What We Do

Representative Experience

• Developed and executed intellectual property (IP) protection strategies for web-based and cloud-based software platforms using utility patents, design patents, copyrights, trademarks, and trade secrets.
• Counseled multinational high-tech corporations on domestic and foreign patent prosecution strategies for patent applications directed to various computer software and hardware innovations.
• Drafted and facilitated ongoing prosecution of patent applications for innovations in a broad range of technologies including computer systems, software, networking, telecommunications, mobile and cloud computing, E-Commerce, industrial automation systems, gaming, financial services, Software as a Service (SaaS) technologies, online real estate transactions, and 3D printing.
• Negotiated technology agreements on behalf of public and private companies, including cloud agreements, such as SaaS and Infrastructure as a Service (IaaS), software development agreements, data outsourcing agreements, colocation agreements, software licensing agreements, including Enterprise Resource Planning (ERP) software, professional services agreements for the implementation of technology solutions on behalf of customers and vendors, distribution agreements.
• Setup and implementation of software source code escrow.
• Managed foreign agents in connection with preparation and prosecution of computer-based patent applications filed directly in various foreign jurisdictions or through the Patent Cooperation Treaty unified procedure.
• Performed patentability and clearance studies for various computer-based innovations.
• Conducted IP mining sessions for both startup and publicly-traded companies to identify innovative aspects of computer-based products and services for which patent protection may be desirable.
• Assisted inventors with completing invention disclosure forms to document new computer-based innovations.
• Used the prioritized examination track offered by the U.S. Patent and Trademark Office to obtain issued software patents in less than six months from filing date.
• Performed invention mining meetings with software and product teams to identify patentable concepts and determine IP protection strategies.
• Defended numerous accused infringers of software-based patents, including claims related to automation software in video games, claims related to software forensics technologies, and claims related to “autoplay” software technology.
• Evaluated numerous software-based patents to perform freedom to operate assessment.
• Worked with software development teams throughout the development of E-Commerce software product to assess patent infringement risk and provide alternative design approaches.
• Registered numerous copyrights with the U.S. Copyright Office for source code.
• Represented copyright owner against accused infringers of Internet/SaaS software.
• Represented clients in trademark matters for software systems including filing trademark applications, entering into trademark license agreements, and review of potential trademark infringement issues.
• Defended copyright infringement allegations resulting from license terms relative to corporate restructuring.
• Negotiated earlier termination and release of maintenance and services agreements with application program interface (API) vendor.
• Represented cloud-service provider in contract negotiations for the use of its manufacturing SaaS solution.