Intellectual Property

Our IP team offers a wide range of intellectual property services to large, mid-size, and small businesses throughout the nation and around the world. We also assist foreign clients in extending protection for intellectual property rights developed in their home countries to the U.S. market and assist U.S. clients in securing U.S. and global protection of intellectual property rights.

Our attorneys and IP specialists have extensive legal and professional training, including wide-ranging backgrounds and advanced degrees in electronics, computer science, electrical engineering, physics, e-commerce, information technology, chemistry, mechanical and chemical engineering, biotechnology, biology, medical devices, and structural and civil engineering. In addition, many of Honigman’s lawyers have worked for major corporations, national law firms, and IP boutiques and as examiners in the United States Patent and Trademark Office (USPTO), giving them valuable, multifaceted perspectives on our clients’ IP issues.

Our Services

Securing Patent Protection
Our attorneys work with clients in a broad array of industries to develop and secure U.S. and foreign patent protection. Our services include:

• Drafting and prosecuting patent applications in the U.S. before the USPTO and in other countries under the Patent Cooperation Treaty through an extensive network of local patent counsel
• Evaluating and either defending or asserting claims of infringement of existing patents
• Advising as to the patentability of inventions and on the non-infringement and validity of existing patents
• Developing design-around strategies to avoid infringement of a given competitor's patents

Brand Management
Honigman advises on how best to select, launch, protect, and enhance trademarks and service marks in addition to the products and services which they symbolize. We strive to provide cost-effective strategies to help our clients compete successfully, distinguish their goods and services in the marketplace, and maximize the value of their intellectual property rights portfolios and return on investment. Our attorneys use an interactive, team-based approach that emphasizes transfer of knowledge in both directions. Understanding each client's way of doing business and business objectives is a top priority.

Trademark Clearance, Prosecution, and Registration
Honigman performs trademark searches and provides opinions on a cost-effective basis—one mark at a time or in volume. Once a given mark or work is cleared, upon request, we file U.S. applications and use our worldwide network of proven foreign associates to file outside the U.S. We provide advice on registration strategies throughout the world. Our team reviews and advises on product packaging and advertisements, fair use, and comparative advertising and helps develop private label programs. We also develop cost-effective post-registration maintenance strategies.

Investigation, Enforcement, and Litigation
Honigman's ability to develop and implement appropriately aggressive and highly successful enforcement efforts is well known. Such efforts may be limited to a single matter or extend to country-wide programs to clear the weeds of infringers and counterfeiters and, thus, open markets for new brands or technologies. We have extensive experience in conducting investigations directly and through outside investigators and law enforcement agencies. Our IP group is well versed in the enforcement laws of many foreign countries and draws from the vast experience of a worldwide network of investigators and attorneys.

We have broad experience in technology and intellectual property litigation, including patent, trademark, trade dress, and copyright infringement actions; cybersquatting and Uniform Domain-Name Dispute-Resolution Procedure (UDRP) actions; trade secret and unfair competition litigation; licensing and other contractual disputes; enforcement of confidentiality and noncompetition agreements; and trademark opposition and cancellation proceedings. Honigman's litigators have extensive experience working with experts in mechanical and electrical engineering, the automotive field, computer science, mathematics, and other arts and disciplines. We appear before federal and state courts, the USPTO, and the International Trade Commission; in alternate dispute resolution forums and foreign administrative agencies; and in civil, tax, and criminal courts.

Trade Dress/Design Patent
Our attorneys possess substantial experience in obtaining trade dress protection of product packaging look-and-feel, as well as securing trade dress or design patent protection for product configurations, where appropriate. We have considerable experience in enforcing trade dress and design patent rights, which we use to guide our recommendations for protection.

E-commerce
Honigman represents companies that use e-commerce to complement their brick-and-mortar marketing and distribution efforts as well as companies that rely solely upon e-commerce. We counsel clients on complying with laws and regulations affecting the internet, including intellectual property, privacy, and commercial code compliance. We negotiate and draft a wide variety of e-commerce agreements, including website hosting and development, advertising, marketing, fulfillment services, and related agreements. Our attorneys help clients police the internet as well as find and prosecute domain name, trademark, copyright, and patent infringement matters.

Tax and Intellectual Property Rights
We are experienced in U.S. and foreign tax laws regarding the transfer and licensing of technology and intellectual property rights, including special issues such as transfer pricing, valuations, tax incentives, and amortization. We have extensive experience in creating and managing intellectual property rights holding companies in the U.S. and overseas.

Licensing, Distribution and Technology Transfer
Honigman represents clients in the acquisition, development, and exploitation of technology and intellectual property rights through licensing, distribution, technology transfer, and other agreements.

Licensing of Computer Software and Acquisition and Leasing of Computer Hardware
We represent companies in the design, development, and acquisition of customized computer systems; in the acquisition of computer software and hardware; in agreements for the provision of information technology services, including outsourcing; in the development of application service provider (ASP) solutions; and in other transactions with respect to information technology products and services.

Acquisitions and Dispositions
Honigman represents both acquirers and sellers in company acquisitions and dispositions. We are experienced in dealing with the issues key to these transactions, including ownership of technology and intellectual property rights, contractual arrangements with key personnel, complex tax and accounting structuring, securities registration and anti-fraud compliance, and regulatory compliance.

Our Clients

Honigman represents clients in many different industries, including automotive (original equipment manufacturers and suppliers), retailing, publishing (newspapers, books, magazines, and multimedia), gaming and hospitality, e-commerce, food and beverage, restaurant, advertising, insurance, software, electronics, consumer products, fashion, banking, transportation, telecommunications, medical services, medical devices, and real estate.

Our IP Department also represents numerous pharmaceutical and life science companies in protecting technologies that are core to their business survival. We are handling international patent portfolios and related regulatory listing, extension, and working requirements for three recently approved pharmaceuticals as well as for several that are in Phase III clinical trials.