Overview

Mayer Brown has an active Intellectual Property Counseling & Prosecution practice, particularly for obtaining patents, trademarks and copyrights that are essential to protecting valuable business assets. Many of our lawyers have technical degrees in the areas of chemistry, life sciences, mechanical engineering, electrical engineering, and computer science. In fact, many were previously employed as scientists and engineers in academia, government and industry. This wide range of technical backgrounds and hands-on experience enables us to understand the most complex technical issues encountered in intellectual property prosecution.

We provide our intellectual property clients with a comprehensive life cycle approach to their IP portfolio. We integrate our services for the market development, prosecution, and enforcement of trademarks, copyrights and patents with a business eye for competitive needs years into the future. By taking such a complete approach to IP portfolio management, we can begin to protect IP assets from the moment of creation and help clients build a profitable IP portfolio.

We have a true global counseling and prosecution practice. Our large team of IP practitioners is located throughout the United States and in key European business centers, London and Frankfurt. Our recent merger with Johnson Stokes & Master, one of the oldest and largest law firms in Asia, gives us a strong seven-office presence in East Asia. Our global network is further strengthened by relationships with foreign lawyers to assist our clients with protecting their IP assets.

Our lawyers work closely with other firm practice groups to ensure maximum tax advantage, effective licensing protection, and the securitization of revenue streams from intellectual property assets. 

Practice at a Glance

  •  Full-service practice with experience in a wide range of areas, including: Patent Prosecution & Portfolio Management; Trademark Prosecution & Portfolio Management; Trade Secret Protection
  • Our lawyers have technical backgrounds and hands-on experience in a wide range of areas including bio chemistry, life sciences, mechanical engineering, electrical engineering, and computer science
  • Global presence, with practitioners in the United States, Europe and Asia
Highlights
Intellectual Property Practice of the Year 2017

Praxis

Representative Experience 

    Patent Prosecution & Portfolio Management 
    Trademark Prosecution & Portfolio Management 
    Trade Secret Protection

Patent Prosecution & Portfolio Management
Portfolio management is central to our counseling efforts. We implement invention disclosure and patent programs that audit and assess the current and pending core technology of clients and their competitors. As a result, we can protect new technology from the moment of creation, and build a patent portfolio that is profitably leveraged and exploited in the marketplace. For example, we are able to perform complete patent searches for possible infringement conflicts attempting to patent and introduce a new product or product family, offering guidance on how to circumvent any possible conflicts and still gain innovative advantage.

Our portfolio counseling has a strong transactional focus on what is required to generate the market for a patented product. This transactional approach emphasizes helping our clients make the right choice to invest in technology—whether the decision involves backing the product of an individual inventor, providing venture capital funding for a new company, maximizing the return on a licensing transaction, or performing the due diligence necessary to acquire a patent portfolio. In all these important strategic moves, clients rely on our business judgment, our knowledge of technology, and our skill at using patent law to exploit that technology.

With our broad technical experience, we can prepare and prosecute patents across a full spectrum of technologies – pharmaceutical biotechnology, electrical and mechanical products, software, business methods and design inventions. In addition to our experienced patent prosecutors, we work with local patent counsel around the world to make sure our clients' inventions are protected. Our business focus means that clients get patent counsel that is integrated into a value-added strategy to exploit new business opportunities while protecting against infringement.

Back to top

Trademark Prosecution & Portfolio Management
Mayer Brown manages portfolios of thousands of marks, and works with our clients to aggressively police and exploit those marks around the world. We conduct availability searches, draft and prosecute applications through the US Trademark Office and work with foreign counsel to secure trademark protection for our clients throughout the world. We work closely with our clients to make sure their trademark business objectives are met.

We also provide our clients with day-to-day advice regarding potential infringement of their trademarks, as well as possible infringement of others' trademarks. Our capabilities incorporate the use of trademark databases to maintain our clients' portfolios and monitor any infringing uses or attempted registration of our clients' trademarks and domain names. We ensure that clients know exactly where they stand in the process of securing and maintaining federal or state level trademark or service mark registration, and continually assess trademark portfolios so that our clients' portfolios are maintained. Because we conduct ongoing reviews of how marks are used, we often can identify new opportunities for licensing and enforcement.

We currently manage numerous large trademark portfolios for our clients. Our trademark practice has been ranked in the top ten for the number of US trademark applications filed during the past three years. Similarly, our trademark practice in Germany has for decades been recognized as a global leader, and has one of the largest trademark portfolios under administration. Moreover, we have a team of lawyers dedicated to this practice in the United Kingdom. This enables Mayer Brown to strategically manage some of the largest and most recognized brands.

Back to top

Trade Secret Protection
We are effective at drafting agreements to protect trade secrets – either to prevent the disclosure of sensitive information, or to secure client rights to all the information they are entitled to. We regularly handle trade secret claims involving software, technology, media and business trade secrets, as well as related claims based on unfair competition and common law misappropriation. Our counsel is often proactive, as we help companies adopt trade secret protection programs and educate their employees about the importance of ensuring the confidentiality of trade secrets and know-how.

We have the practical experience to prepare agreements that address the needs of any type of client, whether involving confidentiality agreements to protect the proprietary interests of inventors and developers in new products and processes, or nondisclosure agreements governing disclosure of information under terms of secrecy and non-use. Given Mayer Brown's extensive integration of competition and intellectual property law, we also address all antitrust aspects of non-competition agreements, including non-disclosure and confidentiality agreements as part of licensing arrangements. As with all our intellectual property counseling, the goal is to ensure the strategic success of our clients' investment of time and money for intellectual property development.

  • We represented a producer of interactive video content in a trade secret misappropriation involving the alleged theft of its secretive formula for a new and innovative approach to a home shopping television entertainment channel that employs a unique "falling price auction." The case presented novel issues of cross-border intellectual property protection, exploitation, and first-mover advantage. On cross-motions for summary judgment, the Court found in favor of our client on significant aspects of our breach of contract and unfair competition claims.
  • We represent a railway manufacturer in an arbitration against its former licensee arising from the licensee's breach of its license agreement and use of our client's trade secrets to compete against our client in bidding for contracts with various transit authorities, including NYC. We have filed in the SDNY an application for a preliminary injunction and expedited discovery in support the Swedish arbitration.
  • We represent an advertising company in an action against one if its competitors. The trade secret aspect of the case involves claims that our client's former employees left to join the competitor, and delivered our client's trade secrets to their new employer. Our client also contends that the competitor improperly accessed a password protected web site, and thereby obtained our client's trade secrets improperly.