Clients often meet with MacCord Mason to explore intellectual property protection for a product that is about to be, or has already been, introduced into the market. In other instances, new clients may contact the firm after receiving a notification that one of the client’s activities infringes third-party intellectual property rights.  The firm is prepared to address either circumstance.  The scope of intellectual property protection available to the client can be optimized, and the risk of litigation and attendant cost significantly decreased, through a continuing dialog between the firm and client management at all stages of research and development. Accordingly, the firm seeks to develop long-term client relations in which the firm gains a detailed understanding of the client’s business, its goals, and its competitive environment. With this knowledge, the firm is best able to assist the client in:

  • Organizational structuring to ensure that potential intellectual properties are not lost through improper record keeping, premature disclosure, or misunderstandings with employees concerning ownership.
  • Early identification of third-party intellectual property assets that could potentially conflict with product developments and assistance in designing around the potential problem.
  • Identification and evaluation of intellectual properties and the level and type of protection that is commercially appropriate. Commercialization of intellectual properties through agreements with third parties.

Protection of Intellectual Property Rights

Virtually every business creates intellectual properties incidental to the development and implementation of its competitive strategies. Some properties may relate to new products, chemical compositions, or manufacturing processes that are protectable under the patent laws. Product names or other indicia that help to identify a product or service may be protectable under the trademark laws. Still other developments, such as blueprints, software, and textual or graphic materials, may be protectable under the copyright laws. The purpose of intellectual property protection is to provide the owner with the exclusive right to the intellectual property.

In the case of patents, the patent owner is granted the right to prevent others from making, using or selling the invention as the invention is defined in the issued patent. Registered trademarks and common law trademark rights give the owner the right to prevent others from using confusingly similar trademarks, taking into account such factors as the similarities of the products, distribution channels, and target consumers. The copyright laws prevent others from using a work as the basis for preparing another work, even if in another medium.

Attempting to protect all intellectual property developments is generally not a sound commercial strategy, even if protection is obtainable. Instead, the client, with assistance of counsel, must determine if the cost to acquire, maintain and enforce the exclusive right is justified by the commercial advantage that the exclusivity provides. In making this determination, factors such as market potential and profitability of the product, alternatives available to the competition, and likely product longevity, must be considered.

In the final analysis, intellectual property is a tool that can be used by a company to gain a competitive advantage, or used by others to the company’s considerable financial detriment. As business becomes increasingly competitive as a result of new technologies, the ability of a company to use this tool to its advantage becomes increasingly critical to growth and profitability.

Post Grant Services With MacCord Mason

The passage of the America Invents Act and surging E-Commerce has changed the landscape for attacking invalid patents and defending validity on behalf of patent owners.  Pairing complementary litigation professionals with practitioners having expertise in IP acquisition provides our clients cost-effective and efficient post-grant proceeding representation.  The collaborative skill sets provide the litigation experience and understanding of intricate prosecution to develop offensive tactics and defensive safeguards to maximize the chance of delivering successful results for our clients.  Our team handles Post Grant Review proceedings to challenge competitor’s intellectual property rights, importation disputes at the International Trade Commission, IP enforcement on E-Commerce platforms, and routine cases before the Patent Trial and Appeal Board.

MacCord Mason Litigation Services

Few events disrupt a company’s activities more than receiving a complaint alleging infringement of intellectual property rights. Significant costs are likely to be incurred, even if the company ultimately prevails. Management time and attention will be diverted to the litigation. The company may be required to significantly modify the accused product or process or marketing campaigns. Customer credibility may be irreparably damaged.

MacCord Mason attorneys are experienced in all phases of intellectual property litigation and can provide the client with the quick response and guidance required to defend against an infringement claim, whether the litigation proceeds through trial or is resolved through formal or informal negotiation. Litigation matters within MacCord Mason are led by Jim Lester with support from the attorneys having primary responsibility for providing business guidance to the client. Litigation paralegals also support the litigation attorneys. The MacCord Mason attorneys are also qualified to prevent other parties from using the client’s intellectual property without authorization

MacCord Mason Trademark Enforcement Services

Brand owners must monitor the use of their marks across e-commerce sites, social media, websites, and search engines, in addition to traditional channels of commerce. Our trademark and litigation experts have experience enforcing marks through the TTAB, ITC, and Federal Courts, as well as through multiple alternative dispute forums, including UDRP, Google AdWords, Amazon Brand Registry, and eBay Vero. We have the experience and knowledge to provide cost-effective solutions for brand enforcement.