Intellectual Property Prosecution & Transactions

The most recognizable Fortune 500 multinational corporations, medium-sized companies and start-ups come to McGuireWoods for strategic advice on their intellectual property portfolios. Our lawyers and other professionals provide patent, trademark, and copyright prosecution and counseling, licensing and IP due diligence on corporate transactions for companies with famous brands, complex technologies and the most challenging transactional needs.

Patent Prosecution: McGuireWoods manages patent portfolios for over 100 clients. We prepare, file and prosecute applications for client inventions (developed domestically or abroad) in the U.S. Patent and Trademark Office (USPTO) and in its foreign counterparts. We conduct novelty, validity and state-of-the-art patent searches, invalidity and non-infringement investigations and analyses, and due diligence reviews. As our lawyers are regularly involved in patent litigation, we also prosecute applications with disputes in mind, which enables our clients to confidently assert their patents in lawsuits or licensing negotiations. We have experience with technologies that include semiconductors, telecommunications, heavy machinery, automotive, pollution control, medical devices and equipment, pharmaceuticals, and computer hardware and software, among others.

Trademark & Copyright Prosecution: McGuireWoods has significant depth in all areas of prosecution covered by and related to the U.S. Lanham Act. We offer comprehensive, global brand management services, from pre-clearance and risk analysis to enforcement of our clients’ trademark, trade dress and related rights. Our lawyers serve as worldwide trademark counsel to clients with large, multinational trademark portfolios, some approaching 1,000 registrations and applications. We work with clients to maintain more than 7,700 trademark applications and registrations in the United States and abroad.

Our copyright practice includes obtaining copyright registrations for websites, computer software, books, architectural works, trade materials, brochures, newsletters and original works of art, through traditional filing methods and the Electronic Copyright Office (eCO) online system adopted by the U.S. Copyright Office. We provide proper documentation to ensure a clear understanding regarding the ownership of copyrightable work produced by a client’s employees or independent contractors.

IP Transactions & Licensing: We assist clients with transactions involving intellectual property, from acquisitions and due diligence for financing and investment transactions to joint venture intellectual property contributions, securitizations using IP and licensing or similar commercial intellectual property agreements. Our team's experience covers an array of goods and services found in industries such as energy, education, telecommunications, life sciences, and music and entertainment. Our lawyers also advise private equity firms on numerous IP transactions across industries.

Experience

  • REPRESENTATIVE MATTER

    Wireless device manufacturer

    McGuireWoods was co-counsel to a manufacturer of wireless devices, in patent litigation brought by a patent holding company. McGuireWoods was retained to represent our client after the Federal Circuit issued its first opinion on appeal and played a central role in the team that represented the client in the widely-publicized district court remand proceedings.

  • REPRESENTATIVE MATTER

    Publishing company

    Copyright Infringement Litigation, M.D. Fla.  McGuireWoods was counsel for the defendant, a publishing company, in a copyright infringement case.  The case involved several issues of first impression concerning the validity of compilation copyright registrations, and the availability of statutory damages in cases involving compilation copyrights.  The matter settled before trial.

  • REPRESENTATIVE MATTER

    Market leader for semiconductors and system solutions

    McGuireWoods was co-counsel to a market leader for semiconductors and system solutions in this patent infringement case. At the first trial, our client was granted judgments of non-infringement, prevailed on its counterclaim for fraud, and was awarded punitive damages, an anti-suit injunction and $7.1 million in attorneys’ fees.

  • REPRESENTATIVE MATTER

    Leading pharmaceutical manufacturer

    Represented leading pharmaceutical manufacturer in a declaratory judgment action and counterclaim involving  patent infringement claims related to next generation patents on a pain medication.

  • REPRESENTATIVE MATTER

    Leading generic and specialty pharmaceutical company

    Representation of a leading generic pharmaceutical company in this case filed by a global biopharmaceutical company where the allegations relate to infringement of patents involving crystalline forms of an AIDS treatment drug.

Team Leaders

Full Team
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