Intellectual Property Practice Area
Intellectual Property (IP) assets are among the most important assets on a company’s balance sheet. IP (patents, trademarks, copyrights, trade secrets, and many other varities of assets) includes a variety of business assets. These assets generate future economic benefits, but their value is often underestimated and unprotected.
You may possess some or all of these IP Assets. Let’s protect your IP together.
- Barriers to Your Competitors
This could include brand names and customer lists
Registrable assets such as patents, trademarks, and copyrights
- Legal Rights
Licensing agreements, franchises, and copyrights
Your investments in employee training, supplier relationships, and distribution systems
- Computer software
Developed internally or acquired from the outside
- Confidential Information
Any non-public information you use to compete
Exploit Your IP
The rules pertaining to these legal areas can be difficult to understand. You can take advantage of your IP using simple, cost-effective methods. Sometimes, it is just sitting down and looking at your operations, industry, and competitors. After doing this, you can take better advantage of the laws and use your IP to improve your margins and profitability.
How We Can Help You – Legal Solutions
Your rights can reside in many diverse forms and each is subject to protection using different methods. We can help you decide how to fortify your valuable IP position in a financially effective way.
Our attorneys have counseled companies across a wide range of IP issues. We would like to help you take the greatest advantage of the laws to create the best profitability for your company.
Available Legal Help
- Audit your IP portfolio and processes
- Federally register trademarks
- Create procedures to protect trade secrets
- Draft Licensing Agreements
- Design strategies to commercialize your IP portfolio
- Develop a method to identify intellectual property
- Assess and rank your IP
- Build an invention reward system
- Assure the correct use of IP-related clauses in form contracts
- Create a searchable IP inventory
- Construct an Invention Disclosure Process
- Devise an overall system to protect IP
- Create clean room practices
- Establish entrance and exit interview processes to protect IP
- Create IP questionnaires to identify IP
- Review product technology for IP protection
- Analyze litigation alternatives in the event of infringement
- Create an IP Use Guide
Resources for Intellectual Property Law Services
A comprehensive description of the many complex Intellectual Property projects we have undertaken around the country and around the world are described in the document Intellectual Property Accomplishments.
A copy of our Intellectual Property Services Offering can be found in .pdf format for download.
We also offer E-Commerce Services; a complete description can be found in our services offering by clicking on the link above.
Intellectual Property Accomplishments
Click here to download a detailed PDF regarding IP accomplishments.
Conducted IP Review.
This company needed to ensure that its tens of thousands of hours of development time was appropriately resulting in securing legal rights. Focused this IP Review on patents (computer software and business methods) and trade secrets. The first step was to review their IP portfolio and their IP-related guidelines. The project had three key deliverables. The first was to ensure that the company has identified and protected all IP that resulted from its development efforts. The second was to create systems and procedures that will maximize and protect the IP developed in the future. The third was to educate all company IP users about the new guidelines.
Drafted all the documents and executed the strategy.
Created IP Awareness System for IP Users.
The company had few proactive processes and information to manage their IP. Created a system and written information to disseminate to all IP users in the company, from engineers to marketers to General Managers. Then presented the information in a lively seminar to three different business segments. This well-received initiative reduced infringements and improved the value of the IP created by the company, thereby increasing its profitability.
Topics included trademarks, patents, licensing, trade dress, trade secrets, TV and print comparative claim and testing legal standards, new ideas submissions system, the Road to Registration, contracts, litigation, counterfeit goods, attorney-client privilege, costs of IP registration, confidentiality, copyright, managing documents and international aspects.
Assessed and Pruned a 3,000-Trademark Global Portfolio.
Reviewed this company’s worldwide trademark portfolio in approximately 35 countries. Needed to compare the actual use of the products with the registered trademarks. Reviewed the utility of the trademarks and recommended go-forward strategy for products where the marketplace opportunities justified continued expenditures.
Enforced Software Rights.
Infringers illegally obtained the company’s nonassignable software that was embedded in equipment. Reviewed the conflicting license language in several versions of license agreements. Developed a uniform settlement strategy that included future licensing opportunities with software maintenance. Developed and drafted an amnesty program for the industry. Protected the future revenue stream for this product.
Drafted Patent and Know-How License.
Negotiated and drafted the HAMMER® tennis racquet patent and know-how license. Thereafter, managed the legal team that enforced the patent worldwide in litigation. This technology, and the legal success in preventing low price, infringing uses, increased the Company’s market share from 15% to 50%. In flat growth market, these new sales came at the expense of our competitors, substantially weakening the previous market leader. Further, this allowed the company to leapfrog into the #1 market share.
License Terminated Successfully.
The company’s exclusive apparel producer/ licensee announced a premature termination of its license. Aggressively negotiated termination package and simultaneously participated on strategic team to swiftly replace licensee and reconfigure overall license program. Negotiated $450,000 minimum royalty payment (2 years’ worth of minimum royalties) and developed creative contract provisions to protect the brand and prevent unauthorized distribution during the sell-off. Using record speed, replaced licensee and prevented product delivery interruption for next selling season. Team modified strategic trademark licensing strategy (products and channels) and concurrently renegotiated separate apparel license.
International IP Rights Enforced.
Prosecuted worldwide trademark, patent and counterfeit goods infringements. Worked with numerous national and municipal governmental bodies, distributors, manufacturers, subsidiaries, agents, and local attorneys to halt such activities. In one instance, we removed infringing products from seven trade show booths in Munich, Germany. Initiated offensive actions against infringers in these regions:
• Europe • South America
• Asia • Eastern Europe
• Japan • Pacific Rim
Defended Print and TV Advertisements.
Reviewed product promotion and advertising claims (client’s and competitors’). Proactively involved in drafting product-testing protocols to substantiate product claims. Interpreted network TV product claim guidelines and negotiated clearances with the broadcast networks.
Obtained Insurance for Defensive Trade Dress Infringement.
Client was sued for trade dress infringement. Researched advertising injury coverage law and negotiated with carriers to obtain insurance coverage for federal infringement suit claims. Eliminated financial risk for infringement claim by competitor. Acquired Technology Which Aided New Product Introduction. Market intelligence showed that Ektelon would reconfigure its sales force and change its operational positioning. Client company was previously prevented by a patent from selling racquetball racquets. Negotiated and obtained patent rights at critical market moment to facilitate effective competitor entry into racquetball market. Thereafter, company seized immediate, significant market share. Completed negotiations in three weeks.
Taiwan Criminal Copying Charges Against U.S. Executives.
The Taiwanese criminal prosecuting authorities sued our executives in an apparently politically motivated criminal case of patent copying (infringement). The case prevented us from doing business in Taiwan where we manufactured much of our product. Defended these executives and was closely involved in this critical case, at all stages. Created strategy where we tied the criminal case to the resolution of a separate U.S. civil patent infringement case against a leading, government-connected Taiwanese industry vendor. Obtained dismissal of the case; there were no negative results.
Jury Verdict Stops Competitors’ Infringements.
Responsible for preventing infringing of the cuttingedge ULTRA® golf ball dimple pattern patent. This new technology enables the golf ball to gain marked distance over a golf ball without this dimple technology. A U.S. and Japanese competitor – in a market dominated by only four competitors- infringed this patent. It was important to prevent the market entry of a new competitor and to prevent them from establishing credibility in the market. Aggressively litigated patent infringement against these two competitors in South Carolina. Aggressive case management resulted in a jury verdict for the client, with a willful infringement finding, in 13 months and an expedited Permanent Injunction against these two key competitors.
Drafted Many IP and Trade Secret Protection Programs.
These programs catalogue and analyze the intellectual property owned by the company. Then, created rules for internal managers so that the managers use IP correctly. Wrote the materials in practical terms so that the rules are useable by all levels of management. By doing this, the company maximizes the chances it does not inadvertently allow customers and competitors access to their confidential information.
Created Patents Database.
Took the entire patent portfolio of client and some competitors and put the portfolio into an electronic database accessible through the company intranet. After this, the clients could view the prior art references, drawings, and claims of the intranet from anywhere. This significantly increased information flow, creating faster product develop decisions. At the time, this was a state-of-the-art capability (1995).
Averted U.S. Customs Quarantine.
Participated on team that negotiated an amicable resolution with U.S. Customs to prevent threatened golf club component import quarantine due to country of origin
marking requirements issues. Developed creative solution in two weeks that prevented interruption of product delivery.
Negotiated and Implemented Patent License with Italian Company.
Company needed this technology to improve the performance of its shoes. Negotiated the license to acquire the technology. Added protection clauses so that client would have flexibility if the technology did not demonstrably improve worldwide sales. Managed compliance with contract.
Conducted Worldwide Patent Prior Art
Interviewed witnesses and obtained information to invalidate competitor’s patent.
• South Africa
• Conducted worldwide patent and design review for products. After studied available opportunities, reduced costs to maximize product ROI.
Enforced Covenant Not To Compete.
Successfully enforced Wilson’s Covenant Not to Compete and Confidentiality Agreement against a senior departing manager who possessed critical technology information and a major competitor (Titleist). Obtained a temporary restraining order (TRO) in eight days, preventing the employee’s move to Titleist absent compliance with our Agreement. The Court issued a Permanent Injunction and Judgment one month later. We prevented significant losses and transfer of critical golf ball technology trade secret.
Worldwide Patent and Intellectual Property Protection Study.
Recommended that global branded goods company client assess what patent protection laws existed around the world to determine if we had the right design and patent protection for our products. Conducted worldwide study of industrial design and patent opportunities. Studied legal scope of protection, procedures, and costs in forty (40) current and proposed worldwide markets. Study revealed opportunities to improve protection at less cost. Implemented a policy to better manage decisions on which countries in which to obtain protection. Improved IP asset cost-effectiveness structure and ROI.
Worldwide Trade Dress Infringement Enforcement.
Identified approximately 60 worldwide trade dress infringers for a key product. Attended industry trade convention and gathered samples of each infringing product and contact information for each infringer. Catalogued the infringers and systematically pursued each infringer. Achieved 100 percent compliance over 6 months.
Golf Industry Counterfeit Team.
Participated in unprecedented cooperative golf industry-wide anticounterfeit effort. Persuaded U.S. Department of Customs to increase port of entry scrutiny of imported golf clubs on basis of trademark and trade dress violations. Effort was successful and resulted in government seizures of illegal foreign-produced golf clubs worth millions of dollars.
Terminated Intellectual Property Criminal Theft.
Developed sting operation and halted theft of critical golf ball mold-making technology. Led team that created and executed strategy. We confronted conspirators (competitor and company employees), discharged the employees (in Tennessee), and presented RICO suit to competitor (in Florida)-all on same day. Resulted in immediate cessation of activity and recovery of materials.
Multi-Licensee Trademark Program.
Identified licensing opportunities for underutilized secondary trademark. Created information package supporting trademark validity and led negotiations that put three licenses in place. Realized hidden trademark value and created significant royalty income to MacGregor Golf Company.
International Trademark License Analysis.
A licensee claimed it had royalty-free use of a trademark in Malaysia based on a related Japanese license. We assessed the implied license laws in the U.S., Japan, and Malaysia. Mapped out prosecution alternatives and strategic approach.
Charlie Brown was an absolute pleasure to work with!
Being an Artist & extremely creative, I struggled to comprehend how to best protect my ideas and my company. Charlie explained everything in great detail so I could understand the legal process of protecting the exclusive ownership of my idea and IP while I was developing it with a group of potential partners. His obvious knowledge and experience in this area offered great solutions and by the end of our first meeting, I knew I found the right person for the job!
I have had some experience with Attorneys, who generally speak in “legal code” which makes it difficult to understand the full picture. Charlie was crystal clear on every phase of the project, without intimidating me. I was able to ask many questions and attain all the information I needed to make the decision to move forward.
Charlie was very prompt to return calls and emails. He was extremely respectful of my legal budget & very clear about his fees. Charlie was always positive & never seemed to have a bad day!!
Catherine P, Owner Design Firm
As a consultant, it was important to personally understand the trademark process and objectives. Charlie thoroughly walked me through the procedures, answered all of my questions in understandable terms, and kept me apprised of developments culminating in the award of the trademark. I recommend Charlie as an outstanding resource for trademark legal services. I believe we have received very thorough advice. Thanks again.
Scott D., Energy Consultant
As President of GreenCycle of Indiana and GreenCycle of the Northeast I have been working with Charlie Brown of CorpLaw Associates since 2004. The relationship has been an excellent one for the following reasons.
1. Trademark Application and Protection
Charlie has guided the company through the process of protecting its trademarks as well as enhancing the areas of their uses on an on-going basis. This process has included enlarging the trademark portfolio to include more areas that are consistent with the business as well as enforcing our trademarks against infringers. Charlie has been successful in all cases of forcing the infringing company to cease using our trademark GreenCycle.
2. Protection of Legal Interests
Charlie has the best interest of GreenCycle in mind at all times. He pursued the acquisition of GreenCycle.com through a WIPO proceeding in Geneva, Switzerland which involved dealing with a company located in California that had executive officers located in China. Charlie was able to obtain GreenCycle.com with minimal expense to our company because of his expertise in the area while dealing outside the United States.
3. Intellectual Property Support
Charlie is well informed on the uses of the internet and has provided excellent counsel on the best course of to follow to secure the appropriate domain names for the GreenCycle companies. He has also guided GreenCycle toward appropriate vendors to provide additional help.
Charlie responds quickly and proactively to GreenCycle requests. He is very knowledgeable in the field of trademarks and I rely on his expertise to protect the GreenCycle trademark portfolio. He and I have recently been working on a trademark Term Sheet and Trademark Use Guide which will make clear the proper uses of the trademark.
Caroline R., President Green Energy Company
CorpLaw Associates provided outstanding service drafting the licensing agreement that will serve as a basis for an extensive network of automated, demand-responsive, cost-effective light-rail transit within the State of Illinois. Intellectual property is the essential foundation for any enterprise debuting new technology, so protection of the IP is critical to safeguard its most important asset.
CorpLaw took into account the complexities of an agreement necessarily conformed to California choice-of-law where the technology was incepted to build in the necessary protections that would be respected in Illinois. The attorney was sensitive to my relationship with the Licensor and gave wise counsel for no additional charge at how to avoid conflict-of-interest during the negotiations and afterwards.
I never felt taken advantage of as a layperson dealing with an attorney; To the contrary I felt CorpLaw went above and beyond the agreed services under its fixed-cost project legal fee. The attorney seemed genuinely interested in CyberTran and performed the first and most important step towards bringing this new system to the Land of Lincoln.
Bill S., Developer Patented Transportation Technology
Charlie Brown is an invaluable resource to my firm. He has helped me identify key areas of intellectual property protection that my previous large downtown firm had not addressed. He spent real time with me, walking through the key issues and clearly explaining my options. Through his plain-speaking, highly personalized approach, I understood the impact each option would have on my business and my budget. This was an outstanding experience! My intellectual property is vital to my firm. Through Charlie, after many years, I’m getting the quality advice I need and the personal attention I prefer.
–Andrew J. McCausland, CFP®, CLU, ChFC
“Charlie Brown is our attorney and trusted adviser. His firm CorpLaw Associates LLC attends to our overall legal issues and Charlie’s special expertise is Intellectual Property.
As a highly experienced attorney, Charlie is a true specialist in IP Law. This area is critical to the success of my company so we greatly appreciate his expertise in this area. For example, he has suggested ideas to us that will ensure that our IP portfolio is well protected. We can count on him to support us in the many diverse areas of IP.
As a sporting goods company, we really appreciate Charlie’s in-depth knowledge of the sporting goods industry. He has a business background, which has taught him the important lessons of business operations. Combining his high quality legal expertise and his interest in knowing our business goals absolutely results in better outcomes for us.
Charlie’s service ethic is extraordinary. His work is always on-budget and on-time, with a smile. In addition, he truly cares about me as a business owner, which can be a rare trait among service providers. In my opinion, he is smart, intuitive and practical.”
– Robert B., CEO International Sporting Goods Company
“You should have been their lawyer the first time [and your client would have achieved better results].”
– Opposing IP Counsel at large national law firm