Patents
K&L Gates has more than 110 licensed patent prosecution lawyers and agents with technical degrees such as electrical, software, mechanical, chemical and aerospace engineering, chemistry, biology, pharmacology, metallurgy, pharmaceuticals, textile technology and physics. We prepare and prosecute hundreds of patent applications per year domestically in the United States and, through a network of foreign associates, internationally. Some of the technologies with which we are regularly involved include software, Internet and financial business methods, electrical circuitry, semiconductor manufacture, telecommunication equipment, complex machinery, medical devices, chemical products and processes, metallurgy, biotechnology and textile machinery, processes and fabric structures. Frequently, patent matters require an interdisciplinary approach, and our various intellectual property lawyers work closely to bring together the best team to serve our clients' needs. Some of our patent specialty areas are outlined below.
Biotechnology/Life Sciences
Lawyers in K&L Gates' biotechnology practice provide counseling regarding the intellectual property aspects of biotech business transactions and prepare and prosecute U.S., U.K. and overseas patent applications. Our lawyers have prosecuted patent applications in diverse fields, such as proteomics, bioinformatics, immunology including recombinant vaccines, recombinant antibodies and immune modulation compositions and methods, synthetic and recombinant viral proteins, diagnostic devices and methods including PCR and multiplex PCR and QRT-PCR methods, orthopedic and ophthalmic devices and implants, pharmaceutical compositions and delivery methods, tissue adhesives, nutritional supplements, protein identification processes, fluorescent labeling compounds, methods for culturing cells and new media for cell cultures, cell lines including stem cell technology, vitamin analogs, viral- and non-viral-mediated gene therapeutics, bulk commodities and manufactured food ingredients, animal feed and nutrition products, fuels and industrial products, human nutraceuticals and nutrition products, recombinant and non-recombinant fermentation systems, genetically modified plants and asexually propagated plants (plant patents).
Exemplary patents are listed below:
- U.S. Patent No. 7,084,105, entitled Cytoxic Factors for Modulating Cell Death
- U.S. Patent No. 6,747,002, entitled Pharmacokinetic and Pharmacodynamic Modeling of Erythropoietin Adminsitration
- U.S. Patent No. 6,445,939, entitled Ultra-small Optical Probes, Imaging Optics and Methods for Using Same
- U.S. Patent No. 6,134,003, entitled Method and Apparatus for Performing Optical Measurements Using a Fiber Optic Imaging Guidewire, Catheter or Endoscope
- U.S. Patent No. 5,870,191, entitled Apparatus and Methods for Surface Contour Measurements
- U.S. Patent No. 6,500,623, entitled Replication Defective HIV Vaccine
- U.S. Patent No. 6,127,134, entitled Difference Gel Electrophoresis Using Matched Multiple Dyes
- U.S. Patent No. 6,077,714, entitled Method for the Preparation of Free Radical Pharmaceuticals, Diagnostics and Devices Using Selenium Conjugates
- U.S. Patent No. 6,008,373, entitled Fluorescent Labeling Complexes with Large Stokes Shifts Formed by Coupling Together Cyanine and Other Fluorochromes Capable of Resonance Energy Transfer
- U.S. Patent No. 5,427,907, entitled Assay for Equine Infectious Anemia Virus
- U.S. Patent No. 4,804,691, entitled Method for Making a Biodegradable Adhesive for Soft Living Tissue
- U.S. Patent No. 4,790,850, entitled Prosthetic Ligament
Business Methods
Protection of proprietary business methods can be an important part of maintaining a competitive edge. In the 1990's, the Federal Circuit ushered in an era where applications for business method patents became popular. This trend, however, in more recent times has been scaled back -- which some commentators have suggested substantially put and end to such patents. Nevertheless, business methods remain patent eligible if claimed properly, and K&L Gates' intellectual property lawyers have continued to successfully prosecute applications on business methods during and following this evolving landscape. Fields to which such patent applications relate include:
The patents listed below are examples of the types of inventions with which our lawyers routinely work in this emerging field:
- U.S. Patent No. 7,000,180, entitled Methods, Systems and Proecesses for the Design and Creation of Rich-Media Applications via the Internet
- U.S. Patent No. 6,076,078, entitled Anonymous Certified Delivery
- U.S. Patent No. 5,809,144, entitled Method and Apparatus for Delivery of Digital Goods Over a Network
Although the registry practice is very different in the U.K. and Europe (where business method patents per se generally considered inherently unpatentable), we have advised numerous clients on the best means to such methods even where patent protection may be unavailable.
Chemistry/Materials Science
This industry group includes our clients involved in chemicals, oil and gas production, magnetic media and metals, alloys and ceramics, including high-temperature superconductors. Materials science brings together metallurgy, ceramics, polymer science, the chemistry of solids, and other diverse fields concentrating on many of the basic elements of manufactured products. Industries supported by the chemistry/materials science practice include:
- Polymers
- Carbon and stainless steel production
- Powder metallurgy
- High performance alloys
- Magnetic alloys and powders
- Thin film media
- Metallic and organic coatings
- Cathode and anode cell design
- Spin coating and other coating techniques
- Pyrotechnic compositions
- Catalysts
- Ceramic machine tool materials and coatings
We have over 25 licensed patent lawyers with technical backgrounds in chemistry, chemical engineering, metallurgy, and materials science, and the biological sciences. Many of our lawyers also have significant industrial experience, which affords them additional insight into the unique intellectual property legal issues that confront businesses in the chemicals and materials science industries.
- U.S. Patent No. 6,143,192, entitled Ruthenium and Ruthenium Dioxide Removal Method and Material
- U.S. Patent No. 6,037,052, entitled Magnetic Thin Film Ferrite Having Ferrite Underlayer
- U.S. Patent No. 6,100,394, entitled Long-Lived Homogeneous Oxidation Catalysts
- U.S. Patent No. 6,017,654, entitled Cathode Materials for Lithium-Ion Secondary Cells
- U.S. Patent No. 5,864,071, entitled Powder Ferrous Metal Compositions Containing Aluminum
- U.S. Patent No. 5,693,426, entitled Magnetic Recording Medium with B2 Structured Underlayer and a Cobalt-Based Magnetic Layer
- U.S. Patent No. 5,102,851, entitled Supported Catalyst for Hydrocarbon Synthesis
Electrical
The electrical engineering subsection of K&L Gates' intellectual property practice is very diverse. We have prosecuted patent applications for individual specialized components, as well as for complete products and systems. Our lawyers have drafted patent applications directed to such technologies as:
- Telecommunications
- Micro-machined memory devices
- Solid state fabrication processes
- Solid state circuit architectures
- Surgical lighting
- Underground mining machinery
- Process control equipment
- Robots
The patents listed below are illustrative of the types of inventions with which our lawyers routinely work:
- U.S. Patent No. 6,181,594, entitled Reduced Leakage DRAM Storage Unit
- U.S. Patent No. 6,171,964, entitled Method of Forming a Conductive Spacer in a Via
- U.S. Patent No. 6,154,078, entitled Semiconductor Buffer Circuit with a Transition Delay Circuit
- U.S. Patent No. 5,994,984, entitled Wireless System Distribution in a Building HVAC System
- U.S. Patent No. 5,931,966, entitled Viterbi Detector with a Pipelined Look-Up Table of Squared Errors
Mechanical/Electromechanical
K&L Gates' intellectual property lawyers practice in a variety of mechanical technologies ranging from the highly sophisticated to the more traditional, including:
- Medical devices
- Building construction
- Robotics
- Computer chip manufacture
- Mining equipment
- Excavators and construction equipment
- Advanced workholders
- Toys and amusement products
Our mechanically-based practice includes intellectual property counseling, protection and exploitation. Other forms of intellectual property protection, such as design patents and copyrights, are pursued where warranted.
The patents listed below are examples of the types of inventions with which our lawyers routinely work:
- U.S. Patent No. 6,514,259, entitled Probe and Associated System and Methods for Facilitating Planar Osteotomy During Arthoplasty
- U.S. Patent No. 6,511,540, entitled Spin Coating Spindle and Chuck Assembly
- U.S. Patent No. 6,502,475, entitled Multiple Speed Gear Arrangement for Portable Planer and Other Power Tools
- U.S. Patent No. 6,427,657, entitled Engine Balance Apparatus and Accessory Drive Device
- U.S. Patent No. 5,435,405, entitled Reconfigurable Mobile Vehicle With Magnetic Tracks
- U.S. Patent No. 5,242,358, entitled Machine Tool Accessory Mounting Method and Apparatus
- U.S. Patent No. 5,505,655, entitled Adjustable Tool Platform and an Abrading Machine Including the Same
- U.S. Patent No. 4,705,450, entitled Single Engine Excavator With Remote Control
Software
Software patents represent one of the most significant areas of K&L Gates' intellectual property practice. Our lawyers have worked with a number of software vendors, from the very large to the very small, to help determine the form of intellectual property best suited for protecting the software while meeting the client's other needs. Determining whether the software should be protected under the trade secret, copyright, or patent laws requires an analysis of a number of factors, including whether and how the software will be commercialized, its useful life, ease of design around and others. After conducting such an analysis, we recommend programs tailored for each client's needs. We have also represented a number of clients who are not software vendors, but who nevertheless have developed software as part of a process or product that they sell.
The kinds of software patents obtained by our lawyers are varied and include software programs used to control industrial processes and software products such as the type used for network monitoring. We remain committed to keeping abreast of the changes in this rapidly evolving area of the law.
The patents listed below are representative of the types of inventions with which our lawyers routinely work:
- U.S. Patent No. 6,084,979, entitled Method for Creating Virtual Reality
- U.S. Patent No. 6,076,078, entitled Anonymous Certified Delivery
- U.S. Patent No. 6,002,859, entitled Apparatus and Method Facilitating the Implantation of Artificial Components in Joints
- U.S. Patent No. 5,953,517, entitled Method of Optimizing Component Layout Using a Pattern Based Search
- U.S. Patent No. 5,913,259, entitled System and Method for Stochastic Score Following
Here again, the practice in the U.K. and Europe differs regarding registration of software patents. It can prove difficult to obtain patent protection, and the requirement that the software produce a technical effect/contribution must be satisfied. The law across Europe is currently under review in the area, but it appears that consensus on the approach to software patentability is still under development. Despite those difficulties, we provide expert up to the minute advice on the best means of protection and, where appropriate, have prosecuted numerous applications for software patents in Europe.
Trade Secrets and Confidentiality
K&L Gates regularly assists 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' employment and litigation groups to resolve disputes involving claims of trade secret misappropriation and violations of non-solicitation and non-competition agreements.
Trademarks, Trade Dress and Domain Names
Trademarks are a company’s interface with its customers, and therefore are one of the most important assets of a business. Trademarks represent a company’s goodwill; in the minds of its customers, every quality of a business is captured by its trademarks.
K&L Gates can address the trademark needs of any business, small or large, comprehensive or focused. Our lawyers manage the worldwide trademark portfolios for a number of our large clients, overseeing the protection and enforcement internationally of our client's trademark rights. We have written corporate trademark policies and usage guidelines. We have rehabilitated neglected trademark portfolios consisting of hundreds and thousands of files. We have ongoing trademark monitoring and enforcement programs in place for many of our clients. The firm can also assist clients with more focused projects, such as selecting or clearing individual marks for use in their businesses, or registering a trademark. Where necessary, we have conducted hundreds of screening searches at one time in connection with new lines of business for our clients. Our lawyers have obtained thousands of registrations for trademarks, service marks, and certification marks in the United States, the U.K., in Europe and worldwide.
We also have experience in international trademarks. Trademark law can vary enormously from country to country. Through our international network we have a deep understanding of global trade mark issues, and our lawyers work with our clients to establish cost-effective strategies for registering and enforcing their marks worldwide. We have registered trademarks and service marks in over 100 countries and regions as part of our global trademark management for numerous clients. We utilize a team of foreign associate law firms that we know and trust. We meet with them personally every year to maintain these relationships. We also have filed many international applications under the Madrid Protocol.
K&L Gates’ trademark practice has developed a practice niche of across-the-board inventorying, revitalization, and rehabilitation of worldwide portfolios of large clients. For trademark portfolios that have been neglected or mismanaged, we have experienced teams of lawyers, paralegals, and staff that will 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 closely and sensitively with in-house counsel, paralegals, business people, and others to put the trademark files in up-to-the minute shape. Or we will transfer the files back to our offices and perform the same function from there. The result is a current, complete, organized, and docketed set of trademark files ready to be managed properly going forward, or to be transitioned to in-house lawyers for maintenance.
K&L Gates can also help a business exploit its trademark assets by assisting in the process of licensing or transferring those assets or in obtaining licenses or acquiring trademarks. For example, our lawyers recently performed trademark due diligence and managed a $28 million trademark acquisition. We also have experience in more unusual areas such as trademark licensing for television stars. Our lawyers realize that each situation is unique and requires careful consideration of the interplay between the client's objectives and the nature of the intellectual property assets in question. By understanding the assets and the issues surrounding them, we can assist our clients in maximizing the value of the transaction.
K&L Gates’ experience also extends to the enforcement of our clients’ trademark rights. Our lawyers have obtained ex parte orders, preliminary injunctions, and permanent orders barring further infringement of our clients’ trademark rights. We have achieved settlements in trademark cases requiring the infringers to change their marks, pay substantial sums of money, or both. We have successfully defended allegations of infringement. Our lawyers are always looking for innovative, cost-effective solutions in enforcing rights and in resolving disputes. For example, K&L Gates has been a pioneer in pursuing domain name arbitrations that hastened recovery of the infringing domain name at significantly reduced cost. In addition, we have developed an international enforcement program for protecting our clients' marks and have combated piracy of our clients' marks by obtaining court orders and conducting seizures of counterfeit and gray market goods.
K&L Gates has established procedures for working with our larger, more consumer-oriented clients for addressing in a cost-effective way the widespread but low-value infringement and dilution of the client’s marks. Such clients often face numerous small infringements and dilution that erode the distinctiveness of their marks and blur or tarnish the goodwill of the marks and reputation of the company. These include infringements by free riders attempting to link their products or services with the client, usage of trademarks on Internet sites to manipulate search engines or to outright deceive consumers, bogus e-mail promotions, attempts to register similar domain names or trademarks, and other unscrupulous activity. We have experienced lawyers that work closely with clients to quickly and forcefully address or respond to such situations in a routine, straightforward manner to stop such infringements before they become larger issues and without exceeding the budget. These efforts have been used by our clients to demonstrate that they have policed their trademarks and have been presented to federal agencies to show that the clients were addressing a problem of public concern.
Our trademark clients have marks, logos, slogans, and trade dress in almost every type of commercial endeavor and in many nonprofit organizations as well. We have trademark and trade dress clients in the fields of:
- Retail sales
- Sports and sports entertainment
- Toys, games, and sporting goods
- Telecommunications
- Banking and financial services
- Technology
- On-line retail, business to business, ISPs, and other Internet and e-commerce
- Publishing
- Film, music, television, and other entertainment
- Celebrities
- Health care
- Insurance
- Museums
- Educational services
- Educational institutions
- Technology transfer
- Not-for-profit organizations
- Automobile manufacturers and franchises
- Construction
- Industrial manufacturing
- Light manufacturing
- Design professionals
- Advertising and marketing
- Travel and leisure
- Associations and industry groups
- Municipalities and Chambers of Commerce
- Software and software solutions
- Computer hardware and systems
- Food and beverage
- Restaurant, bar, and nightclub
- Pet food
- Clothing, footwear, and accessories
- Hotels and resorts
- Shopping centers
- Real estate developments
- Electronics
Copyrights
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. In the U.S., the firm has a regular practice in the U.S. Copyright Office and internationally. When necessary, our lawyers have simultaneously filed scores of applications for copyright registration.
K&L Gates has helped clients to protect virtually every form of copyrightable work – literature, textbooks, manuals, computer software, music, sound recordings, video, film, television programs, photographs, toys, characters, architecture, luxury goods, and product designs. In the U.S. and the U.K., copyright legislation has undergone significant reform over the years. Our lawyers are experts in both the old and new regimes. In the U.S., we regularly counsel clients regarding works created before January 1, 1978, which are governed by a prior version of the Copyright Act that was vastly different than the present one.
The lawyers in our copyright practice regularly advise clients regarding the acquisition, sale, and licensing of copyrighted works. Our experience ranges from straightforward transfers of copyrighted works to business acquisitions and mergers involving copyrighted works. In structuring and negotiating domestic and international business transactions, intellectual property issues often have a large, if sometimes unappreciated, significance. 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 such as television, film, photography, publishing, computer software, banking and finance, and consumer products.
Computer software is one of the most commonly exchanged copyrighted works. We regularly represent both licensors and licensees during the negotiation and drafting of software licenses and development agreements. A client’s website is one of its most valuable assets, yet the ownership and protection of this copyrightable work is an issue that clients often overlook. K&L Gates has advised dozens of clients regarding how to protect their rights in their websites and how to redress mistakes that were made in the past.
K&L Gates also has experience in enforcing copyrights — from initial demand letters and negotiation of settlement agreements to ex parte counterfeit seizures to full-scale litigation. Because we know how to handle a copyright case, we also know how to defend against allegations of infringement. Our lawyers regularly sit in both the plaintiff and the defense chairs.
In this increasingly digitally linked world, our attention is often focused on how advances in technology enable nearly anyone to instantly and effortlessly make thousands of copies of copyrighted works and how these advances present an enormous challenge to copyright owners and creators of all types. Computer programs, audiovisual works, musical works, sound recordings, and many similar works can be infringed simply and easily, with great loss to the developers of such creative works. K&L Gates’ lawyers are familiar with the issues relating to on-line infringement and are well versed in the details of the U.S. Digital Millennium Copyright Act ("DMCA") and the Copyright and Related Rights Regulations now enshrined in the Copyright Designs and Patents Act ("CDPA") in the U.K. K&L Gates frequently uses the take-down provisions of the DMCA and the CDPA to bring a halt to infringement of our clients’ copyrighted works quickly and utilizes the subpoena provisions of the DMCA and the CDPA that create procedures for obtaining identifying information about an infringer.
While the spotlight shines on computer-based infringement, K&L Gates has not forgotten that other, more traditional works also are at risk without appropriate copyright protection. At K&L Gates, we help clients meet this challenge by applying our litigation skills to protect these important interests and to resolve a host of issues that involve copyrights. These include litigation involving literary works, audiovisual works, sound recordings, musical compositions, works of art, architectural works, computer programs, and many other protectable works. We also are experienced in litigating the often complex issues surrounding disputes involving authorship, ownership, works for hire, copyrightability, originality, preemption, and fair use.
Trademarks, Copyrights, and the Internet
K&L Gates helps intellectual property owners face the many challenges posed by the Internet. Technology increasingly allows clients to better exploit their trademarks and copyrights, but also allows others to more easily infringe their intellectual property. K&L Gates is determined to assist its clients in staying one step ahead.
K&L Gates has advised its clients regarding a wide variety of on-line endeavors, from countless technology and on-line start-ups to large, more traditional clients entering the on-line world. Our lawyers understand the intellectual property issues regarding both the content and the means, and the complex interrelationship between the two.
K&L Gates has pursued hundreds of infringers on the Internet and has tackled a large variety of Internet infringement of copyrights, trademarks, and other proprietary rights, including cases involving the following:
- MP3s and other audio formats
- Video, including live streaming video
- Images, including photographs and images captured from video
- Textual works
- Software
- Character rights
- Publicity and privacy rights
- Cybersquatting
- Meta-tags
- Linking
- Framing
- On-line auctions, including eBay auctions
- Bootleg and counterfeit merchandise
Technology changes faster than the law, but K&L Gates' creative lawyers have worked to help our clients meet the challenge of an ever-shifting onslaught of infringement. Recognizing that the challenges posed by the Internet require an organized, focused approach, K&L Gates maintains a team of experienced lawyers who can respond to any type of Internet infringement of IP rights at a moment's notice.
K&L Gates' lawyers use the firm’s extensive technological infrastructure to communicate with clients, to document infringing activity, to investigate infringers, and to take action to stop infringements. K&L Gates routinely confronts all manner of infringement and infringers, but recognizes that one size does not fit all and that our solutions must be tailored to suit unique client needs. For example, K&L Gates' sports and entertainment clients often find that their fans are among the most frequent infringers. Sensitive to such clients' desire to stop fan infringement while not eroding their fan base, K&L Gates has employed a firm but fan-friendly approach that minimizes any damage to fan goodwill.
We counsel clients throughout every stage of the domain name process, including all aspects of domain name registration and protection. We conduct domain name searches, register domain names and develop post-registration strategies. The science of domain name searches is evolving as electronic commerce grows in popularity and domain name disputes increase. We conduct and review comprehensive search reports to prioritize clients' risks and exposures, determine the availability of the domain names selected, and advise clients on the ability to register their proposed domain name. We also protect and defend our client's domain names against infringers and likewise enforce our clients' trademark rights against domain piracy.
As the law has evolved, K&L Gates has been quick to make full use of new developments. K&L Gates was 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 U.K. under Nominet's Dispute Resolution Service. K&L Gates has pursued cutting-edge claims under the Digital Millennium Copyright Act (“DMCA”) in the U.S. and the Copyright Design and Patents Act in the U.K. K&L Gates remains dedicated to exploring and developing new ways to more efficiently enforce its clients' rights.
Licensing & Transactional
K&L Gates' intellectual property licensing and transactional practice ranges from character and trademark licensing for television stars to cross-licensing and joint development agreements in diverse fields, including chemistry, metallurgy, biotechnology, telecommunications, beverages, marketing and advertising, electromechanical systems, computer hardware and software. Each situation requires careful consideration of the interplay between the client's objectives and the nature of the intellectual property assets.
In licensing activities, our lawyers strive to integrate intellectual property protection and business objectives. For example, if the intellectual property protection and licensing during the development cycle of a product is based on trade secret protection, then the license agreement must be crafted to provide the maximum trade secret protection. When a patent is issued for that same technology (and trade secret protection is, in many cases, virtually surrendered), the relationship must be transitioned into a patent license. Joint research agreements require careful attention to ownership of any resulting intellectual property. When foreign patent rights are involved, consideration of ownership, marketing and licensing rights can be critical. Proper development and maintenance of trademark rights requires sensitivity to control issues; failure to provide for such control can adversely affect the value of a trademark and proper protection can enhance it. By considering the various implications of merchandising and licensing activities, our lawyers fashion agreements that develop and enhance a client's intellectual property rights.
Of course, because computer software implicates a number of forms of intellectual property, we regularly handle the drafting and negotiation of substantial software license and development agreements, representing both licensors and licensees. Our intellectual property practice also encompasses the transfer of intellectual property assets, ranging from 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. and U.K. and international business transactions, intellectual property issues often have a large, if sometimes unappreciated, significance. The key agreements must reflect an understanding of the value of the intellectual property assets and related legal issues, including the perfection and maintenance of intellectual property assets and an assessment of any litigation or infringement claims. K&L Gates' intellectual property practice group has worked closely with transactional lawyers in the firm on various phases of business transactions, including due diligence, IP asset valuation, negotiating, and drafting, in fields such as computer software, banking and finance, publishing, consumer products and heavy industry. For more information on how our intellectual property practice interfaces with the firm's transactional practice, visit our Mergers and Acquisitions practice.
Some specific aspects of our Intellectual Property Licensing and Transactional practice follow.
Computers and Electronic Devices
K&L Gates has served clients in many roles relating to computing hardware and mixed hardware and software systems. Our brick-and-mortar clients look to us to assist in their acquisitions of end-to-end systems, including the hardware and software necessary to meet their particular needs. We also assist our technology clients in transactions for the design, development and manufacture of the new computing devices that are revolutionizing industries, such as TV set-top devices, specialized game machines, satellite communications equipment and "smart" phones. From basic development agreements to reference design licenses, from component acquisition agreements to manufacturing and distribution contracts, we are able to assist with the myriad legal relationships that may arise with respect to computers, electronic devices and other high-technology equipment and components.
Electronics in Commerce
The K&L Gates Concept
When K&L Gates uses the term "electronics in commerce," we mean the use of digital systems such as the Internet to create or perform commercial and consumer transactions, and to establish and enforce valuable rights in information. Our concept is intentionally broad in order to cover a wide variety of commercial and consumer transactions having in common this fact:
The medium, power and interactive features of modern digital systems make their use in commerce different and more transformative than practices associated with other technologies.
Computer, wireless, Internet and other technologies create both opportunities and risks and are subject to myriad new laws. The focus of our Electronics in Commerce practice ("ECG") is on how those laws apply and how our clients, whether they be licensors, licensees or buyers or sellers, may protect their opportunities and respond to the transformative nature of doing all or part of their business electronically.
What makes us different?
Most law firms have traditionally practiced, and continue to do so, in the "Traditional Commercial Law" area. Two additional areas, "Information Laws" and "Intellectual Property Laws" have been a mainstay of a few firms such as those representing the motion picture industry. However, in our modern economy those previously isolated areas are increasingly an integral part of traditional transactions and business. Further, there are three new areas impacting this legal picture: the new laws and concepts in the "Electronics Laws" area and in the "Internet Laws" area; and the significant impact of global laws affecting business done in global media such as the Internet.
K&L Gates is unique for two reasons over and above the quality of its lawyers:
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We practice in all of these and additional areas.
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We have long represented technology clients. This allows us to envision or be on the cutting edge and to better craft, maneuver and apply our wheel approach.
There is much uncertainty in our modern economy. We believe our experience and ability to predict issues before others allows us to provide more valuable assistance to clients. We do this in transactions, business forms, policies and procedures, and litigation — whether that litigation be defensive or offensive.
Our Electronics in Commerce Practice — Generally
K&L Gates has long represented some of the world's leading technology companies. Many of our clients were pioneers in and remain at the forefront of business done electronically. This history and continuing advantage of working with technology companies has encouraged us to adopt our "spectrum" approach to understanding and working more effectively with pertinent laws and business practices.
At the same time, we continue to offer ready access to attorneys in traditional substantive legal areas and industry groups — we view our "electronics in commerce" wheel as an overlay to traditional laws and industry practices. It is the intersection of that overlay with traditional laws and practices that is new, but it is still necessary to deal with attorneys who understand the base. The combination of the base and the overlay is the stuff of modern commerce.
To illustrate, we advise on:
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Consumer protection laws, including unfair acts and practices and product distribution and warranties
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Online access arrangements, software and content licensing, and technology transfers
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Online terms of use and attribution of electronic acts
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Payment mechanisms, including credit cards, ACH, stored value, payroll and gift cards and the like
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Privacy of personal information, data protection, identity theft, security of information systems, and impacts of using a "consumer report" such as a background check
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U.S. and international tax and export/import obligations for online commerce
Uniform Commercial Code for sales of goods, including proposed revisions and application (or lack thereof) of the UCC to software and other information
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Contract law for software and other information and U.S. government contracts (e.g., licenses, click-wraps, browse-wraps, shrink-wraps and copyright management information)
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Federal and state e-contracting laws, including "E-SIGN", UETA and UCITA
E-records, e-evidence, and e-commerce laws, including computer usage policies and new laws impacting programming
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State and federal information laws, including liability of information providers and online defamation
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Data protection, Internet "trespasses," laws regarding unauthorized access to computer systems and spyware, malware and the like
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Federal and state laws regarding unsolicited e-mails (both standard and mobile service messages for wireless devices) and protection of systems against spam
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Trademarks and domain names —creation, protection and management
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Intellectual property rights identification, protection, management and due diligence
Financing (including of software), tax and securities work
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Federal and state financial institutions laws, including US PATRIOTS Act, Bank Secrecy Act, and Gramm Leach Bliley obligations of businesses deemed to be "financial institutions"
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Joint ventures, acquisitions, mergers, and other business combinations
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Federal and state requirements for regulated activities such as "money service businesses" and issuers of stored value cards and the like
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National and international industry-wide software and data standards development
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Federal and state anti-kickback and self-referral restrictions
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Telecommunications "backbone" contracts for online networks and VOIP and BPL issues; and
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Electrical power contracts, defense of industrial users in rate hearings, electronics waste laws
We Wrote the Book
Holly K. Towle, of our Electronics in Commerce group, is the author of the two-volume reference work, The Law of Electronic Commercial Transactions ( http://www.sheshunoff.com/store/F53.html). Authoring and updating this book requires a drawing together of numerous disciplines. This helps us to stay on the cutting edge and spot connections and new defenses and legal trends.
Francis M. Pinckney, of our IP Corporate group, is the author of the deskbook, Products Comparison Manual for Trademark Users, which compiles the trademark case law in which decisions turned on a comparison of differing products or services. Since the first printing in 1988, this book has become a standard reference in virtually every trademark practitioner's library.
We also provide newsletters to clients desiring to learn more about existing or new issues regarding electronics in commerce. These have been valuable enough that CCH, the publisher of The Guide to Computer Law, republishes them in its "Practitioner’s Perspective" column. Visit our articles section to read the newsletters.
Industry Sectors
K&L Gates views the spectrum of Electronics in Commerce like an overlay: before any part of business is conducted electronically, the overlay of laws impacting electronic activities should be applied and traditional legal analysis adjusted — it is no longer sufficient simply to comply with traditional rules. The areas of law and transactions needing this overlay are as endless and varied as law itself, and application is not a rote process. While standard issues can be discussed, standard solutions seldom work.
Here’s a simple example of this new situation. For years many contracts or laws required particular acts to be documented in "writing" or "signed." Under today’s e-laws, that "writing" can be an e-mail or even a recorded conversation, as can the signature. So if a contract still says it may only be amended in a signed writing, what do the parties actually intend with that wording?
Our Electronics in Commerce group works with other groups in the firm focusing on substantive areas such as "real estate" or "securities" or industry sectors. Together, the two groups work to apply an " Electronics in Commerce " overlay as appropriate
Client Solutions
K&L Gates is devoted to aligning the pieces of the legal challenges facing our clients in a way that provides a path to the client’s goal. Reaching goals when commerce involves the use of electronics and digital information, alone or mixed with traditional goods, is much like trying to solve a puzzle.
Solving the puzzle requires identification of the new pieces and movement of all pieces in varying and tailored orders. That is the goal of K&L Gates' Electronics in Commerce group: to identify each piece applicable to our client’s particular situation and then to move them into alignment with client needs.
Database Protection
K&L Gates' attorneys regularly assist clients in a wide variety of licensing transactions and advise clients regarding appropriately protecting their databases, depending on the nature of their data. This assistance primarily focuses on copyright and trade secret advice, but can extend to a variety of intellectual property issues.
Federal, Regulatory, Legislative
K&L Gates offers clients a wide variety of legislative and administrative solutions to the opportunities and challenges presented by technology and an evolving knowledge economy. It does this in each of the following ways:
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The firm's Washington D.C. office, has been navigating the waters of federal government for over 28 years.
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Lawyers throughout the firm are engaged at numerous levels with state, national and international legislative and administrative initiatives to deal with the information economy, including initiatives regarding e-contracting, e-signatures, privacy, e-commerce and intellectual property proposals, as well as initiatives to revise "smokestack" laws to work for "smart goods," licensing and other examples of the existing and future economy.
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Each office of the firm has strong ties to state and local governments because of the firm's historical commitment to municipal finance and policy and because of the historical commitment of its attorneys to serving their communities.
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The firm assists clients with national and international standards setting organizations for high technology and helps those clients balance their competitive and cooperative interests. The "rules" created by these standards setting bodies can more directly and immediately affect clients than any legislation or administrative rule.
During the last decade, the explosive growth and convergence of computing, communications and media technologies and companies has led to a parallel increase in the breadth and importance of the interaction between these companies and government at all levels. Keeping pace with these developments, K&L Gates has an information technology practice that cuts across different industries and legal disciplines. The firm has become a leader in advancing and shaping information technology issues before the executive and legislative branches of government and in the courts, including issues arising from the convergence of information and every aspect of our economy. The firm's diverse client base includes large and small companies, coalitions, international organizations, universities, governmental entities and nonprofit institutions. In representing clients affected by information technology, the firm blends strong legislative and policy orientation with traditional legal counseling and litigation to anticipate and address convergence issues.
Information Technology Policy
The issues are HOT. Your competitors are IN THE GAME. Who is on YOUR TEAM?
For more than 15 years, K&L Gates has been a leader in advancing information technology and telecommunications issues before the executive and legislative branches of government and in the courts. The explosive growth and convergence in computing, telecommunications, e-commerce and media technologies has led to a parallel increase in the breadth and importance of interaction between the private sector and the government.
K&L Gates' lawyers and professionals are on the leading edge of the revolutionary changes in technology that are creating unprecedented challenges to traditional laws and public policies. We work at the intersection of law, policy, economics and technology.
Our victories have required creative strategy, superb legal work, the successful integration of lobbying, think tanks, political assistance, PR, grassroots, and practical day-to-day operational excellence that ensures the "blocking and tackling" gets done in a first-rate manner.
We can help you deal with the Government...and protect your business operations.
The Washington, DC office of K&L Gates has grown to more than 65 lawyers and policy professionals. We come from all three branches of the federal government, as well as from state governments and the private sector. This combined experience provides us with a special ability to represent clients’ interests from a broad perspective.
We can help you promote and protect your interests in Washington, on Capitol Hill, downtown and in the courts. Our legislative practice combines the three elements of a successful campaign: strategic advice, substantive knowledge, and access to key decision makers.
Our bipartisan team of three dozen registered lobbyists has more than 250 combined years of government experience. Whether it’s passing a bill, getting an amendment adopted, or defeating harmful legislation, our experienced team delivers results on both sides of the aisle and both sides of the Hill.
We can help you get the government regulatory approvals you need — whether export licensing at the Department of Commerce, telecommunications issues at the Federal Communications Commission, or approval of an acquisition by the Department of Justice or Federal Trade Commission. We also can help you sell your product or service to the Federal Government.
We have succeeded in Washington because we are committed to our clients, deliver exceptional results, provide extraordinary service and offer absolute integrity.
Licensing and Protecting Intellectual Property
The establishment, protection and licensing of trademarks, trade secrets, copyrights, patents and business strategies are paramount to the success of many businesses in today’s e-world. We have drafted and negotiated thousands of agreements for the development, distribution, protection and licensing of high-technology and online products and services. We also have litigated numerous trademark, copyright and patent suits. K&L Gates recognizes the global nature of the information technology industry and has significant experience on questions of foreign law.
E-Commerce
K&L Gates' lawyers have assisted numerous online operators, content providers, established information technology companies and start-up high-technology companies with their e-commerce issues. With this knowledge we are ideally positioned to help traditional "bricks and mortar" companies to transform themselves successfully to "clicks and mortar" companies or to create and manage their information assets. K&L Gates has become an innovator in legal developments affecting online technology, publishing and commerce. No firm, locally or nationally, is more knowledgeable about the applicability of current and proposed commercial law than K&L Gates.
Financing and Mergers and Acquisitions
One of the greatest challenges facing companies is the need for capital. We assist those companies whether they choose equity or debt financing and whether the financing comes from angel investors or venture capitalist funds.
Intellectual Property Audits
K&L Gates assists clients in assessing 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 for the purposes of evaluating 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 related e-commerce business practices. K&L Gates also assists clients in resolving issues identified through the audit process.
Intellectual Property Transactions
K&L Gates' lawyers are on the leading edge of the evolving realm of technology and intellectual property law. We provide legal advice and representation to some of the world’s most prominent information technology companies and hundreds of clients in a broad range of industries. In addition, we employ innovative technology ourselves and have created software tools to increase efficiency in assisting clients.
Our lawyers have literally written the book on electronic commerce, helping clients in all industries address new issues raised by electronic contracting, financial regulations, privacy regulations and Web services. We advise on the full range of business issues surrounding patents, including ownership and assignment issues, licensing, analysis of protection, prosecution and litigation. We help clients protect and license their copyrights in valuable works of authorship, including computer software, interactive games, music and audiovisual works. Our attorneys assist individuals and corporations in protecting trade secrets and other confidential information relevant to their technologies, production processes, and business and marketing plans. Additionally, we assist our clients through the entire process of obtaining, maintaining and protecting their trademarks, logos and domain name registrations.
In summary, our intellectual property team helps clients tackle the issues that matter most to them.
International Transactions
K&L Gates recognizes the global nature of the information and technology industries. We have significant experience in complying with U.S. and foreign technology export and import regulations, negotiating and drafting international distribution and technology transfer agreements, protecting intellectual property rights in foreign markets, and establishing foreign subsidiaries and joint ventures. Our lawyers provide advice and assistance on questions of foreign law through a network of corresponding law firms in over 50 countries.
Research Transactions
K&L Gates is one of the nation's leading technology and intellectual property law firms, with offices located in major technology centers across the country. K&L Gates' lawyers from various legal disciplines — including attorneys in the technology/intellectual property, corporate, and bond/tax fields — counsel clients concerning technology transfer and commercialization matters. K&L Gates lawyers represent technology companies which sponsor research at, or acquire technology from, universities, national laboratories, and private laboratories with large intellectual property portfolios. K&L Gates also represents universities and other research institutes concerning:
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the protection of their intellectual property
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the procurement of federal and other grants
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other sponsored research arrangements
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technology transfer licensing transactions
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other technology transfer/commercialization strategies
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technology licensing disputes
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general corporate matters
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tax and bond counseling
The following provides more details on the experience of K&L Gates' lawyers in our research transactions group.
Sponsored Research and Collaboration Arrangements and Other Grants
K&L Gates' lawyers have experience representing technology companies in various sponsored research and other technology collaboration arrangements with research institutes at universities, national laboratories, and private laboratories with intellectual property portfolios. Our attorneys counsel research institutes in similar sponsored research and collaboration arrangements and have experience concerning the preparation and negotiation of granting agreements. Our attorneys, particularly those in our Washington, D.C. office, also represent universities and other research institutes in formulating strategies for obtaining federal and other grants.
Technology Transfer/Licensing Transactions
K&L Gates' lawyers have experience representing both technology companies and research institutes in technology transfer transactions. This includes extensive experience concerning the various nuances related to licensing technology developed at research institutes to private technology companies, particularly those transactions that must comply with the Bayh-Dole Act. K&L Gates' lawyers also have structured arrangements in which the research institute, in addition to seeking royalty payments, seeks an equity interest in the technology company.
Additional Intellectual Property and Technology Counseling
K&L Gates' lawyers counsel universities and research institutes in the protection of their patents, copyrights, trademarks and other intellectual property rights. Our firm's knowledge in patent prosecution is particularly focused on the biosciences. Additionally, our attorneys counsel universities and research institutes concerning best practices to ensure that ownership of certain intellectual property rights created by employees or other principal investigators are retained by the university/research institute. K&L Gates' lawyers also provide representation concerning licensing and other contract disputes, and we assist universities in large-scale technology procurement projects.
Formation of New Research Institutes
K&L Gates' technology/intellectual property, corporate and tax/bond attorneys can come together as a team in order to identify and address the wide scope of legal issues involved in establishing new research institutes. These issues typically encompass funding and other grants needed to establish a new institute, entity selection and other corporate formation issues, various intellectual property and technology considerations and obtaining tax-exempt and publicly assisted financing for facilities.
Policy Formation
K&L Gates' lawyers can also assist universities and other research institutes in the formulation of best practices and other policies related to technology transfer and commercialization. Such policies include intellectual property ownership policies, policies related to taking equity interests in start-ups, and best practices for sponsored research arrangements.
Bond and Tax Counseling
K&L Gates' tax and bond lawyers counsel a variety of institutions of higher education. The federal policies on sponsored research in the Bayh-Dole Act often conflict with the federal policies on tax-exempt financing in the Internal Revenue Code. Our tax and bond lawyers have the experience needed to guide our clients through this conflict with strategies that both permit sponsored research and protect the tax exemption for the bonds that finance the public facilities at which the research occurs.
Software Development and Licensing
K&L Gates' lawyers assist both large and small software companies in all areas of software development and licensing transactions. Our client list includes many developers, publishers, and distributors of software for a wide variety of computer systems, including the world's largest developer and publisher of software. We have substantial experience in software development and licensing transactions for personal computers, application service providers (ASP), set-top boxes, and dedicated, embedded systems. We also represent authors, artists, and inventors who license their intellectual creations for use in software applications. We help all of our clients write and negotiate agreements related to software development, electronic rights licenses, distribution/resellers, end user licensees, original equipment manufacturers (OEM), online service providers, electronic data interchange (EDI), source code escrow, nondisclosure and employment.
Taxation of Intellectual Property
K&L Gates regularly advises clients on many federal, international and local intellectual property tax issues. We advise clients with respect to the tax implications of licensing, distribution and related agreements; online services provider agreements; mergers and acquisitions of companies owning significant intellectual property; and the organization of start-ups and joint ventures. We understand and help shape the emerging tax issues that arise concerning intellectual property, telecommunications, electronic commerce and related areas. Our representation of some of the nation's leading high-technology, companies has given our attorneys tremendous insights — insights that are particularly valuable to businesses just beginning to grapple with these complex issues.
Technology Standards
Technology standards organizations are industry groups that seek to create commonly used and robust technology specifications that provide interoperability and compatibility solutions for various technologies. They are increasingly being formed in many sectors of the technology industry, including within the software, computer, semiconductor, wireless and Internet sectors. As 21st Century technologies increasingly converge, the goals of these technology standards organizations— interoperability and compatibility—will become even more imperative. Indeed, if such goals are achieved, an industry sector could produce more complementary products and, ultimately, experience greater global growth.
K&L Gates is one of the nation's leading technology and intellectual property law firms representing technology companies and other entities in their participation in technology standards organizations. As a result of this representation, K&L Gates' Technology Standards attorneys have experience with many technology standards organizations in a wide variety of technology industry sectors—including PC and other computer, wireless, encryption, advanced television, cable, electronic books, battery, home automation and semiconductor-related standards organizations.
K&L Gates recognizes that a technology company that seeks to participate in a standards organization—whether as a promoter, a member of the Board, an active member participating in working groups, or merely as an adopter of a resulting specification—increasingly recognizes the vital need to analyze the plethora of business and legal ramifications of such participation. Such analysis is increasingly warranted whether the standards organization is based upon "openly shared" intellectual property rights or upon intellectual property rights that require licensing between members and adopters.
K&L Gates' Technology Standards lawyers have experience representing technology companies concerning a wide variety of issues resulting from the client's participation in the standards organization. The following outlines the key legal services that K&L Gates' Technology Standards lawyers provide:
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K&L Gates assists in the initial analysis that any technology company should undertake in evaluating whether participation in a particular standards organization conforms to the company's business plans and goals.
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K&L Gates also assists in the formation and administration of technical standards setting consortia and other multiparty organizations. In particular, K&L Gates' attorneys have experience preparing governing documentation of leading standards organizations with the goal of allowing its members to openly participate in cooperative research, development, and implementation of standardized technology while retaining the ability to capitalize on related proprietary technology.
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K&L Gates' Technology Standards attorneys have experience preparing the intellectual property rights policies (IPR Policy) of many cutting-edge standards organizations and counseling clients concerning the legal ramifications of joining, and continuing their participation in, standards organizations that have already adopted an IPR Policy. These K&L Gates lawyers are quite familiar with the variety of complex legal issues governed by a standards organization's IPR Policy, which typically include complex patent disclosure duties, patent and other intellectual property licensing obligations, intellectual property ownership issues, and nondisclosure matters.
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Our lawyers also assist companies with other issues associated with participation in a standards organization, including tax issues, the impact of the structure of the standards organization's board of directors and working groups, other corporate governance issues, the processes for certifying products that are compliant with the specification, and counseling regarding unfair competition issues.
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K&L Gates assists in-house attorneys and other clients in establishing corporate policies to enable a technology company to better evaluate the benefits of joining a standards organization and better coordinate the company's participation in that standards organization. In particular, K&L Gates' Technology Standards lawyers assist in the creation of internal corporate policies and documentation needed to analyze a technology company's decision to join a standards organization. Once the decision has been made to join a standards organization, our attorneys also assist our clients in the creation of internal corporate guidelines for proper participation in the standards organization, including the drafting of these participation guidelines and giving training sessions to the company's employees and staff.
Technology Transactions: Development, Acquisition, Licensing, and Distribution
Our lawyers regularly draft and negotiate technology transfer agreements covering the full range of intellectual property rights, including patents, copyrights, trade secrets, trademarks, trade dress, and know-how. Our experience includes domestic and international transactions involving computer software, computers and electronic devices, biotechnology, databases and information rights, technology transfer and commercialization and medical technologies. In working with our clients on these transactions, we seek to protect both our clients' intellectual property rights as well as their business interests. As a result, we often also provide advice on related issues such as warranty requirements, tax issues, and product liability concerns.