IP Strategic Analysis INTELLECTUAL PROPERTY

Intellectual property continues to play an integral role in the marketplace, and businesses rely on WilmerHale's broad experience in this area to navigate risks and achieve greater value for their IP rights.


WilmerHale's holistic approach to the practice of intellectual property law enables us to evaluate clients' needs and develop tailored strategies unique to each client. Our approach to IP law sets WilmerHale apart from other firms' core IP offerings because we are able to advocate for clients not only before the courts and the US Patent and Trademark Office (PTO), but also in the administration, on Capitol Hill, through IP associations and in international forums. Clients also benefit from our team's IP-specific public service experience with IP domestic and international policy makers, which enables us to help them achieve their objectives and efficiently resolve high-stakes matters. Companies seeking alternative, multi-branch 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. WilmerHale is positioned to help with IP challenges around the globe, bringing to bear lawyers ranked as the best in the world from the patent and trademark bar, as well as IP litigators and international trade lawyers with global experience in navigating the complex legal, business and public policy aspects of international IP, including European patents.

Contacts

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Steinberg, Donald R.

Donald R. Steinberg

Chair, Intellectual Property Department

+1 617 526 6453 (t)

don.steinberg@wilmerhale.com

Cavanaugh, David L.

David L. Cavanaugh

Chair, Post-Grant Patent Proceedings Group

+1 202 663 6025 (t)

david.cavanaugh@wilmerhale.com

Kipnis, Jason

Jason D. Kipnis

Partner

+1 650 600 5036 (t)

jason.kipnis@wilmerhale.com

The Team

WilmerHale helps clients at every stage of growth in all aspects of their business that involve the acquisition, exploitation or protection of intellectual property. Clients have access to an experienced team of more than 200 attorneys and technology specialists, with more than 120 holding degrees in technological, engineering or scientific fields, and 70 lawyers and agents registered to practice before the PTO.

In the UK, clients have access to a recently expanded team that has strengthened WilmerHale's position as a firm of choice for complex patent litigation in the United Kingdom and for those seeking an effective global strategy for their IP disputes. Our UK-based team brings many years of experience handling high-stakes IP litigation and complex international patent disputes for life sciences and technology clients. This deep UK and EU experience extends the ways in which clients can rely upon WilmerHale for well-coordinated and comprehensive guidance in global patent litigation matters.

Wherever they are located, our clients benefit from targeted insight and our team's invaluable multidisciplinary perspective, and from our ability to work efficiently with colleagues across practices, including those outside of intellectual property. Our team has demonstrated success for clients ranging from companies with large IP portfolios and in-house legal teams to up-and-coming companies with small legal departments. This coordinated approach enables our teams to reach beyond standard IP activities for clients while giving them a one-stop shop experience. 

Capabilities

We routinely counsel on business risks associated with intellectual property and how to enhance the value of intellectual property. Our combination of litigation, IP prosecution, regulatory, legislative, technology transactions, and merger and acquisition experience positions our dedicated IP counseling team as an effective, insightful group, with team members who are able to address any combination of these areas. And because we are able to draw from other practices within the firm, we can work efficiently for our clients.

Areas of focus include:

  • Portfolio and Risk Assessment: Our team advises on patent portfolio development and analyzes the value of existing IP portfolios, tailoring them accordingly. This includes targeting future technological areas of interest, protecting existing areas from competitors and preparing for market changes. We also offer IP risk assessment and risk mitigation.
  • Patent Prosecution: Our patent prosecution team files 1,800 US and foreign patent applications on average per year, and obtained nearly 1,500 US and foreign patents for clients during the past two years alone.
  • Trademark: We file approximately 2,000 trademark applications annually, with 1,500 registrations issued each year as well.
  • Copyright: We counsel clients in the technology sector on cutting-edge and novel copyright protection matters centered on the dissemination and transmission of copyrighted works and content.

Our lawyers have tried major cases in US federal district courts from coast to coast, before the US International Trade Commission, and in Germany and the United Kingdom. The firm's lawyers also regularly represent clients in inter partes reviews and other administrative proceedings within the PTO, and in patent appeals before the US Supreme Court and the Federal Circuit.

Since the 2011 passage of the Leahy–Smith America Invents Act (AIA), which brought significant changes to the US patent system, we have helped clients usher in and adapt to the new law, articulating significant aspects and helping them recognize opportunities the AIA presents, create value and eliminate risk.

We also help clients understand the implications of other proposed changes to IP law. We are at the forefront of legislative action impacting IP, and regularly file comments to agencies on behalf of clients wanting to shape the implementation of laws.

Sometimes when we look at a problem for a client, the answer is clearly litigation. But other times there are avenues that, if taken, can reach the same or even better result at a fraction of the cost. Our 360-degree approach to resolving matters for clients involves leveraging our experience in the courts (through litigation or amicus briefs) and in administrative proceedings within the PTO, as well as our contacts in Congress (Senate and House Judiciary Committees), the administration (the International Trade Commission, the US Patent and Trademark Office, State Department, Office of the US Intellectual Property Enforcement Coordinator, Office of the US Trade Representative), trade associations, and beyond. Particularly in recent years, the impact and influence of such non-traditional forums has been quite powerful.

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 affect change and confirm IP risks for clients, and determine if there are ways to leverage various agencies, courts or Congress to implement change.