Practice Areas
(References and Sample Work Product Available Upon Request)
Patent Prosecution
- Patent prosecution – 42 countries
- European Union – management of advanced petition and amendment practice
- International portfolio cost projections and budgeting to assist in-house counsel
- Patent searches
- Freedom to operate
Licensing, Royalty Audits, and Valuation
- Preparation of licensing agreements
- Royalty audit addendums for standard agreements
- Performance of patent royalty audits – domestic and international
- Royalty recovery litigation
- Patent royalty recovery – overseas operations of domestic corporations
Trademark Prosecution
- Trademark applications – 53 countries
- International portfolio budget projections
- Due diligence review and operational documentation review
- Trademark infringement opinions
- Sublicenses
- International design patent and trademark protection
Business Formation and Funding
- Technology transfer and funding agreements
- Joint ventures and development agreements
- Structuring of entrepreneurial businesses
- Pre-funding due diligence and valuation
- Development of intellectual property strategies for government and non-profit
Litigation and Customs Practice
- Patent and trademark infringement – Illinois and Wisconsin
- Practice before international trade commission (Customs Office)
- Recovery audits and litigation – patent royalties
- Recovery audits and litigation – underperforming and out-of-scope technologies procured or licensed
- Injunctions and restraining orders; seizures
- Franchise litigation
- Breach of contract and license performance issues
- Tortious interference claims