Background - Practices (Details)

IP Transactions


The intellectual property team at Crowell & Moring helps clients across the United States and abroad realize the full value of their intellectual property and defend against unauthorized use of their ideas— assets often described as "today's international currency." Successful strategy, protection, and management of intellectual property rights can play a significant role in the broader success or failure of a business venture, especially where substantial effort and capital investment are devoted to the development of new technology or new ideas.

Innovations typically involve a broad range of technologies, and our IP team has in-depth experience in the full spectrum of scientific disciplines and the products and processes to which they give rise. Our lawyers apply their technical backgrounds and experiences to guide clients in a variety of industries, including electrical, mechanical, and chemical engineering; pharmaceuticals and life sciences; software, online services, and computer science; and telecommunications.

Our transactions and prosecution team benefits from its close relationship with our intellectual property and commercial litigators. This enables the transaction and prosecution teams to spot potential issues before they arise and help clients avoid potential pitfalls. In fact, our team has developed a series of best practice documents on protecting IP, including trade secrets, which provide clear, actionable guidance for clients. For example, we counsel clients on the design and implementation of IP portfolio management procedures, including invention recordkeeping, intercompany invention reporting, patent incentive programs, patent reviews, proprietary information protection programs such as employee consulting, confidentiality, and invention agreements, trade secret protection practices and policies, employee exit procedures, "clean room" design-around procedures, and copyright maintenance, licensing, and enforcement programs. We also provide due diligence assessments of newly developed technologies and in connection with the acquisition of intellectual property.

IP Strategy and Prosecution

Our lawyers have extensive experience in all aspects of intellectual property transactions, and apply their focused knowledge in a wide range of industries, including biotech, pharmaceuticals, manufacturing, healthcare, aerospace, defense contracting, financial services, telecommunications, software, semiconductors, and electronics. Lawyers from our Corporate Group and Intellectual Property Groups work together closely to structure, negotiate, and implement IP transactions, such as those involving patents, trademarks, copyrights, trade secrets, know-how, and data rights. As a benefit of our close working relationship with the firm's Government Contracts Group, we have substantial knowledge and extensive experience with issues arising when licensing IP to or from governmental entities, including patent and technical data rights issues.

Patent Prosecution

Our lawyers work closely with clients to develop and implement cost-effective strategies and obtain valuable proprietary rights for their inventions through the preparation and prosecution of utility and design patent applications, registration of copyrights and trademarks, and negotiation of a range of licensing, non-disclosure, and trade secret agreements.

Because it is no longer sufficient in today's global economy to limit protection to the U.S. domestic market, we also assist our clients in the filing of patent applications in other countries and in obtaining protection under the Patent Cooperation Treaty. For this purpose, we have established working relationships with foreign lawyers in numerous countries throughout the world.

We recognize that there is little benefit to obtaining protections that are subsequently found invalid or severely narrowed in litigation. Working closely with our experienced IP litigation team, we regularly monitor the regulatory and judicial landscape and prepare alerts on recent cases and emerging issues to ensure that clients, their in-house counsel, and lawyers throughout our own firm are aware of new developments in the prosecution and protection of creative assets.