McCracken & Frank - Intellectual Property Expertise

Technology Advisory Group

McCracken & Frank is committed to providing services in a wide range of intellectual property areas. Some of our services include:

Identification of patentable technology
U.S. & International application filing and prosecution
Appeals before the Board of Patent Appeals
Expertise in emerging & established technologies
Re-examination & reissue proceedings
Accelerated examinations
Detailed investigations and counseling regarding state-of-the-art and right to practice

Initial independent appraisal of the benefits and drawbacks of pursuing litigation
Initial technical overview on patented technology & potentially infringing products
Cost analysis for litigation including pre-trial costs and trial expenses
Coordination with litigation counsel on all discovery, pre-trial, and trial issues for inside and/or trial counsel

Due diligence investigations in anticipation of litigation
Counseling senior management and boards of directors on litigation strategies, options, and likely outcomes
Selection and preparation of expert witnesses for direct and cross examinations
Supervising document production and inspection for efficient compliances with applicable rules
Cooperating with trial counsel from other firms on litigation strategies and word sharing
First chair jury and bench trial and appellate experience in patent infringement, trade secret, trademark, and Lanham Act cases, representative successes including Amgen v. Chugai, Amgen v. HOECHST, Eltech v. PPG, ICI v. Henkel, and CPG v. Mego

Licensing experience both in the United States & internationally
Practical and state-of-the-art advice on how to best structure license agreements and other technology transactions
Counseling strategies to protect and enhance both existing intellectual property portfolios and start-ups
Litigating and resolving licensing & other contractual disputes before Local, State, and Federal Courts
Representative licensing & contractual agreements include: sales & distribution agreements, joint development agreements, technology joint venture agreements, marketing agreements, patent & trademark licenses and assignments, beta-test evaluation licenses, long-term supply agreements, subcontracting agreements, stock option & purchase agreements & many more

ADR counseling in complex or sophisticated issues
ADR planning including preparation for mediation and/or arbitration, suggestions for ADR clauses for agreements, including issues relating to choice of law, choice of location, and choice of ADR rules.
Suggested ADR tactics, including the use of a tailored approach to resolving conflict using mediation, early neutral evaluation, arbitration or combinations of these tools.

Patentability analysis of pending patent applications owned by the target company
Validity analysis of patents owned by the target company
Clearance opinions with respect to target company product lines
Intellectual asset risk analysis of target company
Evaluation of the intellectual property portfolio for a target company
Evaluation of intellectual property to determine advantages for an acquirer and/or a target company

Identification of technologies that may be protected by trade secret law
Counseling regarding the advantages & disadvantages of trade secrets
Drafting detailed trade secret reports to detail technologies to be covered by trade secret protection
Counseling regarding the proper procedures to be followed to ensure trade secret protection is maintained
Drafting of confidentiality agreements for employees, suppliers, customers, etc
Providing plans for managing the flow of trade secret information during hiring & departure of employees having knowledge of trade secret information

Identification of best practices regarding website domain name registration and use
Counseling on how to handle a cyber-squatter
Drafting detailed cease & desist and domain name transfer letters
Defending clients against a domain name dispute
Counseling regarding the Uniform Domain Name Dispute Resolution Policy (UDRP) procedures and the Anti-cybersquatting Consumer Protection Act (ACPA)

Strategic planning for technology groups & product lines
Competitor product analysis & tracking
Complete intellectual property portfolio management
Business considerations relative to intellectual property asset acquisition and/or enforcement

For more information about our services, please contact us at 312-263-4700.

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