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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
Philip C. Berg
Neil P. Calvin
Gerardo H. Gonzalez
Albert S. Michalik

Dawn N. Phillips
Richard H. Porter
Brenda J. Robinson
Rasheed A. Simmonds
Vincent Vigil

 
 

Representative Experience

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

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

  • Patent work for a major electronic computer manufacturer.

  • Extensive patent and trademark litigation throughout the United States, including but not limited to Wisconsin, Illinois, Utah, California, and Delaware.

  • 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.

  • Represented a cruise line against a vehicle manufacturer in a trademark dispute, relating to the likelihood of confusion and unfair competition.

  • Represented a manufacturer of a brick-paving product in a trademark dispute.

  • Represented an Australian based video company in a software and hardware patent dispute.

  • Represented a Fortune 25 company in a patent case relative to electrical steam turbines.

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

  • Provided on-site contract negotiation, drafting and reviewing at major Milwaukee Corporation regarding service agreements, trademark license agreements, consulting agreements, and dealer contracts.

  • Represented Fortune 250 Company providing defense against software and hardware vendor providing holistic computer services.

  • 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.
 
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