LeClair Ryan

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Intellectual Property and Technology

LeClairRyan offers a comprehensive national and international intellectual property and technology practice that enables our clients to protect and maximize the value of their intellectual property rights. Our team of attorneys, patent agents, and Ph.D. technical specialists offer a full range of intellectual property legal services, including:
* Preparing and prosecuting patent applications
* Post-issuance patent practice, including patent interferences, reexaminations, reissues and oppositions, with such proceedings taking place separately, together or in conjunction with litigation
* Inventorship evaluations, opinions and litigation
* Intellectual property counseling, opinions and strategy services
* Litigation of patent, copyright, trademark, trade secret, and licensing and technology contract disputes nationally and internationally
* International patent prosecution and patent enforcement
* Intellectual property audits and due diligence
* Drafting and negotiation of intellectual property licenses and technology agreements, including joint venture and technology transfer agreements
* Trademark clearance, prosecution and licensing
* Copyright registration and counseling
* Media and internet-related advice and counseling, including privacy, immunity, data breaches, web-based agreements, and First Amendment-related advice and litigation
* Electronic health/medical records (EHR/EMR) systems
* Acquisition of information technology and telecommunications products and services
* Licensing of software, cloud computing applications and platforms
* Information technology and telecommunications outsourcing agreements

Our team includes nationally recognized practitioners in a variety of technologies, including biotechnology, plants and botany, pharmaceuticals, chemistry, chemical engineering, electrical engineering, mechanical technologies, computer science and software. We possess a depth of experience in post-issuance practice (interferences, reexaminations, reissues and oppositions); intellectual property and technology licensing; outsourcing contracts; and litigating nationally and internationally, including in the Eastern District of Virginia’s famous “Rocket Docket.”

Our clients include:
* Many of the nation’s leading academic and research institutions
* Large, mid-sized and start-up companies in many technologies including biotechnology, plants and agriculture, pharmaceuticals, software and technology, medical devices and material sciences
* Government contractors
* State and local governments

Our distinctive strengths include:

Electrical, Mechanical, Optical and Computer Science

Our group skillfully handles intellectual property matters pertaining to a range of technologies in the electrical, mechanical, optical and computer science fields. We regularly assist our clients with the strategic procurement and management of their intellectual property assets domestically and internationally.

Representative technologies include:
* Computer software and hardware
* Internet and electronic commerce
* Business methods
* Communications
* Semiconductor technologies
* Electrical
* Electro-mechanical
* Optical
* Solar
* Other mechanical disciplines
* Life Sciences, Biotechnology and Chemistry

Our team of patent attorneys, agents, and technical specialists work across a range of technologies in the areas of life sciences, biotechnology, and chemistry. We believe in using attorneys, agents and technical specialists who possess levels of experience and knowledge that are appropriate to each task or phase of the project at hand. Many members of our team hold doctorate or master’s degrees in their fields.

We regularly assist our clients with the strategic procurement and management of their intellectual property assets domestically and internationally.

Representative technologies in the area of biotechnology include:
* New use therapies
* Vaccine components and their formulations
* Drug delivery formulations
* Recombinant and/or modified nucleic acids, peptide, and polypeptide products for therapeutic and diagnostic use
* Immunotherapeutics
* Nucleic acid amplification processes
* Protein purification processes
* Filtration membranes
* Medical devices
* Diagnostic assays and diagnostic sensor platforms
* Screening assays for molecule identification
* Plant biotechnology
* Plant patents

Representative technologies in the area of chemistry include:
* Pharmaceuticals and medicinal chemistry including new formulations, adjuvants, polymorphs peptidomimetics, and methods of treatment
* Polymer and coating compositions
* Modified nucleic acids for therapeutic and diagnostic use; combinatorial chemistry
* Glasses and glass ceramics
* Photographic chemistry
* Organometallic chemistry including catalysts
* Analytical (instrumental) chemistry
* Thermal management materials
* Nanotechnology, including nanofabrication techniques and the resulting nanoscale products
* Post-Issuance Practice

We represent our clients in many interferences, reexaminations, reissues and oppositions. This work has involved such proceedings individually, together and in conjunction with litigation.

Interference proceedings

Interferences are proceedings unique to U.S. patent law in which issues of who was first to make an invention and validity are resolved. Such disputes occur because the parties were separately engaged in research or were involved in a collaborative research program that became divisive.

Our team possesses vast experience with both types of disputes in the areas of pharmaceuticals, vaccines, nucleic acid arrays, transgenic plants, films, chemistry, filters and devices. Our representation has involved proceedings before the U.S. Patent and Trademark Office, arbitrators and federal courts.

Reexamination proceedings

The U.S. patent system provides for inter partes and ex parte reexamination proceedings. These procedures permit challenges concerning the patentability of U.S. patents before the U.S. Patent and Trademark Office. Both procedures require the patent challenger to file a request for reexamination, which is required to set forth a substantial new question of patentability. Once the request is granted, the requester’s participation is largely concluded in an ex parte proceeding, but continues in an inter partes reexamination.

Our team is well versed in providing guidance to our clients on which of these proceedings to select based on cost, duration, objectives to be achieved, and effect of various estoppels extant in inter partes reexaminations. We also counsel our clients on the merits of whether they should challenge a patent through reexamination or patent litigation.

Reissue proceedings

Reissue proceedings permit U.S. patent holders to correct errors in their patents. Generally, this involves narrowing a patent that is invalid or broadening a patent with claims that do not fully protect an invention. We not only represent clients in such proceedings, but also advise them on how best to use these procedures to maximize the benefit of a reissue application and achieve their strategic objective.

Opposition proceedings

Opposition proceedings do not currently have application in the U.S. patent system, although they are proposed in the pending U.S. Patent Reform legislation. Such proceedings, however, are prevalent in Europe and Australia. We have represented our clients’ interests in conjunction with counsel in those jurisdictions. Further, such opposition proceedings often coincide with interferences and reexaminations in the U.S. We not only represent our clients’ interests in those U.S. proceedings, but coordinate them with oppositions to ensure that consistent positions are taken in all such matters.

Trademarks, Copyrights and Other Intellectual Property

LeClairRyan’s intellectual property attorneys have an unusually strong grasp of the ever evolving and difficult area of trademark and licensing law, representing clients in the protection of their rights in trade names, trademarks, trade dress, good will, domain names, copyrights, trade secrets, manufacturing processes, know-how, and other confidential information. We strive to fashion cost-effective strategies and solutions that are innovative, practical, attuned to our clients’ business objectives (as well as the competitive environment in which they operate), and sensitive to the antitrust, franchise, tax and other issues that affect the handling of intangible assets.

LeClairRyan provides intellectual property counseling and advice to pharmaceutical and biotechnology companies, medical device manufacturers, financial institutions and investors, telecommunications firms, consumer and professional products companies of many types, retail and other service providers, national and international franchisors, distributors, trade associations, educational entities, software and hardware vendors, database service providers, internet service and content providers, e-commerce companies, developers and systems integrators, and other technology service organizations.

Our distinctive strengths include:
* Devising and implementing strategies to develop, market, manage and protect clients’ know-how, patent, copyright, trademark and other intellectual property assets
* Helping clients secure their intellectual property, for uses now and in the future, through agreements with employees, subcontractors, vendors and other business partners
* Conducting intellectual property audits and website and internet practices reviews
* Developing internal intellectual property management programs and procedures
* Copyright and trademark clearance and development
* Registering and protecting copyrights and trademarks in the U.S. and overseas
* Helping clients manage the risk of acquiring and using intellectual property-based assets in their business, for example, in negotiating complex intellectual property purchases and licenses, development agreements, systems integration projects, enterprise systems management, and ASP and outsourcing relationships
* Assisting clients design and implement a wide range of strategies for commercializing their intellectual property, whether through direct development, sales and marketing, strategic alliances and joint ventures, distribution, reseller, VAR, franchise, or licensing and cross-licensing arrangements
* Advertising and labeling review and advice
* Counseling and negotiation in intellectual property disputes
* Licensing of trademarks and copyrights, including software and content, in all media and formats
* Licensing of regulatory approvals, patents and trade secrets
Joint venture arrangements, including financing, risk allocation and intellectual property ownership structure

Intellectual Property and Technology Litigation

Our firm has a large team of experienced and creative intellectual property and technology litigators across our offices. These attorneys have litigated in every major domestic patent litigation venue, the Federal Circuit, the International Trade Commission, the Patent and Trademark Office, the Trademark Trial and Appeal Board, ICANN, international courts, and in national and international arbitrations.

Our intellectual property and technology litigators have worked on a variety of cases, including those involving pharmaceuticals, medical devices, X-ray films, biotechnology products, chemical compounds, recombinant DNA products, electrical products, industrial event monitoring systems, target systems, business operations software, cable television satellite signals, computer systems and information technology contracts.

In patent litigation, for example, our preferred approach is to match experienced intellectual property trial lawyers with knowledgeable patent attorneys and specialists, many of whom hold doctorate or master’s degrees in their fields. We have a deep bench of attorneys who have tried a large number of patent and technology cases to verdict, and have experience both in pursuing infringement claims on behalf of patentees and defending against infringement allegations.

Our litigators are committed to client service, staffing cases leanly and understanding our clients’ businesses and priorities. We welcome the opportunity to work under alternative fee arrangements to help maximize the value of our clients’ intellectual property.

The firm’s litigation focus is national and international in scope, and our attorneys regularly appear in every leading patent litigation venue in the nation. The Eastern District of Virginia (E.D. Va.), however, is one of the most important patent litigation venues because it traditionally boasts the fastest time to trial of any court in the country, a factor that is closely correlated with success for patent plaintiffs. LeClairRyan has an office in the same city as every E.D. Va. division (Alexandria, Norfolk and Richmond). Because patent cases in the Eastern District are randomly assigned, the ability to be strong in every E.D. Va. division is a crucial success factor in patent litigation.

Information Technology and Business Process Outsourcing

Organizations outsource their information technology functions and business processes for various reasons, including:
* Increasing availability of capital. Outsourcing frees up existing resources, allowing faster development of new technologies and greater speed in getting new products and services to market.
* Improving management of human resources. Outsourcing to independent contractors provides access to essential technical and business skills that company employees may not possess.
* Improving the quality of services. A recent survey by the Everest Research Institute found that more than 50 percent of companies surveyed reported productivity improvements from outsourcing.
* Improving bottom line financial performance. The Everest Research Institute reports that the outsourcing of information technology functions and business processes resulted in cost savings of up to 40 percent among companies surveyed.

LeClairRyan represents and advises major corporations, healthcare organizations, financial services firms and government entities in their outsourcing of varied information technology functions and business processes. We combine our expansive knowledge of agreements pertaining to information technology and business processes with the experience of leading outsourcing consultants, providing our clients with cost-effective results.

LeClair Ryan
951 E Byrd St - 8th Floor
Richmond VA 23219
Tel: 804 783-2003
Fax: 804 783-2294

LeClairRyan is an entrepreneurial law firm that provides business counsel and client representation in matters of corporate law and high-stakes litigation.