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Intellectual Property and Technology

Intellectual Property and Technology

Intellectual Property and Technology

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Overview

Never has our pledge been more important to you. The lawyer who best understands the special value of your intellectual property is the lawyer best equipped to represent your interests, whether in the courtroom or the boardroom, on the factory floor or in the lab, or before a governmental entity, here or abroad.

Our depth of understanding and experience allows us to successfully guide clients through complex intellectual property issues—from litigation to licensing to international regulations.

  • License out by a major pharmaceutical company of a particular drug form to a generic pharmaceutical company
  • For an insurance company: patent licenses for software to be used by its sales force
  • Licenses in of patents from educational institutions concerning power metering and location identification
  • License in for a major pharmaceutical company concerning controlled-release compositions as part of a transfer of its patent assets
  • Licenses for development of financial and communications management systems in telecommunications and energy industries
  • Licenses in of patents from educational institutions and commercial enterprises concerning plant-made pharmaceuticals, and licenses out to commercial enterprises
  • For software developers: end-user licenses; licenses in of pre-existing components for incorporation into products; and licenses out to government and educational entities
  • For consultants: allocation of intellectual property license and ownership rights developed for their clients in multiple industries, including logistics, transportation, software, healthcare, medical devices, and consumer electronics
  • Patent and know-how licenses concerning fire prevention systems, mining equipment, biofuels, skateboards and scooters, asphalt paving technology, school bus safety equipment, and clothing
  • For educational institutions: commercialization of research through licensing in compliance with the Bayh-Dole Act and relevant university policies
  • Licensing for strategic alliances and joint ventures, including licenses in of technology, allocation of competitive IP exploitation rights to the venture and between venturers, and exit planning 

Trademark 

  • For a major manufacturer of toy action figures: licenses with motion picture studios, publishers, NASCAR, and major professional sports leagues and their players’ associations
  • For a major motorcycle aftermarket manufacturer: license in for use of a well-known mark on its products
  • For a school in a state university system: licenses out of the use internationally of its mascot in connection with educational outreach project
  • For an international footwear company: co-branding agreements, joint promotion agreements, product placements, and other collaborative efforts, with major brand owners and motion picture studios
  • For a major US home furnishings retailer: licenses with US and international manufacturers, and joint venture and co-branding agreements
  • For a manufacturer of stylized footwear: licenses out to video game developers/manufacturers to include depictions of footwear in games
  • For a global retailer of toys and infant and baby products: licenses with third parties to allow the client to expand its trademark portfolio with relatively small expense
  • For a world-renowned dance company: licenses out of their source-indicating choreography for live performances by third parties and for use in advertisements and on consumer products
  • For a major charity whose goal is to bring clean and safe drinking water to people in developing nations: licenses out of its trademarks on a variety of products, a portion of the sales revenue of which goes to the charity to further its work
  • For a major manufacturer of HVAC equipment: licensing in connection with acquisition of a company and its portfolio of internationally well-known brands
  • For an international appliance manufacturer: licenses out of its world-famous brands
  • For a major international food producer: brand licenses
  • For consumer products manufacturers: licenses and other agreements with major league sports teams and stadium owners concerning sports stadium naming rights
  • For an international hair products company: licenses with distributors in over three dozen countries
  • For major apparel manufacturers: US and foreign licenses in and out
  • For sporting goods manufacturers: US and foreign licenses in and out
  • For US beverage companies: licenses out 

Copyright 

  • For authors and publishers: licensing and distribution of academic, professional, and scientific content for print and electronic publishing
  • For an advertising agency: licenses to use pre-existing music and performances in advertisements
  • For an international hair products company: licenses with distributors in over three dozen countries
  • For a well-known visual artist: licenses to use his images on posters
  • For vendors of information services: licensing of proprietary databases
  • For an international supplemental insurance company: licenses for insurance policies
  • For a major not-for-profit organization: licensing out of a database to for profit organizations
  • For a not-for-profit organization: licensing out of its photographic collection to an online retailer

Other 

  • For a well-known international luxury goods company: license to use the name, likeness, and other indicia of a deceased celebrity
  • For a major toymaker: licenses with professional baseball, football, and hockey players, NASCAR drivers, and motion picture actors for use of their names, images, and identity on toy action figures
  • For a famous professional baseball player: endorsement and other license agreements for the commercial use of his name, identity, and persona.

True to our guiding principles, many of our lawyers have not just academic training but hands-on experience in key fields.  Our patent attorneys include inventors, scientists, and engineers, our trademark lawyers include former corporate brand managers, and our copyright attorneys include copyright owners in various fields.  That real-world knowledge helps us provide our clients with what they actually need and avoid wasting time and resources on what they don’t need.

a "one firm" philosophy

As our clients have expanded their geographic footprint, so have we.  With law and international trade offices across the globe and a “one firm” philosophy that enables us to work efficiently with colleagues in any practice area or office, we provide our clients with prompt, sophisticated, and reliable advice and advocacy on the full array of intellectual property issues, from San Francisco to Singapore, Phoenix to Paris, and Los Angeles to London.

a "one firm" philosophy

As our clients have expanded their geographic footprint, so have we.  With law and international trade offices across the globe and a “one firm” philosophy that enables us to work efficiently with colleagues in any practice area or office, we provide our clients with prompt, sophisticated, and reliable advice and advocacy on the full array of intellectual property issues, from San Francisco to Singapore, Phoenix to Paris, and Los Angeles to London.

Joseph J. Richetti

Joseph J. Richetti

Partner and Co-Global Practice Group Leader - Intellectual Property and Technology, New York

+1 212 541 1092
Rachel E. Matteo-Boehm

Rachel E. Matteo-Boehm

Partner and Co-Global Practice Group Leader - Intellectual Property and Technology, San Francisco

+1 415 268 1996
Joseph J. Richetti

Joseph J. Richetti

Partner and Co-Global Practice Group Leader - Intellectual Property and Technology, New York

+1 212 541 1092
Rachel E. Matteo-Boehm

Rachel E. Matteo-Boehm

Partner and Co-Global Practice Group Leader - Intellectual Property and Technology, San Francisco

+1 415 268 1996

Meet The Team

Joseph J. Richetti

Joseph J. Richetti

Partner and Co-Global Practice Group Leader - Intellectual Property and Technology, New York

+1 212 541 1092
Rachel E. Matteo-Boehm

Rachel E. Matteo-Boehm

Partner and Co-Global Practice Group Leader - Intellectual Property and Technology, San Francisco

+1 415 268 1996

Related Capabilities

  • Food & Agribusiness

  • International Trade

  • Data Privacy & Security

  • Sports, Media & Entertainment

  • Marketing & Advertising

  • Media & First Amendment

  • Technology Transactions

  • Intellectual Property and Technology

  • Employment & Labor

  • Islamic Finance & Investment Team

  • Securities & Corporate Governance

  • Outsourcing

  • M&A & Corporate Finance

  • Start-Up & Venture Capital Practice

  • Healthcare & Life Sciences

  • Fintech

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