Intellectual Property & Technology

Saul Ewing's Intellectual Property & Technology Practice Group

Saul Ewing's Intellectual Property & Technology (IP/T) Practice Group focuses on two areas: (1) intellectual property protection and enforcement, and (2) technology contracting, primarily for information technology.

Intellectual Property

Our IP/T attorneys understand that a company’s intellectual property is often its strongest asset, one that can be protected and leveraged to gain a competitive advantage. Access to an experienced, diverse and business-savvy team of IP/T attorneys is vital to the success of emerging and mature companies alike. Attorneys in our IP/T Practice Group bring to clients a 360-degree perspective of IP matters, having knowledge and experience in the three key IP service areas: 

Patent, Trademark, and Copyright Procurement

• Preparing and prosecuting patents in all technical disciplines including biotechnology, pharmaceutical, chemical, nanotechnology, electrical, telecommunications, software, mechanical, and medical devices
• Conducting invention-capture sessions with development teams to identify and document innovations
• Securing trademark and copyright registrations

Counseling and Transactions

• Assessing third-party IP rights through infringement and validity studies
• Navigating around third-party IP rights through freedom-to-operate, clearance, and design-around studies
• Developing strategies to protect trade secrets from misappropriation by employees and competitors
• Conducting IP due diligence for mergers, acquisitions, and investments in companies
• Preparing companies for, and assisting them with, IP due diligence by potential investors, lenders, and merger partners
• Formulating action plans for optimizing acquisition and use of IP
• Performing IP audits and mining portfolios for licensing/sale opportunities
• Advising on compliance with privacy and data protection laws and regulations

Litigation

• Litigating patent, trademark, and copyright infringement claims
• Arbitrating and mediating IP disputes
• Protecting proprietary markets and generating licensing revenue through the assertion of IP rights
• Enforcing and defending trademark and trade dress rights
• Handling International Trade Commission §337 proceedings to bar infringing imported goods
• Advocating at emergency hearings for restraining orders and injunctions
• Protecting domain names through ICANN UDRP arbitrations and court proceedings
• Handling bid protests with respect to governmental technology procurements

Technology Contracting

Our IP/T attorneys represent both customers and vendors across a wide range of industries, particularly healthcare, financial services, and manufacturing. Common types of transactions include:

• Complex system procurement and implementation arrangements, including hardware, software, and services elements
• Development of RFPs and responses for technology acquisitions
• Licensing of patents, trademarks, copyrights, software, and data
• Technology transfer agreements
• Software as a Service (SaaS), application service provider (ASP), and hosting agreements
• Telecommunications systems and services agreements
• Business process outsourcing agreements
• Joint development, joint marketing, joint venture, and strategic partnership agreements
• Support for technology and intellectual property aspects of mergers, acquisitions, and other general business transactions
• Internet and e-commerce agreements
• Governmental technology procurement contracts, particularly involving school districts and state agencies