Intellectual Property
Intellectual property (IP) is a highly specialized area of law. Our attorneys are well versed in both the legal and technical aspects of IP. Those technical areas cover a wide range of engineering, scientific, computer and medical principles as well as business methods.
We counsel clients on all aspects of IP including patents, trademarks, copyrights, and trade secrets. We are committed to helping our clients throughout the IP process from application for protection to enforcement of rights to defense of infringement claims.
Services and Specialties
- Defining and valuing your IP
- IP portfolio audits
- IP protection recommendations
- IP opinions for different purposes, e.g. patent non-infringement, patent invalidity, etc.
- IP portion “due diligence” for business acquisition or transfer
- IP sales or assignments
IP and Technology-Based Agreements
Work with our business lawyers to protect IP in joint venture and other commercial agreements. Draft, review and negotiate technology-based agreements and other agreements that include some aspect of IP or technology including:
- Website development agreements
- Website hosting agreements
- Software development agreements
- Software maintenance agreements
- Revenue sharing agreements
- Licensing agreements
Patents
- Explanation of the requirements for patentability and possible alternatives
- Patent searches
- Preparation and prosecution of patent applications
- Docketing and maintaining the patent for its lifetime
- Asserting and defending patent rights in litigation and administrative proceedings
Trademarks
- Evaluation of the mark, determination of current usage and recommendations for further usage
- Trademark searches
- Preparation and prosecution of trademark registration applications
- Docketing the registered mark for maintenance and renewal
- Asserting and defending trademark rights in litigation and administration proceedings
- Challenging domain names that use client marks
Copyrights
- Review and determination of whether the work is protectable
- Preparation and prosecution of copyright registration applications
- Asserting and defending trademark rights in litigation and administrative proceedings
- Challenging domain names that use client marks
Trade Secrets
- Identification of trade secrets
- Recommendation as to steps to be taken to preserve trade secret protection
- Preparation of third-party and employee agreements to protect trade secrets
- Assert and defend trade secrets in litigation
Litigation
- Preparation and response to notices of infringement or cease and desist letters
- Enforcement of IP assets
- Defense against claims of infringement or misappropriation
- In the case of alleged patent infringement, preparation and prosecution of requests for patent re-examination
- In the case of trademarks, pursuing or defending opposition and cancellation proceedings
Practice Chair
News & Events
- Overview of Intellectual Property, Its Value and Protecting Your Assets – Virtually!November 15, 2022 - Events
- Social Media, Intellectual Property and Protecting Your A$$ets!November 14, 2022 - Events
- Davis|Kuelthau’s Intellectual Property Team and Attorney Joseph Heino Recognized by Chambers USA for 2022June 16, 2022 - Press Releases
- Overview of Intellectual Property, It’s Value and Protecting Your AssetsNovember 17, 2021
- D|K Advisor SeriesNovember 17, 2021 - Events
- Intellectual Property and Patent Attorney Michael Bendel Appointed ShareholderOctober 25, 2021 - Press Releases
- Put Your Name On It (IF It Is Yours) – Trademarks, Copyright, Proprietary, and Intellectual Property and Rights ExplainedOctober 21, 2021
- Davis|Kuelthau’s Real Estate Team and IP Attorney Joseph Heino Recognized by Chambers USA for 2021June 14, 2021 - Press Releases
- Davis|Kuelthau Adds Epiphany Law Team, Expanding Existing Presence in the Fox Valley RegionFebruary 25, 2021 - In the News Press Releases
- Attorney Sherry Coley Named Firm’s New Office Managing Partner for Appleton and Green Bay OfficesJanuary 28, 2021 - In the News Press Releases
Publications
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Sharing Isn’t Always Caring! Beware of Posting Copyrighted Material on Social Media
August 17, 2022 -
Intellectual Property and Your Employees – Make Sure You’re Protected
May 24, 2022 -
Intellectual Property: Understand It to Protect What You Own, Drive Value to Your Business and Positively Impact Your Bottom Line
April 26, 2022 -
Joe Heino, Mike Bendel, Erin Kaprelian, and Alexis Merbach Author Chapter in 2022 Chambers Global Practice Guide on Trade Marks USA: Trends and Developments
March 1, 2022 -
Three Type of U.S. Patents and When to Use Them
January 19, 2022 -
NDAs – Significant Business Tool or Simply More Paperwork?
November 23, 2021 -
Driving Value Before an M&A Transaction
November 18, 2021 -
Social Media, Intellectual Property and Protecting Your A$$ets!
September 28, 2021 -
M&A Market is Still Hot—For Now
August 25, 2021 -
The Supreme Court Issued Google v. Oracle Copyright Decision
April 14, 2021