Practice Areas & Industries: Sutherland Asbill & Brennan LLP

Practice/Industry Group Overview

Sutherland has an active intellectual property practice, consisting of more than 40 full-time intellectual property attorneys and a full complement of paralegals and staff. The intellectual property group provides all of the services required by those needing to protect and leverage intellectual property rights in a wide variety of industries in the U.S. and internationally. These services include patent, trademark and copyright prosecution, counseling, litigation and licensing; trade secret and technology litigation and counseling; domain name portfolio management, recovery, and dispute resolution; due diligence reviews in connection with mergers and acquisitions; and intellectual property audits and evaluations.

A significant number of Sutherland's intellectual property lawyers are registered to practice before the U.S. Patent and Trademark Office and hold advanced technical degrees in areas including chemistry, chemical engineering, computer engineering, electrical engineering, mechanical engineering, molecular genetics, medicine, biomedical engineering, microbiology, immunology and physiology. This includes five members with PhDs, ten with Master's degrees, and two Medical Doctorates. We handle intellectual property matters in a number of technical fields including biotechnology, pharmaceuticals, biomedical devices, computers, software, chemical technology, minerals and telecommunications. This technical patent prosecution expertise is coupled with broad litigation experience.

Services Available

Patents -- We have over 20 registered patent attorneys who provide counseling and representation in all aspects of patent law, including:

• Preparing and filing patent applications in all of the technological arts;
• Prosecuting patents both in the U.S. and internationally;
• Auditing technology to identify patentable subject matter and developing strategies for protecting the same;
• Advising as to the alternative methods of protecting patentable, commercially valuable information;
• Mapping client patents and/or competitor patents for strategic analysis;
• Developing and implementing patent programs for the growth and management of a patent portfolio;
• Performing due diligence reviews and negotiating IP-related provisions in mergers and acquisition transactions;
• Preparing non-infringement invalidity and clearance opinions with regard to patents;
• Drafting, negotiating and advising with regard to patent licensing; and
• Litigating issues of ownership, licensing, validity and infringement of patents.

Trademarks and Service Marks -- We work with our intellectual property clients to acquire and protect the names, marks and symbols used to identify their businesses, products, goods or services, both in the U.S. and abroad. Our counseling and representation extend to all facets of trademark law, including:

• Performing searches to determine the availability of names and marks for use and/or registration;
• Preparing and filing trademark applications in the U.S. and abroad;
• Prosecuting trademark applications;
• Representing clients in Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board;
• Advising on matters of marketing, advertising or promotion as it pertains to trademark use and protection;
• Supervising trademark audits and performing due diligence in the context of corporate structuring and restructuring;
• Handling issues relating to the transfer of marks or rights therein, such as by licensing, assignment, security agreements, mergers or acquisitions;
• Policing potentially infringing uses of our clients' marks in the U.S. and abroad;
• Litigating in federal and state courts involving issues of trademark grants, infringement and dilution, unfair trade practices, licensing and assignment;
• Representing clients in Section 337 cases before the International Trade Commission; and
• Representing clients in domain name arbitration proceedings.

Copyrights -- Sutherland's representation of individuals and companies in the area of copyright law includes:

• Establishing ownership of copyrighted works;
• Registering copyrights;
• Issues relating to the licensing, transfer and assignment of copyrights; and
• Litigating claims of infringement and related matters.

Our clients have included architects, engineers, and computer services and software firms, publishers, authors, videocassette distributors, toy manufacturers, carpet and floor covering manufacturers, apparel manufacturers, musicians, estates of performers, research groups, advertising agencies, art museums, and electric utilities.

International IP Portfolio Management -- Several clients with large international IP portfolios rely on Sutherland for IP portfolio management services. Sutherland takes a team approach with its clients, assisting and/or managing to varying degrees in accordance with its clients' particular needs. Sutherland assigns project assistants, paralegals, and attorneys, as appropriate, to insure that the portfolio management is conducted in as efficient and cost effective manner as reasonably possible. Sutherland delivers these services for some clients via a secure Extranet, to enable the client direct 24/7 access from anywhere in the world to various types of information. For example, the Extranet can be updated weekly (or however frequently the client may request) with postings of various status charts relating to registration, enforcement and transaction-related follow-up for the portfolio. In addition, the Extranet can serve as an electronic file room for frequently consulted information and documents, such as license agreements and other important transaction-related documents, and substantial litigation-related submissions such as evidence of priority and distinctiveness. The Extranet can easily be tailored to the particular needs of the client, and allows for varying degrees of access depending upon the circumstances. For example, access to all materials may be given to the in-house legal department, but limited access to business or marketing people or others with a need to know the status of trademark rights in a given country.

Sutherland offers a variety of portfolio management services for trademarks and other IP rights such as patents, copyrights, and domain names, including:

• Docketing and maintenance of deadlines for registrations, pending applications, enforcement activities, and litigations on a world-wide basis;
• Counseling on development of new IP rights, taking into account particular language or cultural issues for the target market; clearance of those rights, and ad copy review prior to promotion and sale;
• Advising on protecting those rights via filing, prosecution and registration, if appropriate, on a world-wide basis, based on filing strategies developed in consultation with the client to take advantage of various international filing conventions;
• Engaging and supervising the work of foreign associate counsel, including managing payment and other related accounting services;
• Negotiating and drafting of license agreements and tracking use by licensees for purposes of monitoring and maintaining quality control;
• Enforcing and defending IP rights on a world-wide basis and in cyberspace, and collecting and maintaining evidence of use and distinctiveness in support of enforcement efforts;
• Conducting due diligence on a worldwide basis;
• Advising on formation and maintenance of IP holding companies, the transfer of IP rights into such companies, and the licensing of such rights for use;
• Recording registered user or license agreements (where required by law), assignments and security interests in connection with transactions; and
• Conducting IP audits.

E-Commerce -- Sutherland's counseling and representation extend to all facets of e-commerce and cyberlaw, including:

• Domain name portfolio management;
• Domain name recovery and dispute resolution;
• Web site development agreements;
• Web site terms and conditions of use, including linking agreements;
• Privacy and security policies;
• Portal agreements;
• Software development and licensing agreements;
• Internet and Intranet usage policies;
• Licensing traditional Intellectual Property for online uses;
• Counseling clients on infringement issues unique to the Internet, such as uses of metatags and other electronic coding, search engine "key words" and sponsored links, contextual advertising, banner ads, and pop-ups; and
• Litigating and arbitrating claims of infringement and unfair competition relating to online uses of trademarks, service marks, trade names, and trade dress.

Know-How, Confidential Information and Trade Secrets -- We work with our clients to design, maintain and efficiently implement procedures and programs to protect their know-how, confidential information and trade secrets. Our counseling and representation include:

• Assisting in the analysis of affected information and the identification of appropriate protective measures;
• Designing employee policies regarding the treatment of sensitive information;
• Preparing and assisting in the enforcement of non-competition and confidentiality agreements;
• Advising clients on the implementation of security measures; and
• Representing clients in trade secret litigation.

Clients:
Corvis Corp., MCI, Inc., Sharp Corp. , Post-X Corp.