IP Consulting & Transactions

IP Consulting & Transactions – Strategic Solutions

We provide strategic advice to industry-leading companies with respect to protecting and leveraging their intellectual property assets. Our solutions are customized to the objectives of our clients, as well as their budgets. 

IP Consulting

We work with businesses of all sizes to ensure that they are maximizing the value of their intangible assets. The extensive roster of issues we regularly address includes:

• IP Protection Strategies: We work with clients to develop a comprehensive IP strategy that protects their assets and aligns with their business goals. Our IP solutions are tailored to the unique industries, markets, and jurisdictions in which our clients operate. We also provide audits of existing IP protection procedures to identify potential risks and recommend enhancements.
• IP Rights Clearance: We perform Freedom to Operate (FTO) searches and competitor analysis to identify potential competing IP rights or technologies. We also conduct trademark searches and fair use analysis.
• Trade Secret Protection: The firm’s clients have valuable assets in the form of ideas, formulas, specific processes or a method that allows them to excel in business. Our attorneys actively prosecute trade secrets theft, defend against claims of misappropriation, and protect our clients through offensive and defensive strategies that maximize intellectual capital and minimize leaks of valuable information.

IP Transactions

Whether it’s licensing the use of your logo or obtaining a key patent assignment, our IP attorneys can also guide you through the transaction and ensure your interests are protected. Our transactional IP services include:

• Licensing Agreements: The firm’s IP team negotiates and tailors agreements in accordance with clients’ needs, including software development agreements, patent, trademark, and copyright licenses, software licensing agreements, and distribution agreements. 
• Corporate Transactions: Our IP team routinely advises clients regarding a broad range of corporate transactions, including financing new ventures, creating holding companies, acquisitions and divestitures, and debt structure strategies. We also help our clients build profitable business relationships through collaborations, strategic alliances, and joint ventures.
• International Transactions: The global nature of the firm’s IP practice ensures that clients interested in pursuing opportunities outside of the United States can leverage the firm’s network of attorneys around the world.
• Insurance Coverage: Our attorneys routinely handle coverage matters related to IP infringement, trade secret misappropriation, and advertising injuries. We also have experience litigating technology coverage disputes, including IP specific policies.
• Confidentiality/Non-disclosure Agreements: By drafting robust non-compete, nondisclosure, confidentiality, and employee agreements, our attorneys ensure that clients can continue to do business without compromising their company’s trade secret protections.
• Online Agreements: We draft Terms of Use, Privacy Policies, and User Guidelines that clearly notify users as to what information on our clients’ websites is proprietary and the rules governing the site’s use. By drafting these documents, the firm places clients in a strong position to safeguard their IP and reduce the risk of legal disputes.

Our IP Consultants in Action

Armed with a deep understanding of science, technology, and IP law, we are equipped to tackle the complex and evolving IP issues facing our clients. Some examples include:

• (NJ Superior Court) Represented founding band member and shareholder in a precedential suit against other band members and the corporate entity for breach of shareholder agreement and for failure to distribute profits. Obtained both money damages and attorney’s fees.
• (United States District Court, Middle District of Florida) Represented a US musical instrument distribution company in a precedential lawsuit against a foreign musical instrument manufacturer for breach of distribution contract. Successfully defeated a motion to dismiss for lack of jurisdiction and negotiated favorable settlement for client.

We provide strategic advice to our clients with respect to IP and technology matters that arise from licensing, collaboration, research, and development activities. This encompasses issues including the scope of their licenses, revocability and/or transferability of applicable agreements, the effect of corporate structure on such activities, and bankruptcy-related issues affecting their rights under such agreements and succession rights as to such IP.

Scarinci Hollenbeck Technology Law Practice

Our copyright practice encompasses works related to musical compositions, computer software, multimedia, performance arts, written works, paintings, photography, and more. We help our clients avoid unnecessary conflict and maximize the strength and of their creative assets.

Scarinci Hollenbeck’s Copyight Law Practice