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Intellectual Property & 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 offers a full range of intellectual property legal services, including:

  • Preparing and prosecuting patent applications
  • Post-issuance patent practice, including patent interferences, reexaminations, reissues, oppositions, and inter partes review proceedings, 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, inter partes reviews, 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.”

In 2016, LeClairRyan was ranked among the top 10 law firms in the nation for life science patents by Juristat. Firms must have had at least 100 patent applications disposed of in the relevant art during the one-year period (June 13, 2014 – June 13, 2015) following the Myriad decision to be considered for this ranking. The firms are ranked by their average patent allowance rates in the biotechnology and organic chemistry areas. Juristat uses a proprietary natural language processing algorithm to build behavioral models of patent examiners’ past behaviors, allowing attorneys to more accurately predict examiners’ future behavior.

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 works 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. 

Examination, reexamination and inter partes review proceedings

The U.S. patent system provides for supplemental examinations, ex parte reexamination proceedings and inter partes review. These procedures permit requests for further examination or challenges concerning the patentability of U.S. patents before the U.S. Patent and Trademark Office. In particular, ex parte reexaminations require the patent challenger to file a request, which sets forth a substantial new question of patentability in ex parte reexamination. A petition for an inter partes review requires a showing of a reasonable likelihood that the petitioner will prevail on at least one challenged claim. Once granted, the requester’s participation is largely concluded in an ex parte proceeding, but continues in an inter partes review.

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. We also counsel our clients on the merits of whether they should challenge a patent through reexamination, inter partes review 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

With the passage of the America Invents Act, opposition proceedings (called “post-grant review”) in the U.S. will apply to patents to which the first-to-file rules apply. Such proceedings have long been prevalent in Europe and Australia, and we have represented our clients’ interests in conjunction with counsel in those jurisdictions. Further, such foreign 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 foreign 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

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.

Representative Engagements

Patent prosecution

  • Developed and managed patent portfolio of about 30 domestic and international applications for a tier 1 national university on applications of silk-based materials in different areas, including biomedical device, biodelivery device, electrical and optical device, biosensing platform, pharmaceutical compositions, and tissue engineering materials
  • Represented an international semiconductor company in preparation and prosecution of approximately 30 patent applications in areas such as development of solar energy materials, semiconducting crystal materials and electroluminescent materials
  • Represented diagnostic testing facility in litigation and subsequent reexamination of patents pertaining to heart monitoring devices
  • Represent third-party requester in the reexamination of a patent covering optical fibers
  • Represented clients in prosecution of applications in the area of organic and electrical chemistry such as rechargeable batteries
  • Filed an ex parte reexamination on a competitor’s patent resulting in the sustained rejection of key claims
  • Filed reissue applications on a portfolio of fungicide patents to secure protection on the commercial product after later-discovered prior art was uncovered
  • Successfully managed the defense of a European patent in an opposition hearing on a patent covering conjugated fatty acids
  • Resolve an inventorship dispute and develop a patent portfolio on behalf of a university client relating to the discovery of over a thousand antibacterial agents
  • Develop a multi-patent portfolio for a university client covering chemical syntheses of peptide mimics
  • Represented clients in prosecution of applications in the area of inorganic chemistry such as alloys and magnetic materials
  • Represented a research organization in preparation and prosecution of applications in peptides and modified peptides for diagnostic and therapeutic uses
  • Obtained basic patent protection on the active pharmaceutical ingredient in Allegra, which was licensed by our client Albany Molecular Research, Inc. to what is now Sanofi. We represented our client in two interference proceedings, numerous license negotiations, and a series of patent infringement actions in the United States and elsewhere. This work helped our client grow from 10 employees to over 500 employees. 

Patent interferences

  • Represented client in preparing for an interference relating to a process of making microporous filters. In view of our efforts, our opponent conceded that our client would prevail.
  • Bence v. Mathews (Interference No. 105,680): an interference involving a coaxial cable connector that includes a separate grounding element to ensure proper grounding of the connector. We represented the senior party Bence. This interference was resolved using binding arbitration by a third party neutral who made decision in favor of our client.
  • Noguchi v. Zhang (Interference No. 105,339): an interference involving a method of manufacturing a thin film transistor of a semiconductor device. We represented the senior party Zhang. The interference was resolved by settlement in favor of our client.
  • Successfully handled three jointly declared interferences relating to patents and applications on technology relating to ruthenium-based metathesis catalysts
  • Johnston v. Beachy; Johnston v. McCormick (Interference Nos. 104,286 and 104,400): a pair of related patent interferences involving recombinant genetic engineering used for generating pathogen resistant plants. We represented the junior party Johnston.
  • Rose v. Lowy; Rose v. Schlegel; Rose v. Frazer (Interference Nos. 103,771, 103,772, and 103,773): three related patent interferences involving recombinant genetic engineering used for generating an empty protein shell (or capsid) of a papillomavirus. The empty capsid, known as a virus-like particle, is used as vaccine component for generating immunological resistance against papillomavirus infections, particularly for those papillomaviruses known to be linked to various forms of cancer. We represented the junior party Rose. We obtained a favorable ruling on a preliminary motion that caused our adversary’s licensee to enter into a cross-license with our client’s licensee, resulting in our client receiving royalties from both licensees.
  • Lowy v. Rose (Interference Nos. 105,735 and 105,751): a pair of related patent interferences that also involve the papillomavirus virus-like particles
  • Barany v. McGall (Interference No. 105,351): an interference involving oligonucleotide arrays that include oligonucleotide analogue probes or targets. We represented the junior party Barany and, in the process of doing so, we invalidated our opponent’s patent so that our client had freedom to operate.

Trademarks and related areas

  • Trademark clearance, prosecution, maintenance, licensing, protection, counseling and dispute resolution for numerous businesses, including a Fortune 500 retail company, a publicly-traded financial services company, a national trade association, a winery, a nationally recognized art products business, a food products business, an agricultural products business and a medical device and diagnostic products manufacturer
  • Counseling franchisors in various lines of business in the protection of intellectual property in the context of a franchise relationship, including protection of trademarks, copyrights and trade dress
  • Domain name dispute resolution for a financial services business and a publisher
  • Counseling businesses and non-profits on advertising matters and promotions
  • Negotiating co-marketing agreements with Fortune 100 pharmaceutical companies for a Virginia developer of connectivity solutions for point-of-care test results

Copyrights and other intellectual property

  • Copyright registration and counseling for technology companies and authors of creative works
  • Represented consortium of major research universities in biotechnology licensing arbitration
  • Negotiating and preparing research and development agreements, and software, database, hardware, technology, copyright and patent licenses, procurement, use and sales contracts for numerous businesses, organizations and technology companies
  • Advising on international software distribution and sales representative agreements
  • Representing businesses in copyright, patent, licensing, and contractual IP disputes, including a large government contractor in a dispute over the termination of a software/hardware development contract, a subcontractor’s tortious interference and performance issues, and a software company in alleged breach of contract allegations surrounding development of software security product
  • Acting as outside general counsel to privately held technology and services companies
  • Negotiating joint development/supply agreements
  • Assisting numerous businesses in the development of various forms of strategic alliance arrangements and related intellectual property ownership issues
  • Represented university client in arbitration with licensee, resulting in the parties entering into a new, more favorable license
  • Represented the Papaya Administrative Committee of Hilo, Hawaii in obtaining licenses from various universities and companies so that the committee members could commercialize a transgenic disease resistant papaya
  • Counseling a technology commercialization business on intellectual property issues arising in the context of a development services agreement with a publicly-traded systems development and manufacturing company
  • Representing numerous individuals and businesses in technology and IP transfers, including an engineering software developer in the sale of certain engineering software tools, a plastics company in an asset sale to a large national global plastics company, and a software developer in the purchase of a pharmaceutical consulting firm and related intellectual property
  • Counseling individuals and businesses on IP matters in a university context, including advising on the outlicensing of university-developed technology and the rights of state university faculty members in connection with disclosure obligations and intellectual property ownership issues
  • Advising "America’s first research university" on commercializing medical research
  • Counseling advertising agencies on avoiding copyright infringement
  • Advising architectural firms on copyrights, copyright infringement and other issues
  • Counseling businesses on matters related to the protection of intellectual property rights over the internet
  • Negotiating and advising upon website development, hosting and design agreements

Intellectual property management

  • Counsel businesses on IP and trade-secrets management and best practices
  • Manage IP portfolios of Fortune 500 companies
  • Assist businesses with non-disclosure, non-solicitation, employment, non-compete and independent-contractor agreements
  • Advise on IP transfers and other arrangements between employers and their independent contractors, employees and clients
  • Represent businesses in disputes arising from the hiring or termination of employees and independent contractors subject to contracts limiting use of proprietary information and intellectual property

Intellectual property litigation

  • Prosecuting and defending applications for injunctive relief and/or damages for infringement, false advertising, false designation of origin, trademark counterfeiting (including Court Ordered ex parte seizures of goods bearing counterfeit trademarks), and unfair competition claims, under the Lanham Act, the Copyright Act, the related Digital Millennium Act, state statutes protecting IP, as well as common law
  • Represented major county government in IT contract dispute concerning development of integrated property tax system; obtained $21 million settlement on behalf of client
  • Represented major computer manufacturer in copyright/trade secrets litigation involving software used on largest commercial website in the world
  • Represented defense contractor in copyright litigation involving software that forms the hub of the Army’s tactical Internet and passes targeting data to various airborne weapons platforms; obtained damages award and injunction after week-long trial
  • Successfully defended a university in an arbitration involving an inventorship dispute based on interdisciplinary technology developed at the university
  • Represent patent holder in litigations concerning a brand name allergy medication
  • Represented offshore cable television company in satellite piracy action brought by major motion picture studios
  • Defended a public company in patent litigation centering on business intelligence software; case included claims brought under a state’s unfair-competition statutes and the Trade Secrets Act
  • Represented one of the two major music-licensing companies in copyright-infringement action
  • Represented major film studio in copyright-infringement case involving the release of a motion picture
  • Represented company in copyright-infringement case involving alleged architectural misappropriation
  • Represented a public company as the plaintiff in litigation over two patents covering the interface between computing devices and digital displays; case involved issues related to fraud, antitrust, licensing and setting of industry standards

Contact

  • 585.270.2101
  • 415.913.4932