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 approximately 9,000 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.