Matters
- Representation of a consumer brands company in the development of a trademark estate that accounts for other marks, while providing a unique message and guidance including branding and entry into a market.
- Management of the patent portfolio of a Fortune 500 telecommunications company, including close communication with key stakeholders, and assisting the in-house team with the building of a portfolio that is aligned with their business, all within the confines of the client's budget.
- Obtained a patent for a drilling fluid bioremediation product in less than nine months, taking advantage of prioritized examination and aggressive examiner interviews. The patented technology resurrected a struggling company, is spurring phenomenal growth, and is helping to provide a green and cost effective way to drill for oil and gas.
- Representation of a client in the preparation and negotiation of a naming rights agreement for a professional sports stadium.
- Representation of numerous clients in successful ex parte appeals before the Trademark Trial and Appeal Board.
- Secured decision ordering the transfer of 10 domain names from a serial typosquatter pursuant to a UDRP action before the World Intellectual Property Organization.
- Filed, and successfully settled, a UDRP action before the World Intellectual Property Organization, resulting in the transfer of an infringing domain name that was registered by a client’s direct competitor.
- Counseled clients regarding information privacy and security policies in connection with U.S. and foreign laws (e.g., COPPA, HIPAA, and the EU laws) and industry requirements (e.g., PCI DSS).
- Representation of numerous local, regional and national health care providers in negotiating information technology, security, outsourcing and privacy transactions and related agreements.
- Represented numerous buyers and sellers regarding intellectual property due diligence, acquisition and transfer in mergers, acquisitions, venture capital investment and lending transactions ranging from tens of thousands to hundreds of millions of dollars.
- Negotiated syndicated patent acquisition and licensing deal that resolved ongoing patent litigation with nine defendants and resulted in acquisition of more than 180 patents pertaining to display technology used in smartphones and other personal digital devices.
- Advised software developer in two licensing deals to integrate digital imaging technology into smartphone operating systems.
- Filing and prosecution of approximately 50 trademarks under the Madrid Protocol and has filed/prosecuted more than 2500 marks throughout the world including countries such as Europe, Argentina, Austria, Bolivia, Japan, Benelux, Spain, Canada and many other countries.
- Prepared, prosecuted, developed, and managed worldwide patent portfolio directed to more than 50 active pharmaceutical ingredients for two Spanish pharmaceutical companies.
