Ronald S. Bienstock
David A. Einhorn
Richard B. Klar
John C. Laurence
Jill A. Michael
William R. Samuels
We assist clients in securing and managing patent rights for their inventions and designs both domestically and internationally, in collaboration with law firm associates. We provide clients with patent availability searches and “freedom to operate” reports. We also file and fully prosecute non-provisional and provisional patents with the United States Patent and Trademark Office. We also identify opportunities for our clients to add to their intellectual property portfolio through active participation in their creative processes, and assist clients in addressing third-party patent issues that may pose obstacles to commercialization activities, through clearance studies and associated counseling and opinion work.
The firm assists clients in defending and asserting patents, in addition to drafting and prosecuting patents. The dual nature of the firm's practice ensures that the attorneys draft patent applications with potential litigation consequences and pitfalls in mind. The firm represents clients in industries such as software, battery and energy technology, nutritional supplements, mechanical devices, and electronics. We have represented both plaintiffs and defendants in trademark, copyright and patent infringement actions, trade secret disputes, contract breaches and general business litigation clients in Federal and State Courts across the country, as well as in the Trademark Trial and Appeal Board and Patent Trial and Appeal Board. We have obtained nationally recognized precedential verdicts and decisions for our clients, as well as achieved favorable settlements.
Litigation — Mediation — Negotiation
Many cases of intellectual property infringement require the holders of intellectual property rights to assert those rights.
IP Enforcement And Defense Considerations
When clients approach the firm due to an alleged infringement of their IP rights, a review of the case, the actual financial costs of the infringement, and the success of launching a challenge are all weighed and considered in order to identify an optimum IP enforcement strategy. In advising clients about the best IP enforcement and defense strategies, Scarinci Hollenbeck considers many factors, including:
- Monetary damages
- Valuation of the market
- Costs of litigation
- Need for extensive discovery
- Need for expert witnesses
- Exposure & Risk
- Business Concerns
The use of similar trademarks or IP owned by a party which leads to confusion can be grounds for infringement. The production of derivative works in copyright cases can constitute infringement. Regardless of how an IP enforcement or defense case arises, the firm tailors the enforcement strategy for each client's specific case.
Since IP enforcement is governed by national and international tribunals and agreements, the firm's IP colleagues around the world assert client interests in all relevant markets. Investing in resources to serve clients' needs, the firm receives around-the-clock information about clients' trademark, copyright, and patent rights across the globe.
Drafting Intellectual Property License Agreements
Businesses in many sectors depend on the ability to grant or receive licenses in the course of their business. We represents clients seeking to obtain or grant licenses in New York City, across the United States, and around the world. The firm's team negotiates and tailors agreements in accordance with clients' needs, including software development agreements, patent, trademark, and copyright licenses, confidentiality agreements, software licensing agreements, and distribution agreements.
In all of these cases, the objective is to ensure that the intellectual property rights of the original owners are protected while giving licensees adequate use of the rights. Additionally, the global nature of the firm's IP practice ensures that clients interested in dividing license grants on the basis of geographic territories can leverage the firm's network of IP attorneys around the world. The firm assists clients in granting or obtaining licenses for:
- Trade secrets
Domain Names and the Internet
The importance of domain names in representing brands and companies has led to an emerging intellectual property practice area specific to securing and asserting clients' intellectual property rights which intersect with domain names, copyrights, the Internet, and more. Scarinci Hollenbeck assists clients in New York City, throughout the U.S., and around the world to claim, purchase, and negotiate the transfer of domain names which correspond to or are related to services, trademarks, and copyrights owned by clients.
Strategic Domain Name Representation
There are several resolutions to client issues involving domain names. For instance, Scarinci Hollenbeck assists clients in purchasing domain names from domain owners. When domain owners cannot be identified or refuse the sale, the firm pursues arbitration in appropriate tribunals. The use of tribunals and arbitration is weighed against the cost of the process and the likelihood of success in forcing a transfer of the domain name.
Defining Your Business On The Internet
We help our clients protect information that is difficult to protect. 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. We have helped clients seeking to protect trade secrets, advising on legal mechanisms to protect such information.
Trade secrets can broadly be defined as information that is known only to a business that provides value to the enterprise. Additionally, trade secrets which become public knowledge lose their protected status. As such, trade secrets require extensive IP experience and discipline to minimize potential exposure risks.
Drafting Robust Legal Documents To Protect Trade Secrets
Clients need systems and plans for sharing trade secrets with employees and contractors without compromising their legal protections. By drafting robust non-compete, nondisclosure, confidentiality, and employee agreements, Scarinci Hollenbeck is able to ensure that clients can continue to do business without compromising the company's trade secret protections.
Unfair competition is deceptive or wrongful business conduct that causes an economic injury to another business. The firm's IP lawyers have extensive experience addressing concerns of clients facing unfair competition from businesses operating under deceptive terms.
The firm provides patent opinions and evaluations to clients. When a client intends to pursue a new patent, seeks to protect an existing patent, or defend against claims of infringement, the attorneys at the firm conduct a comprehensive review of the patent and the overall market. We assess five factors, including:
- Claim construction
- Claim scope
- Infringement defenses