Intellectual Property

Gibbons has the largest and fastest growing full-service Intellectual Property Department for any general practice firm in New Jersey, with more than 45 attorneys practicing in the Intellectual Property arena on a full time basis, in addition to several scientific advisors, patent agents and paralegals. The firm's Intellectual Property Department provides a full range of patent, trademark, copyright, unfair competition, E-commerce, trade secret, and computer and Internet law experience in the areas of litigation, strategic licensing and transactional work, patent prosecution, trademark and copyright registrations, corporate due diligence, intellectual property audits and general intellectual property counseling. Staffed principally with attorneys with advanced degrees in science and engineering, the firm's Intellectual Property Department regularly services clients in the electronics, telecommunications, computer software, E-commerce, biotechnology, pharmaceutical, chemical and health care industries. Thirteen members of the Department have advanced degrees beyond the science/engineering undergraduate and Juris Doctor degrees, three of which are PhDs. Three members of the Department are former vice-presidents for intellectual property departments in major international corporations. Many members of the Department had prior full time experience in research and development before beginning the practice of law. Eight members of the Department are published authors and they are either guest lecturers or adjunct professors in New Jersey law schools.

Litigation

Members of the Intellectual Property Department have extensive experience nationwide and overseas prosecuting and defending patent, trademark, copyright, unfair competition and trade secret matters before federal and state courts, arbitration panels and alternative dispute resolution forums. In the patent area, members of the Department have handled litigation matters involving technologies ranging from telecommunications, motion simulators, dynamic electronic sensors, medical apparatuses, pharmaceutical compounds, Internet/E-commerce software, air and water filtering devices, optical devices, plastics, and even multidimensional trading cards. The firm's strategy and philosophy for staffing patent litigation matters is to have an Intellectual Property Department litigator work together with a "technical" attorney within the Department with scientific experience in the relevant patented technology. The firm and its clients have found this staffing approach to be very effective and successful in patent litigations and, of course, it has also proven to be more cost efficient.

The Intellectual Property Department's trademark, copyright and trade secret litigation experience extends even further. Litigators within the Department regularly handle on a nationwide and overseas basis trademark and copyright infringement, and dilution matters involving Internet commercial web sites, "cybersquatting," pirated and "knock-off" commercial goods, domain name disputes, foreign and domestic customs seizures, and international and domestic licensing and distribution disputes. Recognizing the continued development of Internet technology and the expansion of E-commerce as the new means of transacting business, the Gibbons Intellectual Property Department has made a sound commitment to forging creative alternatives to protecting and enforcing its clients' trademark, copyright and trade secret rights in the worldwide market.

Patent Prosecution

The firm has many years of experience in the preparation, filing and prosecution of a large variety of patent applications before the United States Patent and Trademark Office in the fields of electronics, telecommunications, computer software, E-commerce, pharmaceutical, biopharmaceutical and chemical compounds and formulas, and mechanical devices. The Department also provides supporting prosecution of corresponding foreign applications.

We are skilled in educating our clients to recognize and to protect emerging and potentially new technologies, keeping abreast of the rapidly changing patent law. We evaluate patent novelty, from a patent office viewpoint, with the client's economics in mind. Patent applications are carefully prepared by a staff of licensed patent professionals to emphasize commercial value, target markets and the technologies' growth potential.

The growth of global markets requires every client to consider foreign patent protection. Principally through its participation in Geneva Group International, a private association of select law firms worldwide with whom the firm regularly works on international matters in all practice areas, and through a network of foreign agents, Gibbons designs each client's foreign patent portfolio to assure proper protection in the appropriate countries. In addition, the firm coordinates the domestic and foreign prosecution effort to maximize coverage and minimize conflicts and costs during U.S. and foreign prosecution, and during maintenance periods. Members of the Intellectual Property Department are also experienced in appeals and interferences, as well as oppositions in foreign countries. In particular, the Department is well versed in coordinating these diverse proceedings for the maximum benefit of our clients worldwide.

Trademarks and Copyrights

The Intellectual Property Department's principal activity in the trademark area, in addition to litigation, is the preparation, filing and prosecution of a large variety of trademark applications before the United States Patent and Trademark Office. We perform screening searches and advise clients on potential marks prior to adoption and use, so as to minimize the possibility of infringing an existing mark and maximizing the likelihood of registration of a mark. We have prepared trademark applications for both word and design marks involving a wide variety of goods and services.

We advise clients in a variety of licensing situations and other corporate transactions involving trademarks. The firm's practice extends to the full range of issues covered by the Lanham Act, including false and deceptive advertising, which is an area of increasing concern to some clients. The Department maintains relationships with intellectual property firms throughout the world, and obtains trademark registration for clients in other countries.

In addition to copyright litigation, the Department also regularly handles the preparation and filing of copyright applications and works protected under the copyright laws, including computer software. The firm prepares copyright applications for works ranging from graphic designs to computer software, and from individual works to collective works.

Licensing

Gibbons recognizes that strategic licensing is a key component to any client's successful exploitation and protection of its intellectual property portfolio. Over the years, the Intellectual Property Department has, on both sides of the table, negotiated numerous license, distribution and collaboration agreements in the biomedical, pharmaceutical, fashion, electronics, E-commerce, telecommunications, chemical and other industries in the domestic and international business communities. In addition to license negotiation and drafting, members of the Gibbons Intellectual Property Department regularly counsel clients on licensing and assertion strategies, and strategic product development and distribution. Uniquely capable of handling patent prosecution matters and trademark and copyright registrations, as well as strategic licensing and evaluation counseling, the Gibbons Intellectual Property Department offers its clients attorneys who are both familiar with the technology and experienced in achieving long and short-term licensing business objectives.

E-commerce

Gibbons has been representing companies with respect to Internet and E-commerce issues since the mid 1990s, when clients began exploring the use of the Internet as a method for distribution for publications, data and software to replace direct dial-up systems. We regularly counsel clients on the licensing, copyright, trademark, patent, risk management and other issues that impact on such E-commerce businesses. Our clients range from small start-ups to multi-national corporations trying to handle substantial transactional volume, and many of the issues remain the same for all of them. We have also handled licensing and litigation for E-commerce clients in connection with the misuse of brand names, HTML metatags and other protected E-commerce rights. From co-branding to chat rooms, from sales of products to maintenance of software, from the courtroom to the inventor's home office, the Gibbons Intellectual Property Department has worked with these companies to succeed in today's E-commerce business and legal environments.

Intellectual Property Audits, Evaluations and Trade Secret Protections

Intellectual property assets are important assets, the value of which is sometimes difficult to determine. For example, the existence of competing patents in the marketplace and their impact on new entry and profit margins require analysis. At Gibbons, we provide a full range of evaluative services such as asset evaluation as part of due diligence consideration, validity studies, right-to-use evaluations and assessment of appropriate licensing rights and pitfalls. Much of this plays a role in the risk/reward evaluations of new businesses and business expansion.

Because not all intellectual property is as readily identifiable as a patent, identification of intellectual property assets that require protection is yet another part of the service offered by Gibbons. We assist companies in evaluating whether they are taking the appropriate steps to protect their intellectual property including identifying the intellectual property they should protect, advising them regarding the appropriate forms of protection, and putting procedures into place to maximize protection. For example, some intellectual property is best protected as a trade secret. Through the Intellectual Property Department and the Employment Law Group, we advise clients on employment agreements, non-disclosure agreements, confidentiality agreements and employee policies and procedures which are designed to help protect intellectual property, and particularly those types of property which are best protected as trade secrets.

Summary Overview

As the world continues to change, recognizing, protecting and ultimately exploiting effectively intellectual property assets are certain to be the key components of any successful business venture. Historical statewide and regional business practices and marketplaces are quickly transforming themselves into a worldwide market fueled principally by intangible business assets in the form of patents, trademarks, copyrights, E-Commerce and trade secrets. And, with the assistance of the Gibbons Intellectual Property Department, we are confident that our clients can make that business transition successfully, effectively and cost-efficiently.