Counseling

A strategic appreciation of intellectual property’s potential can be fundamental to the success of an enterprise. Having a comprehensive plan to exploit this potential — entering new markets and developing alternative forms and functionality — can add to a company's bottom line significantly and quickly.

Hamilton Brook Smith Reynolds designs strategies to protect intellectual property by taking into account not only the nature of the underlying technology, but also the legal considerations and business objectives of the client. The goals, finances, and nature of the client, as well as its market and competitors, are important considerations.

Our services in this area include:

  • Auditing intellectual property rights as well as corporate policies and procedures
  • Performing due-diligence investigations and review of intellectual property rights and issues in connection with business and financial transactions
  • Providing opinions on patentability, patent validity, and patent infringement
  • Building patent fences and defensive patent portfolios and defensively publishing noncore or secondary inventions
  • Presenting seminars on intellectual property topics to personnel in the legal, research and development, and business divisions
  • Counseling clients in the selection, adoption, and use of new trademarks
  • Advising clients on adopting proper procedures for protecting copyrights and trade secrets
  • Developing and reviewing intellectual property policies and procedures, patent disclosure forms, intellectual property provisions, and employment contracts
  • Assisting with patent review committee meetings
  • Negotiating and drafting agreements for confidentiality, technology transfer, and research support and development
  • Enforcing patent and trademark rights and defending claims of infringement through negotiation and alternative methods of dispute resolution
  • Counseled a start-up biomedical and diagnostic company in negotiating a license to platform technology.
  • Counseled a start-up biologics company in a licensing agreement with a major university covering a joint research project and associated development of intellectual property rights.
  • Counseled a major computer industry corporation on use of open source software components and effects for future software product release, upgrade download and access to supporting libraries/files.
  • Counseled a major research hospital on a strategy for minimizing potential risks involved in licensing a portfolio of novel drugs.
  • Represented a biotechnology company in a dispute with another company regarding ownership of patent rights.  We developed an informal litigation approach in which both sides presented evidence and view points over several months which resulted in a favorable settlement for our client in an amicable context that enabled our client to have continued business relations with the other party.
Counseling
Overview

A strategic appreciation of intellectual property’s potential can be fundamental to the success of an enterprise. Having a comprehensive plan to exploit this potential — entering new markets and developing alternative forms and functionality — can add to a company's bottom line significantly and quickly.

Hamilton Brook Smith Reynolds designs strategies to protect intellectual property by taking into account not only the nature of the underlying technology, but also the legal considerations and business objectives of the client. The goals, finances, and nature of the client, as well as its market and competitors, are important considerations.

Our services in this area include:

  • Auditing intellectual property rights as well as corporate policies and procedures
  • Performing due-diligence investigations and review of intellectual property rights and issues in connection with business and financial transactions
  • Providing opinions on patentability, patent validity, and patent infringement
  • Building patent fences and defensive patent portfolios and defensively publishing noncore or secondary inventions
  • Presenting seminars on intellectual property topics to personnel in the legal, research and development, and business divisions
  • Counseling clients in the selection, adoption, and use of new trademarks
  • Advising clients on adopting proper procedures for protecting copyrights and trade secrets
  • Developing and reviewing intellectual property policies and procedures, patent disclosure forms, intellectual property provisions, and employment contracts
  • Assisting with patent review committee meetings
  • Negotiating and drafting agreements for confidentiality, technology transfer, and research support and development
  • Enforcing patent and trademark rights and defending claims of infringement through negotiation and alternative methods of dispute resolution
Representative Experience
  • Counseled a start-up biomedical and diagnostic company in negotiating a license to platform technology.
  • Counseled a start-up biologics company in a licensing agreement with a major university covering a joint research project and associated development of intellectual property rights.
  • Counseled a major computer industry corporation on use of open source software components and effects for future software product release, upgrade download and access to supporting libraries/files.
  • Counseled a major research hospital on a strategy for minimizing potential risks involved in licensing a portfolio of novel drugs.
  • Represented a biotechnology company in a dispute with another company regarding ownership of patent rights.  We developed an informal litigation approach in which both sides presented evidence and view points over several months which resulted in a favorable settlement for our client in an amicable context that enabled our client to have continued business relations with the other party.

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