Intellectual Property Counseling

Representative Experience

• Counseled a manufacturer of form, fill, and seal-type packaging machines with all of its intellectual property matters, including patent prosecution, trademark guidance, licensing, and intellectual property infringement matters.
• Provided a due diligence analysis of the company’s patents, trademarks, copyrights, and domain names worldwide to military equipment maker Eagle Industries before it was sold. Eagle’s strong patent and trademark portfolio and its ability to retain market share in the key sector of the advanced technology market greatly increased the overall value of the company during its acquisition by ATK, an aerospace and defense corporation.
• Prepared and obtained utility patents for mutant marigolds developed by a horticultural company for use as coloring agents in food products and as crucial components of dietary supplements.
• Represented global engineering firm as it sold one of its wholly-owned subsidiaries to a group of employees who were leaving the company to run the wholly-owned subsidiary as a separate and standalone company, including negotiating five intellectual property agreements.
• Counseled national food manufacturer regarding brand best practices and potential strategies to support manufacturer's nationwide sales to a major warehouse club.
• Served as intellectual property counsel for an apparel on-demand manufacturer and retailer client, including assisting the client in identifying and documenting inventions, preparing and prosecuting patent applications, brand counseling, trademark filing and prosecution, and advising on complex issues of licensing and ownership of client's intellectual property assets.
• Managed domestic and international patent portfolio of a leading medical device company and start-up medical device companies. Prepared new patent applications and prosecuted pending patent applications to secure issued patents on medical devices, including medical devices implementing executable computer software.
• Managed domestic and international patent portfolio of a major infant formula manufacturer. Prepared new patent applications and prosecuted pending patent applications to secure issued patents on formulations and containers.
• Managed large trademark portfolio of premier manufacturer of bathroom products, including filing strategy, filing new applications for registration, prosecution of pending applications for registration, and maintenance of existing registrations.
• Advised on, procured, and managed international trademark protection for a leading manufacturer of bathtubs, shower units, and spas. Assisted non-U.S. attorneys and their clients in obtaining U.S. trademark protection.
• Advised leading food service equipment manufacturer on patentability of new commercial oven technology.
• Conducted intellectual property due diligence for corporate mergers and acquisitions.
• Advised media on intellectual property licensing copyright, trademark, and rights of publicity laws.
• Obtained patents and trademarks to expand the scope of protection and limit competition for various manufacturers. Designed patent portfolios to protect the products clients manufacture, as well as the machinery and methods used to produce those products.