Intellectual Property & Technology

Ulmer & Berne’s intellectual property (IP) and technology practice uses the knowledge and skill of lawyers experienced in the areas of patent, copyright and trademark law; the protection and enforcement of trade secret rights; and the consummation of acquisitions, divestitures and licensing transactions dealing with technology assets to assist our clients to achieve their business goals.  Whether we represent technology-based companies whose interaction with the public is primarily Internet-based or traditional “bricks-and-mortar” clients, we provide value by working closely with our clients to understand their businesses and the issues they face. We establish, preserve, defend and commercialize IP rights and technology assets.

Members of the IP and technology practice serve clients of the Firm in diverse areas of IP and technology law, including:

• Patent, trademark, copyright and trade secret issues;
• Internet and e-commerce;
• Licensing;
• Technology transactions and transfers; and
• Litigation

We work extensively with companies across a wide variety of industries, including:

• Computer software and hardware (including ERP and CRM implementations);
• Telecommunications, including Voice over Internet Protocol (VoIP);
• Semiconductors and visual displays; 
• Internet and e-commerce (including web development, hosting and ASP);
• Multimedia and creative works;
• Pharmaceuticals and life sciences;
• Polymers and specialty chemicals;
• Biotechnology; and
• Publishing.

The IP and technology practice addresses the needs of our clients by:

• Identifying and providing counsel with respect to the risks and rewards of IP prosecution and protection strategies;
• Developing tailored strategies for the creation and enforcement of IP and IP rights;
• Preparing, filing and prosecuting patent, trademark and copyright applications with the U.S. Patent and Trademark Office, the U.S. Copyright Office and applicable state and foreign patent, copyright and trademark authorities;
• Resolving IP-related disputes, including Internet domain name disputes;
• Structuring businesses and joint ventures which commercialize or exploit technology-based products or assets;
• Structuring, negotiating, documenting and closing sophisticated technology-related license, lease, technology transfer, acquisition and divestiture transactions involving software, hardware, chemical, biotechnology and life sciences assets and businesses;
• Establishing and providing counsel with respect to the myriad of legal issues related to the Internet and e-commerce, including confidentiality and privacy related legal issues; and 
• Assisting the Firm’s business and litigation practice groups in connection with due diligence reviews, transaction financing involving the exploitation and commercialization of IP and technology assets, the consummation of merger and acquisition deals involving IP and technology issues, the structure of joint ventures and strategic alliances involving IP-based and technology-based businesses or assets and litigation strategies involving the protection of IP assets and rights.

Our IP and technology practice attorneys are able to serve our clients’ needs effectively because we understand our clients’ businesses and concerns about cost effective and efficient representation.  Practice members include:

• A former Senior Intellectual Property Counsel for Koninklijke Philips Electronics, N.V.'s Medical Systems division;
• The former subsidiary general counsel, information technology counsel, trademark/copyright counsel and chief regulatory affairs counsel of The Lubrizol Corp; and 
• The former IP and transactional counsel of Bristol-Myers Squibb Corp.