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Intellectual Property

McDonough Holland & Allen’s Intellectual Property group advises clients on patents, trademarks and copyrights, as well as other intellectual property issues for both transactional and litigation matters.

Protecting your intellectual property (IP) is an important component of any business strategy. For many companies, particularly those that heavily invest in research and development, patents, trademarks, copyrights and trade secrets will prove to be the most valuable company assets.

Our IP attorneys counsel and represent clients on the full spectrum of intellectual property issues, including:

• Acquisition - Creation, development, purchase, licensing
• Ownership - Employment agreements, security, litigation, registration, taxation
• Protection - Risk management, confidentiality, enforcement
• Transfer - Involuntary (disclosure, infringement)
• Transfer - Consensual (licensing, assigning, selling)

Ownership

McDonough’s IP Group assists clients, both in the United States and internationally, in developing their IP assets. We assist clients in securing their IP rights, and counsel clients in developing strategies to maximize the value in their intellectual property assets.

In the field of patents, the IP Group prepares and prosecutes all classes of patent applications, with attorneys experienced in appeal and interference proceedings, as well as reissues and reexaminations. We also offer opinions with regard to patentability and, where third party assertions have been made against our clients, infringement and validity opinions.

Our attorneys prepare and handle all aspects of PCT patent applications; including coordinating and counseling our foreign associates in securing foreign patents for our clients’ inventions.

We also assist our clients in trademark and copyright registration. Our attorneys have significant experience in representing clients in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board and in securing international registrations for our clients’ trademarks.

Our patent, trademark and copyright clients include high technology companies and the arts community, as well as individual entrepreneurs and emerging businesses, spanning such diverse technological fields as life sciences, medical devices, production technologies, electronic games and publishing.

Litigation Services

The IP Group’s litigation services include litigation of patent, trademark and copyright infringement claims in both state and federal courts, as well trade secret disputes and issues relating to confidentiality, non-disclosure and non-competition agreements. The IP Group also deals with unfair competition and false advertising claims, antitrust claims and counterclaims, and breach of contract, breach of warranty, fraud and negligent misrepresentation claims related to enforcement of IP rights. We can assist in handling insurance claims and demands for defense benefits under various liability insurance policies, and provide representation and advice in connection with California’s Uniform Trade Secrets Act, Unfair Trade Practices Act and various unfair competition laws.

Transactional Services

Our attorneys counsel clients in the various ways of extracting value from their IP portfolios, assisting in licensing, franchise agreements and the transfer or sale of intellectual property assets. In this regard, the attorneys in our Group advise clients during business mergers and acquisitions, license negotiations, and efforts to resolve intellectual property disputes. We also provide tax advice related to the ownership and transfer of intellectual properties.