Intellectual Property and IP Litigation | Fennemore Craig

Intellectual Property

Most businesses have intellectual property. Many of them don’t even know it. For those businesses, intellectual property represents an untapped asset that, if properly protected, could increase their value. 

Our intellectual property attorneys know how to identify intellectual property and they know how to protect it. Since our clients present us with a wide range of issues to address, we can be flexible in fashioning fee structures based on the problem to be solved.

Our Experience

Our intellectual property attorneys possess wide-ranging experience and skills, including registered patent attorneys with specialized technical knowledge and trademark attorneys, litigators, and lawyers who protect intellectual property through commercial transactions (licensing, joint development agreements, and e-commerce strategies). Many of our IP attorneys have experience in all of these areas and therefore can help clients sort through the proposed mix of IP protections for their individual situations.

Representative clients span a spectrum from universities to startups to multinational domestic and international businesses in industries such as mining, metallurgy, film coating, geospatial imagery, pharmaceuticals, biotechnology, clean-tech, optics, nondestructive testing, electronics, robotics, restaurants, renewable energy, the equine industry, agriculture, and computer software and hardware. As our clients add intellectual property assets to their portfolios, our intellectual property legal services continue to thrive and grow.

Blockchain and Cryptocurrency

We are poised and ready for the next revolution in the legal industry: blockchain technology.

The excitement surrounding blockchain is no doubt just ramping up to what will undoubtedly become a deafening roar in the near future. The power of blockchain is its potential to encrypt transactions in a decentralized network where a digital system of agreements, transactions and interactions is accomplished without an intermediary. We envision a day where many types of legal matters will be accomplished through the secure power of blockchain, including property records, court filings, transfer of funds to clients and many types of contracts.

Contractual Dispute Resolution

At this early stage of development, parties will be able to account for all contingencies in a self-contained, self-executing smart agreement. Our blockchain lawyers stand ready to represent their clients in disputes arising from smart agreements.

IP Rights

Intellectual property law is yet another niche where blockchain may have immeasurable effects when copyrights, trademarks and patents are at stake. Blockchain offers a secure way to track first use, and any type of digital asset can be effectively protected – for example, a photographer or filmmaker could manage licensing rights to their images or video, while a musician could track royalty payments for the use of their audio files.

Smart Contracts

One way in which our law firm will see increasing use of blockchain is through smart contracts. Smart contracts are self-executing agreements that parties encode into blockchain, which is decentralized, but accessible to all participating parties. Parties can exchange anything of value, including money, property, stocks, etc., while eliminating the need for intermediaries like escrow agents or notaries. Although many businesses lack current familiarity with such technology, our cryptocurrency attorneys anticipate smart contracts will be utilized with greater frequency going forward. Although blockchain technology has challenges of its own, it can often be faster, cheaper and more secure than traditional transactional mechanisms. We have blockchain lawyers at our firm who are qualified to assist clients in preparing and using smart contracts today.

Is blockchain right for your business? Please call Todd Kartchner today for more information on how we may work together utilizing this exciting technology.

Emerging Businesses and Technologies

Our business lawyers recognize and appreciate the value of entrepreneurship and innovation, and are committed to providing efficient, straightforward and business-oriented solutions that facilitate success and avoid pitfalls while recognizing early capital is precious and expensive.

Employment Law Considerations

Employees are the heart of any company. Our experienced employment attorneys can provide invaluable advice and assistance to a company in managing its human resources against a backdrop of complicated state and federal employment laws. This assistance includes:

  1. Deciding between employees, temporary workers and independent contractors;
  2. Creating the appropriate employee agreement and/or independent contractor agreement (if needed);
  3. Obtaining an Employer Identification number (EIN) from the U.S. Internal Revenue Service;
  4. Withholding state and federal taxes (W-2, W-4, Arizona Form A-4) from payroll;
  5. Obtaining workers’ compensation insurance;
  6. Arranging for payment of unemployment insurance tax;
  7. Understanding the laws surrounding employee eligibility to work in the United States (Form I-9)
  8. Setting up payroll accounting process, set up record keeping;
  9. Posting required notices in the workplace;
  10. Filing employment-related taxes (quarterly);
  11. Getting organized: set up record keeping; adopt workplace safety practices if necessary; understand employee benefit plans; draft an employee handbook that includes policies necessary to protect the rights of employees and the company; and
  12. Providing immigration support to hire the people needed for the new business, regardless of their citizenship.

Engaging the Market

As an emerging company begins operating, it naturally undertakes various commercial activities, such as selling product, engaging distributors and sales representatives, licensing trademarks and/or technology rights, securing supplier arrangements, hiring consultants, and developing corporate partnerships and collaborations. Each of these actions involves important issues that can dramatically affect the future of an emerging company. Our startup attorneys have the experience and ability to convey a meaningful understanding of the relevant issues and to offer solutions that allow emerging businesses to undertake these activities efficiently, with confidence and without unwittingly losing rights.

Venture Accelerator

Our Fennemore Craig Venture Accelerator Program focuses on start-ups by providing access to legal services, as well as helping to launch their enterprises. Through this start-up initiative, we will defer a modest amount of legal fees for those accepted into the program and a small equity investment will be made through a separate fund. We has enlisted Roy Farrow as the program's Business Services Manager. Roy has considerable experience with a similar start-up program which helped launch and support hundreds of growth companies in Silicon Valley and elsewhere.

Litigation

We understand litigation is an expensive proposition that can threaten the limited financial, mental and energy resources of any company, especially an emerging one. However, we also acknowledge that disputes can nevertheless happen and litigation is sometimes unavoidable. Our business litigation attorneys regularly and successfully represent and defend clients in a wide range of commercial disputes, and these business litigators have been selected through the years to argue critical cases that have fundamentally shaped the Southwest. When the need arises, we work closely with clients and our litigation specialists to discern the various option and likelihoods of success, and help assure the vigorous and efficient pursuit of successful resolution.

Protecting Technology, Branding and Other IP

For an emerging business, intellectual property plays an important role – from selecting a name for your company or new product to documenting ownership and controlling disclosure of key information. Failure to take simple steps under the intellectual property laws early on can foreclose later opportunities to obtain important protections. Our intellectual property lawyers have extensive experience in helping our clients select an appropriate strategy for protecting their intellectual property, based on the protection offered and the associated costs.

  • Trademark Law and Copyright Law: In today’s world, appropriate branding of products and services is a key consideration for any emerging business and in any industry. A company must ensure not only that it has the right to use the intended name or mark, but that those rights can also be protected nationally and potentially internationally as the market expands. Our copyright and trademark attorneys can assist in analyzing the risks and benefits of possible brands to not only avoid disputes, but to also protect a company's investment by making its advertising and marketing dollars count.
  • Patent Law: For many emerging businesses, the ability to protect their valuable technologies in the marketplace is an absolute requirement in order to attract investment for further growth. Patenting technology can increase its value and ultimately the value of the company. Patents can also provide licensing opportunities and open doors for collaboration and further development. Understanding and pursuing patent protection for new technology requires the advice of experienced patent attorneys with the right industry background. Failure to meet certain requirements of the patent laws can foreclose the opportunity to obtain patent protection. Our patent lawyers can assist a company in determining if patent protection is right and in meeting the requirements to secure important rights in that technology.
  • Confidentiality and Trade Secrets: Any analysis of the protection of a company's intellectual property should include a discussion of trade secrets. Sometimes a company's technology, and its investment in that technology, is best protected by simply keeping it secret. However, in order to obtain “trade secret” protections for important processes, formulas, techniques or other business or technical information, the law requires certain steps be taken to maintain their confidentiality. Our IP legal services include developing internal business policies and procedures to protect those trade secrets and ensuring that a company can assert and legally enforce its rights, if necessary.

Discussions with potential collaborators, investors, contractors and service providers inevitably require disclosure of confidential information. Appropriate confidentiality agreements prohibiting disclosure of confidential information are important tools for emerging companies. Our intellectual property lawyers can assist developing and appropriately utilizing suitable nondisclosure agreements tailored for a particular company.

Raising Capital

More often than not, neither the entrepreneur’s own funds nor early company revenues (if any) provide sufficient resources to enable necessary investments in people, equipment and working capital. Our finance attorneys assist clients in raising the capital necessary to achieve a venture’s true potential. 

  • Private Placements: Because an IPO is obviously not a viable method to raise capital for early-stage companies, it is often necessary to seek investment from private sources. Our startup attorneys have helped many clients over the years raise necessary equity capital through private placements. Even though we maintain a detailed understanding of the intricate rules and requirements applicable in this area (which changed substantially in recent years), our business attorneys know how to break this down into practical guidance clients can actually comprehend and use, and to assist clients in generating the documentation necessary to offer an investment opportunity in compliance with regulatory requirements. 
  • Venture Capital: For companies in certain high-growth businesses, venture capital may be an appropriate source of capital. Venture capital can be quite complicated and intimidating even for the average practitioner, but our finance attorneys have deep experience with venture capital financings and regularly enjoy helping clients plan, structure, negotiate and close such transactions. Our venture capital legal services include representation of both startup companies and venture capital funds themselves, which enables us to help clients thoroughly understand the distinguishing characteristics likely to attract venture capital investment, as well as the issues likely to dampen such interest.  
  • Commercial Loans: Many times neither private placements nor venture capital offer an attractive means to raise sufficient capital. Commercial loans can often provide effective and cost-efficient sources of capital. Depending on the particular business and use of capital, various government-sponsored programs are available (through the Small Business Association and others) to help make loans available to companies that might not otherwise qualify. Our finance lawyers frequently assist clients with a wide range of lending transactions, including large and small loans, revolving lines of credit and term loans, as well as secured and unsecured loans. 

Securing Space to Operate

Securing space to operate a new or existing business can be an exciting opportunity, but it can be a sizable amount of work and have a significant impact on the bottom line of the company’s operations. Whether the business leases space or purchases the property (which is capital intensive for new businesses), there are many important issues that should be considered. Here are just a few noteworthy items our startup attorneys recommend you consider.

  • Leasing Commercial Space: Leasing commercial space may provide you with more flexibility than purchasing commercial real property. In most instances, you can lease a small space to begin, and even make arrangements to share common facilities and support staff, then expand your space if growth dictates. In other cases, you may want to lease space in a stand-alone building or a single floor or suite of a larger building. Whichever type of leasing arrangement you consider, start by taking these steps:
    • Anticipate your needs. Do you expect the business to grow quickly, and will you need space for expansion sooner rather than later? Are you planning to stay as a small operation for the foreseeable future? Or do you desire a high-traffic location for a retail business, with a longer lease to ensure your returning customers can easily find you? Does the business need industrial space that supports light or heavy manufacturing? Does the business simply need executive office space and access to the occasional use of a conference room and support services?
    • Find out the current going rate for commercial space in your area. A commercial real estate broker can be a valuable resource in helping you find the current rate. Doing so will help you better judge whether the rental terms offered by the owner are reasonable and what incentives may be available and currently offered by competing landlords.
    • Consult with a real estate attorney to make sure the lease agreement is going to meet your needs. A commercial real estate lawyer will likely identify areas of concern you may not have considered.
    • Once a location has been identified, the parties have negotiated a nonbinding letter of intent and are ready to document the lease agreement, your commercial real estate attorney should be able to assist you in making sure all the important provisions are included in your lease agreement. Generally speaking, a lease agreement should include the following information:
    • The amount of rent, including any planned increases (escalations) and the amount of a deposit or whether you can substitute a letter of credit from your bank
    • The lease beginning and ending date, and any options to renew it
    • What additional services the rent payment includes, such as utilities, janitorial, signage rights or parking rights
    • Who is responsible for maintenance and repairs, taxes, utilities or insurance
    • A full description of the space and a list of any tenant improvements the landlord agrees to make
    • Written confirmation of verbal information given to you, such as any restrictions for competing businesses, the approved zoning and uses, and whether the space complies with local, state and federal requirements (such as the federal Americans with Disabilities Act)
    • Whether you may sublease your space or assign the lease, and how either you or the owner may terminate the lease
  • Owning Commercial Space: In some cases, you may find it makes more sense to purchase your place of business. This may be particularly true once your business becomes established and you have a good idea of what your expected growth will be.
    • Purchasing options can vary widely. Small businesses, for example, may be able to purchase a “business condominium” similar to residential condominiums. Other businesses may join together in a co-op or tenant-in-common relationship to purchase commercial real property to cut down on the initial capital requirements generally required. In other cases, an outright purchase of the building may work best for your needs.
    • Before purchasing commercial or retail space, be sure to speak with a real estate attorney. Purchasing business space is much different from purchasing a home; you will likely need someone with expertise to assist you in your acquisition.

Some of the same steps identified above for leasing commercial space are applicable to purchasing commercial real property. You should anticipate your needs and identify a place that will best fit those needs. Understanding commercial real property rates is key to negotiating the right deal. Utilizing a knowledgeable real estate lawyer throughout the acquisition process is essential in what can be a complicated process.

Starting Up

We employ a team-based approach to addressing the needs of companies just starting out, including programs for entrepreneurs. Should the new entity be a simple corporation, an S corporation, an LLC or even a limited partnership? Should the new entity be formed in the state of residence, in Delaware or perhaps in some other state?

Other considerations are also critical at the onset, and our startup lawyers can help with those needs. If multiple owners are involved, it will be important to establish certain agreements among the owners on issues such as transferability of ownership; buyback rights; piggyback and tag-along rights; vesting of ownership over time; and decision-making authority. Thoughtful advanced planning and resolution of these issues are not only important in sidestepping future landmines that can derail any business — large or small — but certainly will be necessary by the time an emerging company expects to take in investments from third parties.

Enforcing Intellectual Property Rights

Of course, protection may mean little without enforcement, and owners of intellectual property are the ones who must enforce their rights. We have successfully enforced our clients’ intellectual property rights and have defended our clients against attacks from others. Trademark, patent and copyright lawyers have considerable experience in resolving intellectual property disputes through negotiation, mediation, settlement or arbitration. Our intellectual property attorneys have successfully litigated significant intellectual property cases involving patent and copyright infringement; trade secret misappropriation; trade dress and trademark infringement; nondisclosure and noncompetition agreements; computer hardware and software licenses; cyber piracy; domain names; software piracy; false advertising; e-commerce issues; commercial disputes over intellectual property; and unfair competition, patent misuse and patent-related antitrust allegations. The stakes in these cases often are high, and necessary legal action frequently involves requests for preliminary injunction or temporary restraining orders. We have both obtained such injunctive relief and successfully defended against actions seeking to restrain or enjoin our clients. Our intellectual property lawyers have the experience to respond swiftly and effectively in this environment, whether in asserting or defending against claims.

Identifying IP to Protect

A first step in any representation is identifying intellectual property worthy of protection, whether it is the name of a business, its sales brochure, its software code or the process for making its key product. A next step is designing an appropriate and effective strategy to protect and leverage IP based on the client’s overall objectives, such as those regarding cost and public disclosure. Of course, designing such a strategy requires an understanding of the various aspects of patents, trademarks, copyrights and trade secrets and the interplay between them, which our IP lawyers have. 

Often, the most significant manner in which intellectual property and other business assets can be protected is by avoiding legal entanglements with others. In those situations, we determine the intellectual property rights of others and how our clients can stay in the clear. Thus, where competitors have certain patents, we determine the extent and breadth of third-party rights and advise our clients about appropriate design-around or other noninfringement strategies.

Patents Law and Trade Secrets

PATENTS
We have one of the largest pharmaceutical and biotechnology patent law practices in Arizona, with attorneys handling matters in such diverse areas as genomics, proteomics, immunology, microbiology, gene therapy, vaccine development, drug discovery platforms, medical devices, diagnostic kits, monoclonal antibodies, drug delivery systems, agriculture inventions, cosmetics, nutraceuticals, and methods for treating diseases such as cancer and diabetes.

Our patent attorneys also have considerable experience preparing and prosecuting patent applications in the areas of general mechanical and hydraulic powered machinery; optics; nuclear power systems; radiation detection systems; nondestructive testing systems; firearms; planar and linear sputtering apparatus; power supplies for sputter deposition and film coating systems; high pressure cutting and abrading systems; particle classifiers; sonic nozzle flow meters; ion mobility spectrometers; control systems; wireless networks; video games; solar systems, electronic entertainment devices; electronic motors, bicycles; fishing reels; chemical processes for extractive metallurgy; inorganic chemical compositions and processes; geospatial and radar imagery; geospatial positioning; path planning; stereovision systems; and business methods.

Our registered patent attorneys have also prepared and prosecuted plant patents and design patents. Not only do our patent lawyers have significant experience in prosecuting patents before the U.S. Patent and Trademark Office, but they also diligently work to maintain and protect patent rights once a U.S. patent has issued. As part of a strategy of worldwide protection, we understand the importance of and timing for obtaining foreign patent rights. We also manage the national and international patent portfolios for a number of clients.

TRADE SECRETS
In some cases, although an invention may be patentable, the client would prefer to protect it by maintaining it as a trade secret. Since a trade secret loses its value if it is no longer secret, our IP lawyers help clients develop strategies and policies to keep their trade secrets secret. This is particularly important during periods of high employee turnover.

Patent Litigation


Patent protection means little without enforcement. We enforce our clients' intellectual property rights and defend clients against attacks from others.

Our patent litigation attorneys know how to identify intellectual property and they know how to protect it. Since our clients present us with a wide range of issues to address, we can be flexible in fashioning fee structures based on the problem to be solved.

Our intellectual property attorneys possess wide-ranging experience and skills, including registered patent attorneys with specialized technical knowledge as well as trademark attorneys, litigators and lawyers who protect intellectual property through commercial transactions (licensing, joint development agreements, e-commerce strategies). Many of our IP litigation attorneys have experience in all of these areas and therefore can help clients sort through the proposed mix of IP protections for their individual situations.

Representative clients span a spectrum from universities to startups to multinational domestic and international businesses in industries such as mining, metallurgy, film coating, geospatial imagery, pharmaceuticals, biotechnology, clean-tech, optics, nondestructive testing, electronics, robotics, restaurants, renewable energy, the equine industry, agriculture, and computer software and hardware.

Privacy and Data Security

Our privacy and data security practice addresses the administrative, regulatory and litigation concerns of business in the face of mounting threats and increasing state and federal regulation in the areas of data privacy, data breach and security.

Our privacy and data security practice focuses on prevention and risk counseling, data breach preparation, investigation and response, regulatory compliance, privacy and data security policies and training, and related litigation and dispute resolution. Should a data breach, government investigation or litigation occur, our attorneys are prepared to work with clients to navigate the complex regulatory landscape of today’s digital environment.

We provide counsel and representation in the following areas:

Protecting IP in Business Dealings

Intellectual property is at the heart of many commercial transactions today. We help clients to both protect their intellectual property and maximize its value in mergers and acquisitions on the one hand, and in bankruptcy situations on the other hand. IP audits and due diligence are a significant part of that process, as well as negotiating specific language to benefit our clients’ intellectual property rights in the relevant agreements. We also help clients protect their intellectual property and financial interests in joint development projects by understanding and appreciating both the technology involved and the clients’ objectives. 

Licensing may be a key component in realizing value from intellectual property. No matter whether our clients are the licensor or the licensee, our IP attorneys help to protect their interests. We have extensive experience in negotiating and preparing licensing and distribution agreements in the U.S. and around the world. 

In addition, we counsel clients on ways in which they can expand their businesses and generate additional revenue, not only by developing new technologies, but also by expanding existing technologies into new product and geographic markets, including acquisitions of IP assets of distressed companies. To develop new technologies and enhance their existing intellectual property assets, our clients frequently need additional capital. We regularly represent clients in negotiating and structuring public offerings, private placements, joint ventures, corporate reorganizations, mergers and acquisitions, product acquisitions and sales, leveraged lease financings, leveraged buyouts and venture capital financing. 

Our intellectual property lawyers also work to ensure intellectual property rights are clearly established and protected with respect to our clients’ employees and independent contractors. This is especially important during periods of layoffs and high employee turnover. When employees leave, it is vital their employer’s intellectual property assets do not leave with them. Similarly, when employees arrive, it is vital to set forth clearly what intellectual property will belong to their employer. Our copyright, patent and trademark lawyers prepare appropriate form agreements, as well as custom drafted documents when circumstances warrant. If problems do arise, we work on behalf of our clients to resolve disputes by negotiating with or pursuing claims against former employees and their new employers.

Trademark and Copyright Law

With the emergence of global markets, protecting trademarks and brands has become increasingly important. Our trademark lawyers help our clients register, maintain and license their trademarks in the U.S. and around the world. As part of that process, we help clients develop branding strategies and select strong marks. Our trademark attorneys manage significant worldwide trademark and service mark portfolios for clients ranging from large multinational companies to startups. 

We also develop internet and e-commerce policies and guidelines for our clients and counsel on these issues, including policies specifically directed to the use of social media. We plan and implement strategies for domain name acquisition and protection. Our copyright lawyers also advise clients regarding copyright protection and registration for creative works ranging from software to sales literature to books and publications.