Patents

Ulmer & Berne LLP's intellectual property (IP) and technology practice assists and advises clients in connection with patent preparation, prosecution and litigation matters. We count among our group attorneys who are registered to practice before the United States Patent and Trademark Office with training in the electrical, chemical and mechanical arts. Members of our group have substantial experience in:

  • Preparing and prosecuting patent applications with respect to software, business methods and processes;
  • Preparing and prosecuting U.S. and international patent applications in the electrical, chemical and mechanical arts;
  • Managing foreign agents in connection with preparation and prosecution of patent applications filed directly in foreign countries and under the Patent Cooperation Treaty (PCT);
  • Handling extensive due diligence investigations with regard to patent assertions;
  • Drafting patent-related legal opinions, including patentability, non-infringement, invalidity and freedom-to-use options;
  • Structuring and managing invention identification and protection programs;
  • Counseling clients with respect to patent portfolio development and management and related research and development activities;
  • Structuring and documenting transactions for the commercialization of patents and related assets and rights; and
  • Asserting patents and related assets and rights, including the support of patent related litigation matters.

Members of the IP and technology practice have advanced degrees or education in various scientific disciplines including computer science, chemistry, industrial engineering, electrical engineering, biology and pharmacology.  Some have served as in-house counsel with leading companies that operate in the software, semiconductor, medical imaging, health care, pharmaceutical and industrial and consumer chemical and polymer industries.

Attorneys
Bradley D. Beck
Charles A. Crehore
Gordon D. Kinder
Clayton L. Kuhnell
Lisa Marlo Miller
Eric M. Robbins
Kari C. Samuels
Jeffrey R. Schaefer
Wayne M. Serra
Michael D. Stovsky
Seth A. Voit
Elizabeth M. Widman

 

Clients

 

Representative Experience

Representing an electronic stun gun manufacturer in trademark prosecution and application matters. 

Representing a Cleveland-based greeting card manufacturer in intellectual property matters and technology contracts related to the divestiture of one of its divisions.

Representing a Cleveland-based global adhesives manufacturer in the negotiation of a software license dispute. 

Representing one of the leading international manufacturers of tires with trademarks, copyright and technology-related matters.

Representing several Cleveland-based companies, privately held and publicly traded, in connection with software licensing, ERP implementation and other technology transfers.

Representing a Cleveland-based provider of Voice Over IP services as general outside corporate counsel, technology counsel and intellectual property counsel.

Representing a Cleveland-based developer of spinal implants as general outside counsel and technology counsel.

Representing a New Jersey-based privately held dietary-supplement manufacturer and marketer on intellectual property and general corporate matters. 

Representing a Tennessee distributor of medical supplies on intellectual property and general corporate matters. 

Representing a Cleveland-based teaching hospital system in the negotiation of technology contracts. 

Representing an Ohio holding company in a source code escrow transaction.

Representing a local community college in the negotiation and preparation of system development and system maintenance and technical support agreements in connection with a new wireless employee work order system being implemented at the college. 

Representing an Ohio limited liability company in numerous intellectual property matters including: 

  • Advising on and negotiating several technology and data licensing agreements and joint marketing agreements.
  • Negotiating a license agreement with an international sourcing company. 
  • Advising on a teaming agreement and joint venture with a software developer and designer. 
  • Negotiating a licensing/consulting agreement with a vision care, pharmaceutical and surgical manufacturer and distributor.
  • Negotiating a consulting agreement with a home improvement warehouse retailer.  
  • Negotiating a joint venture with an international provider of information management solutions. 

Representing a rapidly growing international emerging pharmaceutical company in a $150 million license agreement for a new attention deficit disorder drug.  
      
Representing a bio-technology company in negotiating a manufacturing license agreement to produce a new FDA-approved product for wound healing. 
   

 

Related Practice Areas

Litigation
Intellectual Property

Business
Intellectual Property & Technology
International
Mergers & Acquisitions

Technology
eBusiness
Intellectual Property/Licensing
Intellectual Property/Litigation
Technology Transactions
Trademarks/Copyrights

Life Science
Biomed/Biotechnology
Intellectual Property/Licensing
Pharmaceutical, Medical Device & Mass Tort Litigation
Risk Management

 

Case Studies

 

Publications

 

News