IP Procurement and Portfolio Management

K&L Gates counsels sophisticated, innovative organizations in patent prosecution, portfolio development, counseling, and opinion work in the United States, Asia, Australia, and Europe. Our patent practice combines a depth of technical experience with a broad global reach to protect our clients’ intellectual property everywhere they do business.

Our patent attorneys and agents have extensive technical experience in virtually every conceivable field. The firm’s proficiency and depth of resources allow us to be one of the leading firms in patent applications. In 2012, we filed close to 1,718 U.S. patents and 2,661 worldwide.

Thirty-five of our patent practitioners have advanced technical degrees, including approximately 20 doctorates. Our patent practitioners combine the requisite legal skills with first-hand knowledge and an understanding of our clients’ technology platforms as well their businesses. This resulted in recognition by the 2013 U.S. News-Best Lawyers® survey as a “National First Tier” ranking for patent law.

Our lawyers understand our clients’ businesses and the competitive environment around them. We orchestrate the patent portfolio development process carefully by taking into consideration the nature of a client’s business, a client’s competitive environment, and the business needs and goals of a client. A well-developed patent portfolio can demonstrate a high degree of technical and commercial sophistication to a company’s potential investors, customers, competitors, and licensees and can further demonstrate that a company values its investment in research and development and is prepared to take appropriate steps to protect these investments.

We regularly assist clients in protecting trade secrets and other confidential information relevant to their technologies, production processes, and business and marketing plans. Our efforts include working with our clients to design, negotiate, and enforce non-disclosure agreements to protect their own confidential information and advising our clients on their rights and obligations when receiving confidential information from others. We also assist clients in developing and implementing trade secret protection policies and procedures.

Protecting our clients' confidential information is a core component of our technology transactions practice. In addition, we collaborate with our colleagues in K&L Gates' IP Litigation practice to resolve disputes involving claims of trade secret misappropriation and violations of non-solicitation and non-competition agreements.

Trademarks are a company’s interface with its customers and therefore are some of the most important assets of a business. Our lawyers manage the worldwide trademark portfolios for a number of our large clients, overseeing the protection and enforcement of our clients’ trademark rights internationally. Trademark law can vary enormously from country to country. Through our international platform, we have a deep understanding of global trademark issues, and our lawyers work with our clients to establish cost-effective strategies for registering and enforcing their marks worldwide. Our lawyers have registered trademarks and service marks in over 100 countries and regions as part of our global trademark management for numerous clients. We have experienced lawyers who work closely with clients to quickly and forcefully address or respond to infringements before they become larger issues and without exceeding the budget. We have experience rehabilitating neglected trademark portfolios consisting of hundreds, and in some cases thousands, of files. We have ongoing trademark monitoring and enforcement programs in place for many of our clients.

K&L Gates’ trademark practice has developed a practice niche of across-the-board inventorying, revitalization, and rehabilitation of worldwide portfolios of large clients. We investigate, evaluate, inventory, rehabilitate, organize, correct, update, and docket hundreds or thousands of trademark files. Our focused teams will travel to our client’s offices to work with in-house counsel, paralegals, business people, and others to put the trademark files in up-to-the minute shape. K&L Gates can also help a business exploit its trademark assets by assisting in the process of licensing or transferring those assets, obtaining licenses, or acquiring trademarks.

K&L Gates helps clients protect their copyrights in valuable works of authorship, including computer software, multimedia products and other technology products, audiovisual works, paintings, novels, and musical works. We routinely analyze the scope of copyright protection available for new media, provide advice on copyrights in the context of the Internet, and work with clients to register their copyrights. We have in-depth experience advising clients on "works made for hire" and on various defenses available to claims of copyright infringement. We also assist clients with assessing the transnational protection of their copyrights. We have assisted numerous authors in granting the right to take their works for authorship into different media, including taking novels to screenplays, traditional games to computer games, and synchronizing music with audiovisual material. We have helped clients to protect virtually every form of copyrightable work.

The lawyers in our copyright practice regularly advise clients regarding the acquisition, sale, and licensing of copyrighted works. K&L Gates’ copyright lawyers work closely with transactional lawyers in the firm on various phases of business transactions, including due diligence, negotiation, and drafting, and in a variety of fields. We regularly represent both licensors and licensees during the negotiation and drafting of software licenses and development agreements. We have advised dozens of clients regarding how to protect their rights in their websites and how to redress past mistakes.

K&L Gates helps intellectual property owners face the many challenges posed by the Internet. Our lawyers have advised clients regarding a wide variety of online endeavors, from countless technology and online start-ups to large, more traditional companies/organizations entering the online world. Our lawyers understand the intellectual property issues regarding both the content and the means, and the complex interrelationship between the two. We have pursued hundreds of infringers on the Internet and have tackled a large variety of Internet infringement of copyrights, trademarks, and other proprietary rights.

We counsel clients through every stage of the domain name process, including all aspects of domain name registration and protection. We also protect and defend our client's domain names against infringers and likewise enforce our clients' trademark rights against domain piracy. We were the first in the world to file a complaint under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) and the first to conduct a contested hearing in the United Kingdom under Nominet's Dispute Resolution Service. K&L Gates has pursued cutting-edge claims under the Digital Millennium Copyright Act (DMCA) in the United States, the Copyright Design and Patents Act (CDPA) in the U.K., and the Australian Copyright Act.

K&L Gates’ lawyers are very familiar with the issues relating to on-line infringement and are well versed in the details of the DMCA, Copyright and Related Rights Regulations now enshrined in the CDPA in the United Kingdom, and the Australian Copyright Act. K&L Gates frequently uses the take-down provisions of the relevant acts to bring a halt to online infringement of our clients’ copyrighted works quickly and utilizes the subpoena provisions of the DMCA, CDPA, and Australia Copyright Act that create procedures for obtaining identifying information about an infringer.

A significant component of our practice includes the licensing or transfer of intellectual property assets, ranging from licenses, sales and assignments of patents, design rights, trademarks, trade secrets, and/or copyrights to business acquisitions and mergers. In structuring and negotiating domestic U.S., UK, and Australia and international business transactions, intellectual property issues often have a large, if sometimes underappreciated, significance. Our depth of experience provides our clients a comprehensive approach to cover all aspects of a transaction from asset protection and ownership to transaction negotiation and documentation.

K&L Gates assists clients to assess the strength of their intellectual property assets, including copyrights, trademarks, trade secrets, and patents, and to identify potential issues regarding those assets. These assessments may be for internal audit purposes or to evaluate existing or potential investments in technology companies or other companies with meaningful intellectual property assets. We analyze whether the company in question owns or has sufficient rights to the intellectual property assets that are essential to its business, and identify any significant risks associated with the company’s use of intellectual property and, where appropriate, its products and services. We also assist clients in resolving issues identified through the audit process.

Sometimes it is vital to determine whether a company owns or has sufficient rights to use intellectual property, such as in a merger or when a company desires to obtain a license for critical IP. Our lawyers help identify potential issues that might significantly affect the ability of the company to acquire sufficient rights or to market its products. These issues include employee and independent contract agreements, nondisclosure agreements, exclusivity arrangements, license restrictions, IP restrictions, and distribution agreements.