Intellectual Property & Technology

Our Intellectual Property & Technology Group helps its clients succeed by protecting and enforcing their valuable intellectual property rights. In an economy where new technologies and new entrants into highly competitive markets only intensify the importance of identifying, protecting and enforcing intellectual property rights, the Pierce Atwood Intellectual Property & Technology attorneys successfully represent and advise a full spectrum of companies using diverse technologies on intellectual property matters.

Our Intellectual Property & Technology Group deals with all the legal issues and transactional matters relating to patents, trademarks, copyrights, trade secrets, data protection and privacy. Our clients range from Fortune 500 companies to start-ups. We handle work on the cutting edge of software, the life sciences, advanced materials processing and high-tech manufacturing.

SUCCESS

Bushmaster Firearms

Counsel for Bushmaster Firearms, Inc. in successful defense of trademark and trade dress infringement action.

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SUCCESS

 

Copyright Infringement

 

Counsel for Time Warner Cable in successful defense of federal court copyright infringement claims.

 

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SUCCESS

 

Advanced Metering Infrastructure Solution

 

Prepared and negotiated key technology license and service agreements for production and deployment of AMI solution. 

 


Technology License and Service Agreements

Prepared and negotiated multiple key agreements for HealthInfoNet's deployment of statewide health information exchange.

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Areas of Expertise

Biotechnology

Antigen Express

Boston Biomedical Research Institute

Maine Medical Center

Advanced Cell Technology, Inc.

IGeneX, Inc.

MultiCell Technologies, Inc.

Xenogenics Corporation

Pierce Atwood biotechnology team professionals provide advice and strategic counseling to biotech clients on patent portfolio development and prosecution, complex licensing transactions, sponsored research, research collaboration and material transfer agreements, as well as advice and counsel on general commercial and transactional work, mergers and acquisitions, complex financing transactions and securities matters.

Our biotechnology patent litigation attorneys have represented both inventors and alleged infringers in patent jury trials and have experience with cutting-edge patent matters involving technologies such as chemical compositions, embryonic stem cell and cloning technology.

Our biotechnology patent prosecution attorneys, many with advanced degrees, have prosecuted hundreds of patent applications directed toward diagnostic and therapeutic inventions, compositions and methods relating to gene therapy; novel proteins and nucleic acids; drug delivery compositions and methods; novel nucleic acid regulatory sequences; compositions and methods for modulating the immune response; techniques for the analysis of nucleic acids; and animal models for disease including transgenic and knockout models. We draw upon our industrial and academic research experience in a wide array of disciplines, including molecular biology, neurobiology, cell biology, immunology, biochemistry, genetics and chemical synthesis.

Copyright

Auburn Manufacturing

SD Warren Company

Anne Taintor, Inc.

The Timberland Company

Angela Adams

Fairchild Semiconductor Corporation

From registration with the U.S. Copyright Office to content licensing, rights clearance and open source software, our team of copyright attorneys counsels clients in the creative and technological economies on a broad range of copyright matters. Our copyright clients, including software and software-as-a-service companies, designers of home fashions and consumer products, authors, publishers, film makers, and others, face copyright challenges on a daily basis and routinely look to us for creative and efficient solutions.

We have extensive experience in structuring and negotiating a variety of copyright-related contracts, including license agreements, content distribution agreements, work-for-hire and assignment agreements, and publishing agreements. In partnership with our IP litigation attorneys, we have a proven track record of successfully representing clients involved in copyright litigation claims in federal and state courts and using federal notice and take-down procedures to prevent copyright infringement on the Internet.

Defending Against ATM Patent Threats

Robert H. Stier, Jr., a seasoned trial lawyer with over 30 years experience handling patent infringement cases, has built a nationwide practice representing biotech, semiconductor and other high tech clients.  He never expected to be applying his skills in defense of banks.  But when Automated Transactions LLC ("ATL") began threatening community banks in New England with expensive lawsuits unless they licensed a portfolio of 13 ATM patents, he saw a problem in need of a solution.  For any individual bank confronted with such a demand, there was no real choice: it was more expensive just to study the patents and analyze their claims than it would be to pay the nuisance-value licensing fees and make the hassle go away.  Bankers felt extorted, and they were justifiably upset with our legal system and its perverse incentives. 

Click here for more about how we're helping small banks harness the power of a joint defense against patent threats.

Entertainment Law

Gateway Mastering Studios 

Lone Wolf Documentary Group

Project Aware

Led by Gloria Pinza, who spent almost 10 years as an entertainment attorney in Beverly Hills, California, our Entertainment Team offers legal counseling and other services to entertainment businesses, individual filmmakers, producers, writers and other artists. Whether intellectual property protection, option or talent contracts, rights of publicity and privacy, distribution issues, licensing, or rights clearance, our team can provide practical and in-depth guidance.

IP Licensing & Transactions

Advanced Cell Technology, Inc.

Central Maine Power

Dreaming Code, Inc.

Envista

GE Healthcare

InterMed

Martin's Point Health Care

Multimodal Technologies, Inc.

National Life Insurance Company

Onpoint Health Data

Timberland

Verso Paper Corp.

Vertafore

With technology and intellectual property rights at the center of many commercial transactions and the Internet playing a critical role driving innovation and business growth, we assist clients with a broad spectrum of transactions involving intellectual property assets, the Internet, and commercialization and procurement of technologies and services. Our expertise includes patent, trademark and copyright licenses, software licenses, joint development agreements, sponsored research, research collaboration and material transfer agreements, online marketing and distribution agreements and IT and business process outsourcing agreements. Most importantly, whether conducting IP due diligence or negotiating a license, we help clients get deals done.

IP Litigation

In today's global economy, changes in technology and product designs are constantly occurring and the need to identify, protect and enforce intellectual property rights is increasing. Our attorneys provide intellectual property litigation services to a variety of industries, including biotechnology, financial services, computer and software technology, music and entertainment, and consumer and luxury goods. Litigation matters include copyright, trademark and patent infringement, Internet domain name and trade name disputes, unfair competition claims, as well as disputes over proprietary information, data security breach and trade secrets. We litigate matters before the Board of Patent Appeals and Interferences, the Trademark Trial and Appeal Board, state and federal courts at the trial and appellate levels, and before foreign tribunals. Whether you are an emerging business with potentially valuable intellectual property or a Fortune 500 company with a vast intellectual property portfolio, our attorneys provide expert and cost-effective representation.

Areas of Focus

  • Patent, trademark, copyright litigation of all manner of disputes, including, but not limited to, infringement, validity and enforceability, ownership, and licensing
  • Trademark Trial and Appeal Board (TTAB) Proceedings, such as opposition and cancellation proceedings, interference and concurrent use proceedings, and appeals of final refusals
  • Board of Patent Appeals and Interferences proceedings
  • Trade secret, unfair competition, and data security breach litigation in state and federal courts throughout the United States
Patents

Abbott Laboratories

Advanced Cell Technology

Antigen Express, Inc.

Borenius & Co Oy Ab

Boston Biomedical Research Institute

Boston University

Brookhaven National Laboratory

Clozex Medical, LLC  

IGeneX, Inc.

Lighthouse Imaging Corporation

Massachusetts Institute of Technology

MultiCell Technologies, Inc.

NTE Energy, LLC

Tufts University

Xenogenics Corporation

Velico Medical, Inc.

Domestic and international patent protection is a fundamental component of an effective business strategy for companies and institutions of all types and stages of growth. An effective and evolving patent strategy is critical for protecting and exploiting one's valuable intellectual property; especially as patent laws evolve and as market conditions change. Our Patent Law Group delivers results that are cost-effective and commercially significant allowing our clients to maximize revenue, market position and shareholder value while retaining and growing their core assets.

Our group includes seasoned patent attorneys, the majority of whom bring to bear practical industry experience coupled with advanced degrees in engineering and science. This unique combination allows our attorneys to understand our clients' business considerations and goals, and provide practical business advice that is tailored to each client's specific needs, opportunities and challenges.

We obtain and file both US and foreign patents for our clients, covering innovations that span the technological spectrum, including aerospace, biochemistry, biotechnology, business methods, chemistry, clean technology, computer science, electronics, lasers, mechanical, medical devices, nanotechnology, optics, pharmaceuticals, renewable energy, semiconductor devices/processes, software, and telecommunications. We also prepare and prosecute patent applications internationally—under the Patent Cooperative Treaty and in working with a network of seasoned patent lawyers around the world.

Areas of Focus

  • Patent prosecution and portfolio development
  • Patent litigation and dispute resolution
  • Licensing, negotiation of strategic alliances and technology transfer
  • Due diligence studies
  • Opinions on infringement, validity, enforcement, inventorship, and freedom-to-operate
Privacy & Cybersecurity

Unum

Hannaford

Martin's Point Health Care

PRISM

Whether arising out of trade secrets, personal data or other sensitive confidential information, privacy and cybersecurity issues affect every business. And with the proliferation of information technologies and growth of the Internet, they touch every part of an organization, including operations, customer service, finance, marketing/sales, HR and IT.

To ensure that clients obtain the best practical advice on complex issues such as record retention, breach notification, privacy policies, information safeguarding, e-discovery, consumer identification and authentication and other privacy and cybersecurity issues, we have assembled a cross-disciplinary team with both legal and industry expertise. As a result we are able to combine our knowledge in the areas of intellectual property, technology, financial services, healthcare, employment and litigation, with relevant expertise in privacy and data security issues to help clients solve problems and get deals done.

Visit our Privacy & Data Security practice area page for more information.

Trademark

Tom's of Maine

Angela Adams

Fairchild Semiconductor Corporation

Wright Express

S.D. Warren Company

Anne Taintor, Inc.

Vertafore

Via Prive LLC

Beale Street Barbeque

Whether managing an international trademark portfolio for a footwear and apparel company or counseling an individual designer with respect to trademark selection and clearance, our team of trademark attorneys provides practical, business-oriented advice. We understand the importance of knowing our client's business and have industry experience in electronics and semiconductors, fashion and apparel, footwear, personal care products, software and software-as-a-service, consumer products, e-commerce, entertainment, and financial services.

Leveraging a network of highly skilled trademark agents and counsel around the world, our trademark team has the reach and delivers results that brand owners expect. Our expertise extends to a wide variety of trademark-related matters, including clearance, registration with the U.S. Patent and Trademark Office and abroad, sending and responding to cease and desist letters, licensing, and managing the unique risks presented by cybersquatting, keyword advertising, and other Internet-enabled practices of concern to brand owners.

When business solutions are not available to resolve trademark disputes, we partner closely with our experienced team of IP litigation attorneys to enforce and defend trademark rights in federal and state courts, in opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board, and in domain name disputes under the UDRP before ICANN-approved dispute resolution service providers.