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Intellectual Property Department

 
The Gonzalez Saggio & Harlan Intellectual Property Group brings together a team of attorneys with diverse technical backgrounds and legal services.

The Group understands challenges that businesses experience and provides sensible advice designed for this rapidly evolving technological and legal landscape. By using an interdisciplinary approach, our attorneys are able to offer comprehensive solutions that transform great ideas into protected, productive assets. Our clients range from small software startups to large, established companies seeking to develop new technologies. We understand that each client has unique needs, and we tailor our services to meet those needs efficiently.

The Intellectual Property Group's practice includes experience in areas of intellectual property law that include patents, trademarks, copyrights, licensing, litigation, trade dress, domain names, proprietary information and trade secrets, data security and privacy, due diligence, unfair trade practices, unfair competition, franchising matters, and E-Commerce and Internet law.


Services Include:

Patents: Preparation and prosecution of patent applications before the U.S. Patent and Trademark Office. Aggressive protection and enforcement of patents. Provide counsel in both offensive and defensive patent strategies.

Trademarks, Trade Dress, and Domain Names: Federal, state, and foreign trademark registrations. Strategic selection, management, and enforcement of rights in marks.

Copyrights: Registration and protection of copyrighted materials, including resolution of issues arising from works created by employees and consultants.

Proprietary Information and Trade Secrets: Development of proprietary information and trade secret protection programs. Advise clients regarding sensitive data security, data privacy, and breach recovery issues. Draft and review privacy policies, address security risks, and ensure compliance of applicable privacy laws and regulations.

Due Diligence: Conduct intellectual property portfolio audits and due diligence reviews in support of corporate transactions, such as mergers, acquisitions, and private offerings of equity and debt securities.

Licensing and Technology: Structure, negotiate, and draft a variety of licenses for patents, copyright, trademark, technology, and trade secrets, as well as other technology-related transactions.

Litigation: Represent clients in intellectual property lawsuits, including patent, copyright, and trademark infringement and other disputes involving intellectual property and unfair competition.

   
Listing of department attorneys

Neifor B. Acosta
Neil P. Calvin
Sarah B. Foley
Jonathan D. Goins
Rohan K. Gupta
Maria Estes Hall

Albert S. Michalik
Peggy A. Miller
Dawn N. Phillips
Richard H. Porter
Vincent Vigil

 
Patent Agent  
Jack E. Bradley    
 
 
Representative Experience
 
  • Prepare patent applications, patent prosecution, and licensing agreements for the world's largest software developer.

  • Experience handling patent preparation, patent counseling preparation, and prosecution for a Fortune 100 data communications provider.

  • Diverse client counseling and patent/IP licensing practice, including complex transactions involving open source software, outbound patent licenses, cross licenses, OEM software licensing, litigation settlements, acquisitions, and joint development agreements.

  • Patent preparation work for two of the world's leading consumer electronics makers.

  • Provide a Fortune 500 vehicle manufacturer with on-site contract negotiation, drafting and reviewing regarding service agreements, trademark license agreements, consulting agreements, and dealer contracts.

  • Represented clients before the Trademark Trial and Appeals Board regarding opposition of trademark, application registration applications.

  • Successfully represented clients in reexamination proceedings, interference proceedings, and appeals before the Board of Patent Appeals and Interferences.

  • Represent world's largest software company with various open source software issues relating to licensing open source software, acquisitions of companies, and product lines, as well as product development and integration of open source software.

  • Provided advice and counsel regarding multi-million dollar software and technology licensing agreements for asset acquisition, including advice regarding risks and obligations related to ownership, indemnification, assignment, change of control, IP infringement, warranty, and limitation of liability provisions.

  • Provided advice and counsel regarding multi-million dollar software and technology licensing agreements, as well as consulting agreements, in connection with an asset acquisition for a global management consulting and technology services organization.

  • Negotiated, drafted, and review of multi-million dollar marketing, licensing, and advertising contracts/agreements for a major company.

  • Experienced with shared patent rights between corporations and other joint ventures.
 
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