Intellectual Property/3iP Practice Group

Benesch’s Innovations, Information Technology & Intellectual Property (3iP) Practice Group represents clients in protecting their most valuable asset class: their intellectual capital. Whether obtaining intellectual property rights, prosecuting infringement actions, or helping clients exploit their intellectual property rights, the 3iP Group has the legal training and experience to help clients get the most out of their intellectual capital. In addition, Benesch’s 3iP Group is skilled in counseling clients with respect to IP rights of others and in defending clients in IP actions brought against them in courts and administrative agencies throughout the United States and internationally.

Our intellectual property client base is as broad and diverse as the services we provide. Those clients that rely on our services for IP protection and advice include individual entrepreneurs, universities and other research institutions, early stage companies, high technology businesses, middle market companies, and large multinational corporations. We have served a vast array of industries and businesses including: tire and rubber; fluid handling components and systems; paints and coatings; medical devices; plastics and polymers; liquid crystal displays; advanced lighting; adhesives; vehicle suspension systems; combustion systems; refrigeration systems; communications equipment; dispensing systems; material handling equipment; vehicle braking systems; food processing equipment; power tools; fitness equipment and other consumer goods; financial services; insurance services; music and entertainment; and computer software.

The Benesch 3iP team has experience in all facets of intellectual property law and practice, with each member possessing a unique set of qualifications to help advance our clients’ interests. Many of our attorneys have worked as scientists or engineers in industry, and others have taught law or authored publications that serve as important reference materials to the profession.

We have experience with all forms of intellectual property, including patents, copyrights, trademarks, and trade secrets. Services we provide include patent and trademark drafting and prosecution, advising clients on patent and trademark infringement and validity matters, and drafting intellectual property-related agreements. In addition, Benesch’s 3iP Group has experience in complex patent, trade secret, trademark and copyright litigation.

Benesch’s 3iP team also has counseled clients regarding information technology and e-commerce matters. These engagements have included negotiation of myriad software, hardware and services agreements as well as preparing terms and conditions of use for web sites, drafting privacy policies for web sites and evaluating web site content for compliance issues. Our team has also advised clients regarding data security breaches and application of the PCI-DSS/CISP security standards in connection with both on-line and off-line sales. Four of Benesch’s attorneys are CIPP certified.

With the support of Benesch’s 3iP team, our clients are better positioned to preserve and protect new technologies with IP, use and manage their intellectual property thoughtfully, and avoid the IP rights of others so as to avoid unnecessary risk. For additional information about Benesch’s 3iP practice, please contact one of our 3iP lawyers.

Patents

Benesch has a full service patent practice featuring registered patent attorneys with diverse technical backgrounds. We represent clients in every phase of the patent process in the U.S. and coordinate patent-related activities outside the U.S. We also represent clients on a variety of other patent-related matters, including clearance of new products, design around alternatives, and enforcement programs. In short, Benesch’s patent practitioners have obtained important patents for our clients on a wide variety of technologies, and our patent litigators have represented clients in complex patent cases throughout the U.S. and produced positive results on a consistent basis. Our patent lawyers regularly speak and write about patent issues of interest to clients, the bench, and the patent bar.

 
Services include:

  • Patent searching, including state-of-the-art searches and right-to-use searches
  • Preparing and prosecuting patent applications relating to a wide variety of inventions
  • Drafting and negotiating patent-related agreements, including licensing
  • Advising on patent infringement, validity, and enforceability issues
  • Prosecuting and defending patent infringement actions, interferences and §337 action

Recent representative engagements include:

  • Successfully defended a client in a patent infringement action involving a key product, including successfully opposing the plaintiffs’ motion for a preliminary injunction
  • Retained by a client to manage a large patent portfolio relating to laser machining technologies
  • Engaged to represent a global diversified industrial manufacturer to defend it in a patent infringement action relating to circuit breakers, filed in federal court in Texas
  • Defended a lighting product manufacturer in a patent infringement cases involving fluorescent lamp patents, and negotiated favorable settlement of claims and licenses
  • Advised numerous clients in developing and implementing comprehensive patent strategies, including educating inventors, assessing and processing invention disclosures, preparing and prosecuting high-quality patent applications, clearing new product designs, and enforcing patent rights against infringers

Trademarks

Benesch’s 3iP Group has a full service trademark practice. We represent clients in every phase of the trademark process in the U.S. and coordinate trademark-related activities outside the U.S. Among other services, our trademark lawyers obtain trademark registrations for clients and assist them in developing and implementing enforcement programs on a global basis. Our trademark litigators represent clients in courts and administrative agencies throughout the U.S. in trademark infringement and have produced excellent results for our clients.

Services include:

  • Guiding clients through the selection, adoption, use, and registration of trademarks and domain names
  • Obtaining state and federal trademark registrations
  • Drafting and negotiating trademark-related agreements, including trademark licenses
  • Prosecuting and defending trademark and trade dress infringement actions
  • Advising clients on proper trademark usage and policing their mark
  • Recent representative engagements include:
  • Successfully defended a global paints and coatings producer against a temporary restraining order in a trademark infringement action filed by a competitor in federal court
  • Developed and implemented trademark enforcement strategies for multiple clients
  • Represented a household glue marketer in a trademark infringement action against counterfeiters, resulting in a permanent injunction and $2.25 million judgment
  • Obtained a permanent injunction for a wireless telephone service provider in a trademark infringement action against a former licensee
  • Obtained product design trademark registrations for a consumer products company
  • Obtained a permanent injunction and damages for a marketer of fitness equipment in a suit against an importer of counterfeit equipment

Copyrights

Benesch’s copyright lawyers are experienced in all facets of protecting artistic and creative works of authorship under domestic and international copyright laws. Our copyright lawyers assist clients in maintaining control over products of their creativity, as well as protecting the profits resulting from those works. Our copyright litigators are experienced in representing clients in disputes concerning copyrighted works. In addition to our ability to represent clients in litigation, we are also skilled in helping clients resolve disputes in favor of business solutions.

Services include:

  • Counseling clients on protection of copyrightable subject matter, including software, musical compositions and sound recordings, and literary works
  • Filing of applications for copyright registration
  • Drafting and negotiating computer software license agreements
  • Representing clients in litigation involving copyrighted works
  • Procuring and negotiating recording and music-related agreements

Recent representative engagements include: 

  • Successfully defended a client in copyright infringement suit brought by the world’s largest computer software company, including defending against a preliminary injunction
  • Represented a major record label in successfully defending a musical composition copyright infringement lawsuit
  • Represented a ring tone provider in connection with clearing copyrights for use in cellular telephone ring tones
  • Successfully represented a plaintiff record company/music publisher in a copyright infringement action against a global television and film company concerning use of sound recording and musical composition in feature film and DVD without permission
  • Represented a technology company in procuring and negotiating content agreements with various record companies for the resale of albums to public libraries for rental to patrons
  • Successfully represented a music publishing company in a copyright infringement action involving unlawful use of musical composition as ring-tone

IP Transactions

Benesch’s 3iP transaction lawyers have substantial experience in all phases of a sale or transfer of intellectual assets. We help companies prepare for sale to enhance the value of their IP and perform due diligence for purchasers of intellectual assets. Our business acumen and extensive experience in all aspects of business negotiations provide clients sound counsel on appropriately structuring the transaction.

Services include:

  • Counseling clients on technology transfer strategies to maximize value
  • Drafting and negotiating agreements involving intellectual property, including licenses
  • Technology transactions including the acquisition, divestiture and licensing of intellectual property assets and rights including the purchase and sale of intellectual property portfolios at private sale and auction
  • IP due diligence and technology acquisition and commercialization
  • Information systems and information technology implementation transactions (including large scale, multi-site ERP and CRM implementation transactions), IT development, technology services and business process outsourcing, professional services, service level, large scale computer and telecommunications network services, equipment purchases, sales, licenses and maintenance (including embedded software)
  • Open source software issues and licenses
  • SaaS, PaaS, IaaS and cloud computing services agreements
  • IT reseller, Internet, eCommerce, healthcare IT (including electronic medical records software implementation) agreements
  • Big Data, data warehousing, data classification, and federal, state, local and foreign privacy and data security (including European Union rules and directives, US/EU and US/Swiss Safe Harbors, HIPAA and Gramm Leach Blilely privacy and security rules) and data breach response and notification
  • Preserving, protecting and commercializing intellectual property (patents, trademarks, copyrights and trade secrets) assets and rights
  • Mergers, acquisitions and divestitures of businesses, IP aspects of M&A transactions, and corporate and securities matters including early stage, venture capital and private equity financings
  • Conducting due diligence of targeted IP assets to identify strengths and weaknesses
  • Conducting audits of IP portfolios and procedures to assess the value, scope, and coverage

Recent representative engagements include:

  • Represented a technology company in the expansion of its product lines through the acquisition of software rights and the transfer of subscription-based license agreements
  • Represented automotive suppliers in international IP license agreements
  • Represented a biotechnology company in negotiating license, supply and distribution agreements
  • Represented a multitude of diverse purchasers and sellers in stock and asset transactions involving international patent and trademark portfolios
  • Represented a major consumer products company in negotiating agreements regarding various music-related properties
  • Represented a major music publication regarding various licensing and co-branding deals with major music publishers and record companies