Practice Leader: Gary M. Hoffman
Rapidly advancing technology – coupled with the competitive pressures of the age – increasingly has spawned complex problems for corporations and individuals that rely upon rights in intellectual property.
The developer of a new idea needs prompt and accurate information as to whether the idea can be protected, how it can best be protected, whether it has commercial value, and how to maximize that value. Conversely, corporations and individuals need prompt and reliable information regarding the scope of the purported rights of competitors, whether such rights are valid and enforceable, and strategies in litigation to defend against such rights. Intellectual property has become one of the greatest assets of today’s industries.
Dickstein Shapiro works with companies in developing strategies that capitalize on their intellectual property assets to achieve the clients’ business objectives. The Firm has the experience, skill, and knowledge to solve these and other intellectual property problems successfully for clients striving to succeed in this ever-changing, highly competitive arena.
The Firm was listed as one of the top 25 intellectual property practices in the United States for patent litigation and patent prosecution in a 2008 survey by Managing Intellectual Property magazine. The survey also listed the Firm as one of the top 30 practices for trademark litigation and trademark prosecution. These rankings were based upon five months of research, including interviews with peers and clients. Firms were evaluated on their strength of experience and the depth of ability to serve clients. In 2008, the Firm was also ranked 23rd of 352 patent firms in the “Top Patent Firms” survey published by Intellectual Property Today. The Firm also has appeared in Intellectual Property Today’s “Top Trademark Firms” survey.
Members of the Intellectual Property Practice are recognized leaders in Intellectual Property Law, and they have lectured extensively in the United States and overseas for groups such as the ABA, AIPLA, and PLI. In addition, the Firm’s IP attorneys have published, co-edited, and written chapters in numerous books, such as BNA’s Patent Litigation Strategies and Aspen’s Intellectual Property Opinions, as well as articles on intellectual property issues. The Firm’s IP attorneys prepared the Intellectual Property Primer for the Association of Corporate Counsel, the first edition of which was so well received in 2003 that a second and third edition were released in 2005 and 2008.
Since 1986, Dickstein Shapiro has expanded its Intellectual Property Practice, as well as the Firm’s knowledge in the high technology and consumer product industries, to provide a full range of counseling to clients in the areas of:
Dickstein Shapiro works directly and regularly with clients in the United States and abroad to establish programs based on its clients’ business objectives and goals. Such work includes:
The Firm is engaged in all phases of pursuing, licensing, acquiring, and litigating intellectual property rights and rights in all areas of technology, including electronics, telecommunications equipment, pharmaceuticals, polymers, and other specialty chemicals, computer hardware and software, and biotechnology. Such litigation includes representation before the U.S. courts, the International Trade Commission, and various state courts as well as coordination of litigation in foreign countries.
Attorneys at the Firm have litigated more than 250 patent and trademark actions before the federal courts and the International Trade Commission and have negotiated hundreds of licensing agreements involving patent and trademarks throughout the world, ranging in amounts up to hundreds of millions of dollars. In addition, in 2006, attorneys at the Firm filed more than 1,500 patent applications and 300 trademark applications in the United States.
Dickstein Shapiro has assisted clients in developing intellectual property programs that are indispensable to the realization of primary business objectives and that, at the same time, minimize the risk of litigation.
The Firm has met the needs of companies engaged in research and development, manufacturing, and corporate transactions and has dealt successfully with a broad array of products and technologies. Dickstein Shapiro’s experience in electronics and telecommunications has enabled the Firm to solve a multitude of intellectual property problems in the electronics industries, including the effective presentation of such complex issues to lay juries. Similarly, in the chemical/biotechnology arena, the Firm has successfully litigated patent disputes involving polymers and medical devices and has provided extensive counseling involving pharmaceuticals and other biological and chemical products and processes. Dickstein Shapiro also works with clients in providing patent prosecution and establishing effective trademark programs for the marks used as well as copyright programs for material and information distributed by the companies.
The Firm has represented a variety of companies active in the electronics, semi-conductors, telecommunications, computer hardware and software, chemical, biotechnology, and numerous other industries. Dickstein Shapiro has worked extensively with companies in various industries in connection with the pursuit and defense of patent and trademark infringement claims. The Firm also has worked with defense industry companies on intellectual property matters and on the interplay between government contract requirements and the commercial needs of clients. Dickstein Shapiro’s experience also includes:
Dickstein Shapiro has been at the forefront in providing turnkey patent prosecution, licensing, and litigation support for its clients in the electronic, chemical, and biotechnology patent arenas. In these areas, Firm attorneys’ particular expertise centers on offering clients cost-effective, fixed-fee patent prosecution without a loss in quality or reduced attention by the senior attorneys/partners assigned to the client.
Dickstein Shapiro’s attorneys:
Dickstein Shapiro attorneys have experience in all areas of domestic and foreign trademark practice.
The Firm currently has more than 80 attorneys practicing full-time in its Intellectual Property Practice. The Practice has significant depth in patent and trademark litigation with partners being involved in hundreds of litigations, including numerous jury trials. Within the Practice, more than 60 attorneys have technical degrees, and most are registered patent attorneys. In addition, there are a large number of Dickstein Shapiro attorneys, including many former U.S. Attorneys and assistant U.S. Attorneys, who participate periodically in the Firm’s intellectual property litigation, adding their depth of litigation experience to the practice.
The Intellectual Property Practice, in conjunction with the Corporate & Finance Practice, has extensive experience in the acquisition, transfer, and licensing of intellectual property rights pertaining to biotechnology, pharmaceutical, and other natural sciences, as well as product development and research arrangements. The Firm assists clients in obtaining U.S. and foreign patent protection through sophisticated patent prosecution and licensing strategies designed to maximize the value of patent portfolios. The Firm is regularly called on to provide formal patent opinions with regard to infringement, validity, and enforceability of patents in the areas of biotechnology, pharmaceuticals, and medical devices. In addition, our attorneys regularly conduct intellectual property due diligence in connection with mergers and acquisitions. Firm attorneys advise clients regarding a broad range of natural science-related technologies including vaccines, human and veterinary pharmaceutical products and treatment regimes, diagnostics, transgenic plants, gene therapies, automated nucleotide sequencers, specialty chemicals, polymers, and environment remediation.