Related IP Counseling

Key to the protection of any intellectual property is the consideration of who owns the rights, as well as who may later develop rights by the operation of law. These issues most frequently present themselves in an employment situation.

Our lawyers have extensive experience in analyzing complex ownership and licensing issues for intellectual property in the context of employment. We routinely help our clients with employment, outsourcing, and consulting agreements that address these matters.

Our clients receive the strategy and tactical planning necessary to properly execute the required ownership and licensing formalities for patents, trademarks, and copyrights, all of which have different legal standards for determining ownership and transfer of rights. Our team works closely and efficiently with clients, primarily since the failure to be timely in perfecting rights in the name of the desired party can result in irretrievable loss of those rights.

Innovation often involves closely guarded ideas, and most businesses have a significant stake in keeping their secrets safe. Our lawyers have been helping clients commercialize, enforce and protect their trade secrets for more than 60 years.

We recognize that under the right circumstances, trade secret protection can be more potent than patent protection—and in some instances, trade secret protection is the only option. We work with clients to create trade secret protection plans for their businesses, not only to assess their existing confidential and proprietary assets but also to provide an established policy to prevent disclosure of potentially valuable information. The very survival of a company built around trade secrets can hinge on having an effective plan to protect trade secrets, and we provide the critical advice needed to ensure that survival. We have also worked to audit and evaluate existing trade secret protection systems and policies to ensure they are working correctly.

While critical to trade secret protection, appropriate confidentiality protections are also crucial to other forms of intellectual property. Our clients routinely rely on us to prepare and review non-disclosure agreements, confidentiality agreements, and other forms of confidentiality protection.

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Our Professionals

Key to the protection of any intellectual property is the consideration of who owns the rights at issue, as well as who may later develop rights under applicable law. These issues frequently present themselves in employment situations. Our lawyers have substantial experience in analyzing complex intellectual property ownership and licensing issues in the context of employment. We regularly advise our clients with employment, outsourcing and consulting agreements that address these matters. Our clients receive the strategic advice and tactical tools necessary to navigate ownership and licensing formalities for patents, trademarks, and copyrights, each of which is governed by different legal frameworks. We work closely and efficiently with clients, especially because the failure to timely perfect rights in the name of the appropriate party can result in the irretrievable loss of those rights.

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We understand the nuances of crafting agreements and other documents required to commercialize intellectual property. Our lawyers work closely with both our clients’ inventors, in-house counsel, and owners, as well as with our clients’ business or corporate law firms, to create commercial agreements that properly address—based on our clients’ objectives—the intricacies of intellectual property development, licensing, and sale.

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The Technology and IP Transaction Group at Sheridan Ross counsels clients on business and corporate transactions that involve intellectual property and technology.  Our attorneys have a depth of experience representing clients in corporate M&A transactions involving the due diligence, acquisition, transfer, commercialization and/or sale of intellectual property, know-how and trade secrets. Clients rely on our team’s ability to safeguard their intellectual property through investments, corporate structuring and financings, and commercial transactions. Our attorneys have negotiated, managed and structured complex IP transactions such as licensing, technology transfer, joint development and joint venture, research agreements, settlement and non-disclosure agreements. We also handle technology acquisition and divestiture matters, manufacturing and co-promotion agreements, and the creation of IP holding company strategies. We also use our team’s deep experience with and exposure to litigation to help create IP litigation settlements.

 

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