By patenting their innovations, our clients increase the value of their intellectual property and enhance their ability to compete in the marketplace. We work with laboratory and research teams and R&D and product development groups to determine whether, when and where it is in our clients’ business and technical interests to seek patent protection. And we don’t just file patent applications. Drawing on our experience with patent litigation, corporate financings and technology transactions, we implement IP strategies that conserve resources, add measurable value and give our clients a cost-effective and commercially practical competitive edge.

We help clients obtain more than 750 US and foreign patents each year, covering innovations that span the technological spectrum, including aerospace, biochemistry, biotechnology, business methods, chemistry, computer science, fuel cells, genetics, high-speed data communication, integrated circuits, materials science, medical devices, nanotechnology, pharmaceuticals, semiconductor devices and processes, and software.

We also prepare and prosecute patent applications internationally under the Patent Cooperative Treaty and by working with a network of seasoned patent lawyers around the world. Our experience extends to appeals, interferences and opposition proceedings within the US Patent and Trademark Office, the US Court of Appeals for the Federal Circuit and the European Patent Office.

Clients in need of copyright and trademark protection depend on our skilled litigators and IP lawyers with a proven record of success. Technology companies bring us cutting-edge and novel copyright protection matters centered on the dissemination and transmission of copyrighted works and content. Clients in the entertainment industry rely on our guidance on critical issues surrounding copyright protection for movies, television, music and other art forms, and we also work with fashion and consumer goods companies on protecting and enforcing their copyrights. 

Clients seek our help with the strategic selection, registration, management, enforcement and defense of trademark, trade dress and domain name rights—often their most valuable assets. Local and global brands rely on us to protect them from infringement and dilution by guarding their assets from competitors who aim to weaken their names. We also offer strategies to minimize risk of liability for trademark infringement and have successfully defended many companies in litigation against parties seeking to overreach with allegations of trademark or trade dress infringement, domain name misuse or cybersquatting. We consider not only potential infringement of third-party rights, but also whether a potential name or trademark can be registered and provide clients with the desired exclusivity and global market impact. Clients looking to prevent third-party misappropriation of trademarks and names depend on us to oppose registrations and seek cancellations of existing registrations, and to defend their trademarks in proceedings in the US Patent and Trademark Office, under the Madrid Protocol and before national and regional patent and trademark offices.

WilmerHale’s holistic approach to IP law enables us to develop tailored strategies for each client. This approach sets us apart from other firms’ core IP offerings because we are able to advocate for clients not only by leveraging our experience in the courts (through litigation or amicus briefs) and in administrative proceedings within the US Patent and Trademark Office, but also through our contacts in the administration, on Capitol Hill, in IP associations and in international forums. Particularly in recent years, the impact and influence of such non-traditional forums has been quite powerful.

Clients also benefit from our team’s IP-specific public service experience with domestic and international IP policymakers, which enables us to help them achieve their objectives and efficiently resolve high-stakes matters. Companies seeking alternative, multibranch strategies to achieve their goals turn to our team of lawyers, who work on matters spanning all areas of IP law and policy. We help clients realize the maximum value of their IP through asset management and risk assessment and mitigation.

Our team performs high-level portfolio analyses (assessing value and explaining the “why”) and conducts risk assessments; then we counsel clients on how to leverage a variety of traditional and less-traditional avenues to achieve success. By offering strategic counseling and analysis, we can both assess IP risks for clients and affect change.

An intellectual property due diligence investigation is often a critical prerequisite to a major transaction such as a financing, a merger, or an acquisition, offering important insights into whether the company at issue has taken care to protect its IP assets or whether major IP challenges may exist or lie ahead. WilmerHale’s multidisciplinary IP due diligence team combines IP prosecution and counseling acumen with litigation and transactional experience to provide rigorous IP audits for the full spectrum of pivotal business transactions—from mergers and acquisitions and public offerings to private equity and venture capital investments, licensing agreements, and strategic collaborations.

Our lawyers draw on their academic and industry backgrounds in science and technology and their extensive experience handling high-stakes IP litigation and patent office proceedings to assess the intellectual property at issue in each transaction, ask the right questions, spot and address issues, differentiate potentially deal-breaking challenges from minor impediments, and situate a company’s IP in view of the short- and long-term competitive landscape. We routinely leverage the benefit of our experience to help clients negotiate more favorable deals and structure transactions that maximize the value of their IP assets.

Our IP due diligence investigations assess three broad areas of risk: 1) The acquisition and maintenance of IP assets—determining whether the target company has obtained and maintained commercially relevant patents, copyrights, trademarks and trade secrets and has a clear chain of title to those assets; 2) Infringement liability—ascertaining whether the target company’s products infringe any third-party IP and whether the company has freedom to operate (FTO) without legal liability; and 3) IP agreements—identifying whether the target company has entered into any licensing or other IP agreements under which the future continuation or termination of rights could pose problems that potentially alter the calculus of a transaction.

We customize each IP due diligence investigation to our clients’ needs, which may range from narrowly tailored IP assessments for simple deals to comprehensive analyses for significant IP-intensive transactions.