet domain names in their business and deal with domain transfers, registrar dispute resolution proceedings and prosecution of cyber-squatters. We show our clients how to secure and register their copyrights for software, as well as graphic images, music, text, video or photography displayed on the Web, and help them enforce those rights against infringement under the Digital Millennium Copyright Act. We also advise on patents in the computer and electronics industries, and on trade secret protection for software development companies.

Competitive advantage from intellectual assets

Intellectual property is one of the most valuable assets any company has. When fully leveraged it can be a major source of profitability; when underused and improperly protected, it becomes a liability. Andrews Kurth IP lawyers know patent, trademark, trade secret and copyright law, and we also know the business sense behind it.

We give our clients full-service IP counsel, across a wide range of technologies and industries, in every part of the world, without getting lost in the detail. Our strength is straight talk and clear advice that turns a client’s intellectual property into a measurable competitive advantage.

Intellectual Property Litigation

Trademarks