Services

Patents

Ranked among the top patent firms by IP Today and in Intellectual Asset Management’s (IAM) “Patent 1000: The World’s Leading Patent Practitioners,” Fox Rothschild represents clients in the complete range of patent law matters, including domestic and foreign patent prosecution, corporate due diligence, counseling and opinions regarding patent invalidity and noninfringement, and the enforcement and litigation of valuable intellectual property rights.

Clients speak highly of Fox’s patent capabilities, saying “We typically use small IP boutiques or ‘virtual’ firms, but Fox Rothschild is a rare general practice outfit that can compete with them when it comes to cost and quality of patent services. We get the perks that come with having a full-service commercial group on our side, but at a reasonable price point.”

Among our services, we offer:

  • Representation in patent prosecution, re-examination, reissue, interference and post-grant review proceedings before the USPTO as well as all significant international patent examination authorities.
  • Assistance with the procurement of patent rights in the European Union, Japan and other foreign jurisdictions.
  • Patent enforcement through negotiation, settlement, arbitration, mediation and, where necessary, litigation.
  • Representation in International Trade Commission (ITC) proceedings in patent matters involving the importation or sale of imported goods that may infringe upon a patent.
  • Due diligence investigations during licensing, acquisitions and other technology-related transactions to identify and define the scope of the relevant intangible assets.
  • Counseling and patentability opinions relating to new products, designs, structures, systems and methods.
  • Patent portfolio strategies for early stage ventures and universities.
  • Drafting and negotiating international patent in-licensing and out-licensing agreements.

We obtained more than 200 issued patents for our clients in 2015, including:

  • 9,109,206 – Method for treating chronic nerve tissue injury using a cell therapy strategy
  • 9,106,320 – Node synchronization in a frequency hopping wireless network
  • 9,095,835 – Method for processing hydrocarbon fuels using microwave energy
  • 9,095,599 – O-(substituted benzyl) phosphoramidate compounds and therapeutic use
  • 9,082,207 – System and method for automatic layout of printed material on a three-dimensional structure
  • 9,080,015 – Biocompatible polymers for medical devices
  • 9,078,756 – Implantable device and method to replace the meniscus of the knee and other body structures
  • 9,064,965 – Zinc oxide-based thin film transistor biosensors with high sensitivity and selectivity
  • 9,046,194 – Protective conduit for a structural panel opening
  • 9,044,443 – Methods of treating autism
  • 9,040,497 – Treatment and diagnosis of colon cancer
  • 9,028,617 – Cleaning device with single tank recycling system
  • 9,027,065 – Method and system for creating video channels for delivery of content from multiple platforms
  • 8,984,612 – Method of identifying an electronic device by browser versions and cookie scheduling
  • 8,962,757 – Graft polymers for enhanced intracellular delivery of antisense molecules
  • 8,954,195 – Hybrid gesture control haptic system

Trademarks

Ranked among the top trademark firms by IP Today and the top 25 trademark opposition filing firms by Towergate Software, Fox Rothschild provides clients with comprehensive representation in the selection, search and registration of their marks. Our attorneys are well-versed and extensively experienced in proactively advising clients on issues related to the establishment, protection and, when needed, defense of trademark rights to help them manage and mitigate risk before problems arise. We have assisted clients with trademark availability opinions, preparation, renewal and prosecution of trademark registrations as well as trademark licensing and enforcement in the United States and abroad.

We also provide clients with strategic advice on building a strong house mark; developing a family of marks; adopting nontypical marks such as trade dress, color marks, sound marks or fanciful designs; building brand strength; helping with brand strategies; and obtaining related domain names or licensing the marks. For clients that actively market their brands on and engage in social media platforms, we assist with the selection and maintenance of appropriate domain names and advise on the use of a company's trademarks and brands on such social media outlets.

Copyrights

We help clients register, protect and license their copyrights. We also represent them in enforcement actions both domestically and internationally. Our services include assistance with:

  • Filing copyright applications with the U.S. Copyright Office to protect computer code
  • Software license and development agreements
  • Computer system acquisitions
  • Publisher-author and illustrator agreements
  • Internet hosting, web site development, design agreements and data-sharing agreements
  • Domain name acquisition and protection

Rights Management and Technology Transfer

We help clients exploit new technologies and business models by conducting IP audits to identify potential sources of revenue and assist in the development of plans to protect, maintain and manage rights in these sources. Our attorneys offer formal and informal opinions on such issues as patentability, product design and possible infringements of third-party intellectual property rights.

We also help clients establish policies and procedures and provide guidance to ensure trade secrets are maintained. We draft, enforce and, when necessary, litigate agreements involving nondisclosure and noncompete clauses.

Fox attorneys frequently provide legal analysis and counsel in the transfer of intellectual property rights in corporate transactions. We also evaluate the degree to which a purportedly protected asset could successfully withstand a legal challenge in local, state or federal court or the USPTO.

For clients in the private sector or at nonprofit organizations, we assist in the development of intellectual property and related policies and procedural safeguards designed to maximize and protect intellectual assets, obtain and enforce rights and address other related areas of concern.

Enforcement and Litigation

Our attorneys are familiar with the nuances of intellectual property litigation and possess decades of experience representing clients successfully in IP disputes in the courtroom, before administrative agencies, such as the Patent Trial and Appeal Board and the ITC, as well as arbitration panels and in settlement. We have resolved disputes involving patents, copyrights, trademarks, antitrust, unfair competition and related issues and have a particular knowledge of domain name arbitration and litigation. Among our successes, we recently won two separate eight-figure verdicts – both in the same year – in jury trials held in Pennsylvania and California.

Services for Emerging Growth Companies

Fox Rothschild has particular experience assisting early stage companies as they build their intellectual property assets. We help clients analyze their IP portfolio to assess its suitability for meeting the company’s financial metrics and business plan. As the company grows, we serve as a trusted advisor and partner, assisting with licensing and portfolio management and continually assessing IP assets to strengthen and protect IP capital.