Intellectual Property Counseling and Prosecution
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.
Copyright and Trademark Prosecution
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.
Intersection of Antitrust and IPWilmerHale is uniquely positioned to provide counseling, strategic advice and litigation representation to clients confronting issues involving both antitrust and intellectual property law—and the intersection between the two.Learn More
Trade secret theft, increasingly through cyber intrusions and hacks, can severely impact a company’s competitiveness and put domestic and international jobs at risk. Clients rely on us to help them navigate this complicated terrain. Our lawyers have extensive experience representing companies that seek to protect and enforce their trade secrets and rights in proprietary information in the context of both employment and competition. Likewise, we are regularly called upon to defend companies who are accused of trade secret misappropriation. We have the courtroom acumen, strategic capability and technological experience—more than 120 of our lawyers have scientific and technical backgrounds—to successfully understand the technical issues while strategically managing complex trade secrets cases, and we also have the business experience to resolve litigation in the context of a company’s larger business goals.
For Unified Patents, achieved a victory against American Vehicular Sciences when the Patent Trial and Appeal Board (PTAB) invalidated all challenged claims of US Patent No. 9,043,093. The ’093 patent was asserted against Honda, Nissan, Hyundai and Toyota.
For a major financial institution, achieved a series of victories against Intellectual Ventures, which filed suit alleging infringement of patents related to online banking. The case ended following four successful covered business method proceedings before the US Patent and Trademark Office (USPTO) in which the PTAB invalidated 83 of IV’s claims across the four patents as directed toward unpatentable abstract ideas.
For a technology company, provided representation in an international copyright infringement and trade secret misappropriation dispute in the United States and in parallel declaratory proceedings in the United Kingdom.
Numerous global companies, including a consumer electronics company, a sportswear and athletic goods company, and a car manufacturer, have relied on our representation in various trademark and trade dress matters.
Our copyright experience includes securing a major victory for Google in the Second Circuit in a copyright dispute with the Authors Guild over Google Books, representing an American toy and board game company against allegations of copyright infringement, and representing several major television networks in a copyright case.
For NitroMed, filed and obtained patents covering methods of treatment using the company’s commercial drug product, BiDil—which is targeted to the treatment of heart failure in black patients—and worked with the company to implement strategies for product life cycle management.
For Wyeth and its licensee XCyte, prosecuted a large and complex family of US and foreign patents concerning an anti-cancer immunotherapy.
Represented Columbia University in the negotiation of several intellectual property licenses, and in patent prosecution relating to diverse fields such as software applications, integrated circuits, life sciences, chemistry and physical sciences.
Working closely with corporate colleagues, counseled clients in transactions that include:
- WebMD’s $160 million acquisition of VIPS
- Idenix Pharmaceuticals’s $156.8 million IPO and private placement to Novartis
- NitroMed’s $61.34 million IPO
- A $49.4 million follow-on offering for Lexicon Genetics
- A $69.7 million follow-on offering for EPIX Medical
- Predix Pharmaceuticals’s merger with Physiome Sciences
A number of clients have relied on us to analyze their patent portfolios vis-a-vis their field of interest and the effect of targeted competitors’ portfolios on their business, and to complete freedom to operate analyses concerning a variety of products and technologies.
IP Group of the Year
Best Law Firms–Band One: Intellectual Property
Intellectual Property Firm of the Year
LMG Life Sciences
- BTI Intellectual Property Outlook – Recognized as the Most-Favored IP Department in the nation and one of five Go To IP Firms for non-litigation IP work (2015).
- Chambers USA: America’s Leading Lawyers for Business – Ranked nationally in band one (2011–2020); noted as “outstanding at all levels, combining first-rate technical and legal acumen and great trial skills.” Consistently recognized in the national International Trade: IP (section 337) category (2013–2020) and in regional IP tables for Massachusetts (2003–2020), California (2012–2020), Colorado (2016–2020), New York (2012–2020) and Washington DC (2012–2020).
- Law360 – Named among IP or Technology Groups of the Year seven times since 2010.
- The Legal 500 United States – Named among the top law firms for intellectual property (2011–2020) and winner of the Best Law Firm for IP: Patent Litigation (2014).
- LMG Life Sciences – Recognized in the areas of patent prosecution, patent strategy and management, general patent litigation, Hatch-Waxman patent litigation, corporate, licensing and collaboration, M&A, venture capital and white collar/government investigations (2012–2019).
- LMG Life Sciences Awards – Received the Impact Case of the Year Award for our work on Enzo Life Sciences v. Roche Molecular Systems and shortlisted for Firm of the Year in the Licensing & Collaboration, General Patent Litigation, IP, Inter Partes Review, and Government Investigations categories (2020); named as the General Patent Litigation Firm of the Year and Intellectual Property Firm of the Year and shortlisted for the Hatch-Waxman Litigation (Branded) Firm of the Year, Inter Partes Review Firm of the Year and US Life Cycle Firm of the Year (2019); and won the Hatch-Waxman Impact Case of the Year Award for our role in Millennium Pharmaceuticals v. Sandoz (2018).
- Managing IP – Named as Patent Contentious Firm of the Year for the Northeast region and recognized with the Impact Case of the Year Award for our role in Mission Products Holdings Inc v. Tempnology LLC (2020); named as the US Patent Contentious Firm of the Year or shortlisted for the recognition (2011–2019); ranked Tier 1 for PTAB Litigation (2020); listed among the top 10 “Law Firms for Petitioners and Patent Owners in PTAB Proceedings Filed in 2019” and the top 15 “Law Firms at the PTAB 2019 – Petitioners and Respondents Combined.”
- U.S. News - Best Lawyers® – Named Patent Firm of the Year (2021), Biotechnology Law Firm of the Year (2020) and IP Litigation Law Firm of the Year (2018). Honored with first-tier national “Best Law Firm” rankings in Patent Law, Biotechnology Law, IP Litigation and Patent Litigation; and first-tier metropolitan rankings in Washington DC and San Jose for IP Litigation; in Boston for Copyright Law, Patent Law, Patent Litigation, IP Litigation and Trademark Law; in Colorado for Patent Law; and in New York for Biotechnology Law (2013–2020).