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IP Procurement and Portfolio Management

We are a truly integrated law firm that offers a full-service global intellectual property (IP) solution across four continents. We have the bandwidth to cost-effectively handle any technology, deadline, or project. We provide all of the advantages of both a global law firm and an IP boutique.

Our IP professionals work with each other seamlessly across the globe to protect and enforce our clients' intellectual property rights including patents, trademarks, designs, and copyrights.

We have significant experience managing global portfolios, advising on best practices for patent and trademark prosecution strategy, and streamlining outside counsel legal spending.  

Patents

In today’s global economy, we are uniquely situated to meet the intellectual property needs of organizations throughout the globe. With offices and patent professionals across five continents, including registered patent lawyers in the United States, Europe, Australia, and Asia, we offer an integrated global solution for patent procurement and portfolio management. The firm’s registered patent lawyers and agents alone make it one of the largest boutique law firms in the United States, one that possesses an unparalleled level of breadth and depth in areas of technical experience. With all of the benefits of a boutique and large firm, we actively build our client portfolios to meet strategic goals including due diligence, monetization, defensive filings, and litigation support.

We strive to understand the business surrounding the intellectual property and build cross-practice teams to collaborate across borders and across intellectual property, corporate, employment, and litigation practice areas to provide comprehensive holistic solutions to protect client interests around the world. It is this commitment to excellence that has garnered numerous awards for our patent procurement group, including recognition by U.S. News-Best Lawyers® survey as a “National First Tier” ranking for patent law since 2011.

A strong differentiator between us and other global law firms is the ability to leverage the advantages of a boutique firm with the resources of a global general practice firm to provide: 

  • Experienced professionals who focus on patent procurement and strategic counseling
  • Extensive volume of patent procurement work that enables efficiencies of scale
  • Global capabilities to uniquely handle worldwide needs
  • Deep technical bench with extensive experience and low turnover
  • Integrated practices groups that enable a true synergistic partnership with clients
  • Management structure that supports IP lawyers focusing on client service

Trademarks and Trade Dress

Trademarks are a significant valuable intangible asset that protects a company’s brand and public persona. Our trademark professionals worldwide are committed to providing our clients with full trademark prosecution and advisory services in addition to handling sophisticated enforcement and litigation matters. 

Through our international platform, we have a deep understanding of global trademark and branding issues, and our lawyers work with our clients to establish cost-effective strategies for registering and enforcing their marks worldwide. We manage the global and regional trademark portfolios of a number of leading multinational corporations and organizations. We also have experience rehabilitating neglected trademark portfolios consisting of hundreds, and in some cases thousands, of files.

We manage global IP enforcement and litigation matters and advise clients on their multi-jurisdictional enforcement and anti-counterfeiting matters. We work to streamline our clients’ in-house enforcement functions and provide cost-effective external counsel support.

Trade Secrets and Confidentiality

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 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. 

Copyrights

We help clients protect and enforce their copyrights in valuable works of authorship, including computer software, multimedia 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 in countries with copyright registration systems. 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 and have particular experience in copyright issues in the technology, software, art, design, and architecture fields. We also have significant experience in enforcing copyrights across the globe.

Designs and Design Patents

Design registrations (as they are commonly known outside the United States) and design patents (as they are known in the United States) protect the visual features of a product. We are experienced in advising on the registration of designs in order to protect the visual features of products. We also have significant experience in litigating and enforcing design registration against infringers. 

Internet Protection of Trademarks, Copyrights, and Domain Names

We help intellectual property owners face the many challenges posed by the Internet and online platforms. Our lawyers have advised clients regarding a wide variety of online endeavors, from technology and online startups to larger more traditional companies and organizations entering the online world. 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. 

Our lawyers are very familiar with issues relating to online infringement and are well versed in the regulation of online platforms and social media sites, including with respect to emerging issues under the:

  • California Consumer Privacy Act 
  • ICANN's Uniform Domain Name Dispute Resolution Policy 
  • Digital Millennium Copyright Act 
  • Copyright Design and Patents Act (CDPA)
  • Nominet's Dispute Resolution Service
  • Copyright and Related Rights Regulations and CDPA in the United Kingdom, and the Australian Copyright Act
IP Licensing and Transactions

A significant component of our practice includes the licensing, transfer, and commercialization of intellectual property assets, ranging from licenses, sales, and assignments of patents, design rights, trademarks, trade secrets, and copyrights to business acquisitions and mergers. In structuring and negotiating domestic 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. 

IP Audits

We help clients assess the strength of their intellectual property assets, including copyrights, trademarks, trade secrets, designs, and patents, and to identify potential issues regarding those assets. These assessments may be for internal audit purposes or for 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 products and services. We also assist clients in resolving issues identified through the audit process.

IP Due Diligence and Valuation

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.
 

Additional Thought Leadership Pages
03 August 2020
K&L Gates Bolsters Intellectual Property Practice with San Francisco Partner Addition
Press Release, Practice & Regional News
09 July 2019
K&L Gates Bolsters IP Practice with Addition of Four-Lawyer Austin Team
Press Release, Practice & Regional News
23 May 2018
K&L Gates Continues Growth of IP Practice with Munich Partner Addition
Press Release, Practice & Regional News
17 February 2016
K&L Gates Names 50 New Partners
Press Release
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