Intellectual Property

The lawyers in Kaufman & Canoles’ Intellectual Property Group protect the products and ideas of clients in Virginia, across the country, and worldwide. We’re committed to their success and providing the business, technical, and legal guidance they need to be prepared for the present and to plan for future growth.

Clients turn to Kaufman & Canoles’ Intellectual Property Group for practical advice and technical precision across intellectual property law issues. We prosecute patents, trademarks, and copyrights and evaluate business processes and information to develop systems and procedures that safeguard trade secrets and other confidential information. We negotiate and document technology licenses and transfers, craft software licensing agreements, and guide clients through emerging business models like ASP arrangements, outsourcing, data mining, and open-source licensing. We manage and help businesses and individuals commercialize IP portfolios. And when things go wrong, we aggressively litigate disputes in court and before governmental bodies.

Copyright
The heart of our copyright practice is in licensing, enforcing, and defending a client’s copyright interests across a wide range of assets: from a newly discovered, unpublished manuscript of Huckleberry Finn to software and internet content, architectural designs, massive data compilations, television programs, and more. We regularly register copyrights for clients and work with them to ensure they have agreements to secure interests from independent contractors and employees. In addition, we assist businesses and individuals seeking to avoid inadvertently infringing the rights of others. We’ve even copyrighted the appearance and positioning of museum specimens of human bodies.

Trademarks and Service Marks
Our attorneys work closely with clients to select, clear, register, license, protect, and defend their marks, which include logos, colors, combinations of sounds, distinctive packaging, and product designs. We regularly register trademarks with the USPTO and other jurisdictions, including international registrations under the Madrid Protocol. In addition, we have a trademark litigation practice in federal court and before the Trademark Trial and Appeal Board of the United States Department of Commerce. We have been particularly active in disputing domain name and keyword challenges, including cybersquatting litigation in federal court under the ICANN Uniform Domain Name Dispute Policy.

Intellectual Property Litigation
Kaufman & Canoles’ IP trial lawyers represent plaintiffs and defendants in complex patent, trademark, and copyright trials in Virginia and throughout the nation and are particularly adept at successfully navigating the challenges of trying IP cases within the “Rocket Docket” of the United States District Court for the Eastern District of Virginia. We also represent clients in disputes before the Trademark Trial and Appeal Board, WIPO, and other tribunals under the Uniform Domain Name Dispute Resolution Policy and in further alternate dispute resolution proceedings.

Patents
The patent prosecution attorneys at Kaufman & Canoles have substantial background and experience in patent law and a wide range of business arrangements. As such, we are uniquely positioned to help clients protect their intellectual property while achieving commercial advantage from their patent portfolio through licensing, strategic alliances, and other arrangements. In addition, we have a wealth of experience and success in litigating infringement claims on behalf of both plaintiffs and defendants.

Trade Secrets
When it comes to protecting trade secrets, keeping quiet is not enough. You must establish practices and procedures – confidentiality agreements, information tracking, restrictions on company access, and more – to safeguard confidential information and create legal remedies in case those practices fail.

Our team helps clients identify the value of company know-how and confidential information, along with manufacturing processes, customer knowledge, market surveys, and product testing results. Then we can determine the best internal practices and procedures to protect that data. We also represent plaintiffs and defendants in trade secret litigation and have particular strengths in guiding clients through the process of prosecuting or defending alleged trade secret misappropriation claims.

Internet and Computer Law
Our attorneys are active in ecommerce, big data, emerging software, data mining, open-source licensing, and other computer law issues. We develop shrink-wrap and software license agreements, software development and beta test site agreements, and customized enterprise licenses and systems integration agreements. We also help clients implement online user and ecommerce arrangements, obtain DMCA protection, and litigate IT and internet disputes, including domain name challenges under the cybersquatting provisions of the Lanham and ICANN’s Uniform Dispute Resolution Policy. In addition, we advise clients on UCITA, the legal code governing computer information transactions in Virginia.

IP Asset Management
We help clients identify and utilize the full range of their intellectual property assets, ensuring that all employee, contractor, and vendor agreements secure the rights needed. In addition, we work with companies to implement policies and procedures that document creative efforts and safeguard confidential information. Our lawyers regularly help clients inventory and prioritize their IP portfolios, often through complex cross-licensing arrangements, rights allocation agreements, pooled technology and standards, and other financial arrangements.

Licensing and Technology Transfer
Our lawyers have many years of experience helping clients generate value from their IP assets through licensing arrangements and technology transfers, often organized as joint ventures, joint development agreements, strategic alliances, outsourcing arrangements, patent pools, or complex cross-licensing arrangements. We regularly negotiate licensing and technology transfer arrangements and help clients develop strategic licensing programs that maximize their research and development ROI across a wide array of business and technological fields – pharmaceuticals, financial instruments, consumer products, data compilations, software, and more – and involving multiple public and private parties. We also help clients commercialize technology through multiple distribution channels and in various jurisdictions.

Marketing & Advertising
Our intellectual property lawyers have considerable strengths in the related field of federal and state advertising law, including, most prominently, the rules and guidelines promulgated by the Federal Trade Commission. We regularly guide clients through the maze of federal and state regulations governing spam and internet activities, telemarketing, packaging and labeling, and promotional activities in advertising, free offers, sweepstakes and contests, and rebates to help them avoid infringement while still engaging in comparative advertising and permissible parodies, and we have represented clients in FTC investigations.

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