The Intellectual Property Practice Group offers integrated services to meet the diverse needs of our clients for the recognition, acquisition, and safeguarding of their intellectual property. We understand that intellectual property acquisition and licensing, development and management, transactional matters, and litigation concerns overlap. We provide counsel and service to clients in a comprehensive manner to address such concerns.
Patent
Our registered patent attorneys have experience in all areas of both domestic and international patent law. Their experience includes patent preparation, prosecution, and registration; validity and freedom to operate analysis; portfolio management counseling and maintenance; strategic portfolio development and analytics; interference practice; licensing; and litigation. Our attorneys also maintain established relationships with foreign associates in many countries around the world. The technical expertise of the attorneys in this Practice Group covers a broad spectrum of technological and scientific disciplines.
We assisted a client in work related to domestic and foreign patent rights in the client's novel proprietary manufacturing apparatuses and methods which had global application. We secured domestic patent rights through the preparation and prosecution of applications before the United States Patent and Trademark Office ("USPTO"). Using the Patent Cooperation Treaty process and our relationships with various foreign associates, we were able additionally to assist the client in obtaining patent rights in foreign jurisdictions. Upon securing the global patent rights, we developed license agreements to license the use of the technology and implemented a strategic plan to maintain the patent portfolio efficiently and to place the client in a strong position in view of its competitors.
Trademark
Our attorneys whose practices focus on trademarks advise clients with regard to domestic and international trademark portfolios, including trademark and service mark selection, clearance, prosecution, registration, and enforcement. The Intellectual Property Practice Group also handles Trademark Customs Registrations before the United States Customs and Border Protection Office, as well as domain name dispute resolution proceedings before various domestic and international forums. We maintain established relationships with foreign associates to facilitate securing trademark protection for our clients in many countries around the world. The Practice Group's focus is to protect and maximize the brand value for our clients.
We assisted a client involved in the health and wellness industry with the international expansion of its business and trademark portfolio. We secured domestic trademark registrations through the preparation and prosecution of applications before the USPTO. Using the Madrid Protocol system, we were able to secure foreign trademark registrations simultaneously in multiple jurisdictions prior to the client's entry into these targeted markets. Through our strategic use of the client's domestic trademarks and the Madrid Protocol system, the client was able to position itself internationally at the forefront of the health and wellness industry by the efficient and economical exploitation of its existing intellectual property.
Copyright
Our attorneys whose practices involve copyright matters routinely conduct clearance searches, register claims of copyright, and secure rights through assignment, licensing, and "work for hire" agreements. Our attorneys also provide licensing services, and enforce copyright protection for our clients through working with the United States Copyright Office.
Trade Secrets
Our attorneys whose practices include trade secrets matters not only provide counsel regarding the identification, preservation, and protection of trade secrets, but also provide representation under circumstances involving alleged or actual misappropriation of trade secrets. Attorneys in the Practice Group regularly represent clients in the North Carolina Business Court, where many contested trade secrets disputes are litigated and resolved.
We assisted a client involved in an intensely competitive construction business with a matter involving a trade secrets dispute. Several employees of a competitor became disenchanted with their employment and approached our client seeking employment. After making certain that the employees were not subject to a covenant not to compete and had not misappropriated any trade secrets of the former employer, the client hired a number of the employees, who proceeded to begin competing directly with their former employer. The former employer filed suit against the client and former employees, alleging misappropriation of customer lists, customer preferences, and confidential pricing and bid information. By establishing through discovery that this information was not a trade secret and, in any event, had not been taken by the employees, we were able to avoid an expensive and uncertain trial for the client.
Corporate and Transactional
The corporate and transactional attorneys within the Intellectual Property Practice Group handle all transactional matters involving the full range of intellectual property and proprietary information agreements, including intellectual property licensing, transfers, and development policies; trade secret protection policies; employee and consultant confidentiality and intellectual property ownership agreements; organizational formation and structure; and other matters involving information, technology, and proprietary systems.
Litigation
The litigation attorneys in this Practice Group provide counsel and representation to clients in all aspects of intellectual property litigation, including patent, trademark, copyright, and trade secret enforcement; infringement and misappropriation defense; patent re-examination proceedings; trademark opposition and cancellation proceedings; license agreement disputes; and disputes regarding e-commerce systems and domain names.
We assisted the owner of a United States patent and federal trademark related to a mechanical device for handling personal watercraft. The patent and trademark each had become the subject of infringement by several competitors. We filed suit in federal court and aggressively pursued infringement claims against the competitors. As a result, the infringers acknowledged the validity and enforceability of our client's intellectual property and we were able to secure for our client favorable license and royalty relationships with the infringing parties.
Representative Clients and Commitment
Clients served by the Intellectual Property Practice Group include manufacturers of products such as pharmaceutical equipment, medical devices, household appliances, textiles, ground improvement technologies, boats and marine accessories, farming equipment, waste management technology, and electronic equipment; banks and other financial institutions; health care providers; computer software programmers, vendors, and marketers; businesses with proprietary technologies; distributors; Internet service providers and other e-businesses; and other businesses with scientific, technological, or intellectual property interests. Recognizing that full commercial development of intellectual property is often a global endeavor, we serve clients from around the world and maintain relationships with foreign associates for global acquisition and enforcement of intellectual property rights.
Our attorneys take an abiding interest in our clients. We visit their places of business and offer seminars at their location or at our offices. Our attorneys draw on the substantial knowledge and experience of other practice groups in the Firm – such as Agribusiness, Business, Dealer/Distributor and Franchising, Health Care, and International – to complement the services we provide.
Attorneys in the Intellectual Property Practice Group bring to their work a range of complementary experience, including engineering, biology, and architecture; manufacturing company management, strategic intellectual property consulting, and in-house counsel; judicial clerkships to the North Carolina Supreme Court and the North Carolina Court of Appeals; university lecturers; membership in community and civic organizations; and membership on the executive boards of many civic organizations. Our attorneys are licensed to practice in intellectual property matters before North Carolina state and federal courts, including the United States Supreme Court and the United States Courts of Appeals for the Fourth and Federal Circuits, as well as the USPTO.
Our attorneys also are active and hold membership or leadership positions in many organizations relating to their practice areas, including the American and North Carolina Bar Association Intellectual Property Law Sections, the American Institute of Architects, the American Intellectual Property Law Association, the Eastern North Carolina Inn of Court, the International Trademark Law Association, the Licensing Executives Society, and the North Carolina Advocates for Justice.
With an economy that places a higher value on the intellectual assets of companies, and the need to address business decisions on a global level, the Intellectual Property Practice Group of Ward and Smith stands ready to assist clients in all aspects of development and management of portfolio strategy, commercial exploitation, and the protection and enforcement of their intellectual property.
