Intellectual Property & Technology

Pierce Atwood's team of biotechnology professionals provide advice and strategic counseling to biotechnology 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.

Entrepreneurs turn to our Catalyst Program to get an idea off the ground, access funding sources, address basic legal requirements for running a business, and more. We welcome clients with creative ideas and disruptive new technologies. We tailor our legal services and advice according to your particular vision and near term objectives. Our Catalyst team members are experienced business advisers who know the challenges and triumphs that lie ahead of you, and how to prepare for them.

Jon Gelchinsky and Matt Stein discuss the importance of having trademark paperwork in order, because undoing the damage of not doing so can be costly.

Andrea Suter and Matt Stein share a cautionary tale of a company receiving less value in its acquisition due to unclear IP agreements.

Click here to learn more about how our Catalyst program can help your start-up or emerging business.

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.

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. Pierce Atwood has a broad range of experience representing clients in IP disputes and litigation including copyright, trademark, and patent infringement, Internet domain name and trade name disputes, unfair competition claims, as well as disputes over proprietary information and trade secrets. Our attorneys litigate matters before the United States Patent & Trademark Office, state and federal courts at the trial and appellate levels, and before foreign tribunals. Our industry experience includes biotechnology, financial services, computer and software technology, music and entertainment, and designers of luxury goods.

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

More information on our IP Litigation practice >>

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.

We understand the pressures companies face to promote their products and services effectively and efficiently via traditional and digital channels, including social media. To support these efforts, our attorneys regularly counsel and assist companies with all aspects of marketing and advertising law across a wide range of industries.

Our marketing and advertising law attorneys are particularly well-positioned to advise on intellectual property ownership issues and all aspects of rights clearance, including rights of privacy, rights of publicity, copyright, music rights, trademark, and content licensing. We also have expertise advising clients on trademark and unfair competition issues arising out of search engine keyword advertising, such as Google’s AdWords program.

Sweepstakes and contests are increasingly promoted via social media and we regularly help companies navigate the complex and evolving regulatory framework, including providing restructuring advice to ensure alternative free means of entry to avoid violation of state lottery laws and assistance with the registration and bonding process for sweepstakes in New York, Florida, and Rhode Island.

We also counsel clients on a broad range of advertising compliance topics including:

• FTC compliance and avoiding claims of unfair/deceptive acts and practices
• Using customer testimonials and endorsements in marketing materials
• Using the word “free” in marketing materials
• Making material disclosures clear and conspicuous in electronic marketing materials
• Conducting email marketing campaigns in compliance with the federal CAN-SPAM Act
• Conducting text messaging marketing campaigns in compliance with federal law
• Conducting telemarketing campaigns in compliance with federal and state laws
• Structuring “cause marketing” campaigns to comply with industry practices and state commercial co-venturer laws
• Offering and marketing warranties and customer satisfaction guarantees in compliance with applicable federal and state laws

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

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.

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.

Please visit our Trademark Practice Group page for more information.