PRACTICES

Today, businesses worldwide recognize that their intellectual property ("IP") is among their most valuable assets. With more than 30 years experience in virtually all aspects of IP law, WEITZMAN | IP specializes in providing our clients with innovative, cost-effective solutions to meet their business objectives.

We take a hands-on approach and work closely with our clients to get to know their business and build a lasting relationship based on expertise, professionalism, responsiveness and trust. We pride ourselves on obtaining successful outcomes for our clients by providing the highest quality of legal services to meet all of our clients' IP needs.

Our intellectual property practice provides our clients with a full range of services to meet all of their IP needs.

Focusing on Intellectual Property in the following areas:

Intellectual Property Litigation

Patents

Trademarks

Copyrights

Brand Protection & Anti-Counterfeiting

IP Opinions & Counseling

Product Clearance Investigations

IP Licensing & Transactions

Due Diligence Investigations

Domain Name Disputes

Medical Devices

Computer Software & Hardware

Financial Services

Telecommunications

Semiconductors

Automotive

Jewelry & Fashion

Cosmetics

Mechanical Arts

Representative Technologies:

IP Litigation

The veteran IP litigators at WEITZMAN | IP, which is recognized by ALM as one of the "Go-To Law Firms® at the Top 500 Companies," each have over 30 years experience litigating patent, trademark and copyright infringement actions in the federal courts across the country, both at the trial level and on appeal. We have also represented clients in IP disputes before the U.S. International Trade Commission.

We regularly advise our clients in connection with potential infringement issues, including advising our clients concerning potential infringement claims by third parties and responding to those claims on behalf of our clients. In the case of protecting our clients' intellectual property rights, we are highly experienced in preparing "notice" letters and negotiating acceptable resolutions for our clients prior to litigation.

We have a proven track record of achieving successful results for our clients and take pride in providing our clients with high quality, cost-effective legal services to meet their business objectives.

Representative Litigations:

Patent Infringement:

Kooltronic, Inc. v. Ice Qube, Inc. (D.N.J.)
Bitro Group Inc. v. Blueview Elec-Optic Tech Co., Ltd. (D.N.J.)
2109971 Ontario Inc. v. Samira Furniture Ltd. (S.D.N.Y.)
2109971 Ontario Inc. v. Matrix Hospitality Furniture Inc. (D.N.J.)
2109971 Ontario Inc. v. Best Deals Discount Furniture LLC (D.N.J.)
2109971 Ontario Inc. v. Closeout Furniture LLC (D.N.J.)
James Hanson v. Tiger Supplies Inc. aka Adir Corp. (D.N.J.)
Across International, LLC v. Summit Industrial Supply, LLC (D.N.J.)
C.R. Bard v. SciMed Life Systems, Inc. (D.N.J.)
Specialized Banking Furniture, Inc. v. Charles Braham & Associates (S.D.N.Y.)
Nouri E. Hakim v. Cannon Avent Group, PLC (W.D. La.)
Cannon Rubber Ltd. v. The First Years (N.D. Ill.)
In re Certain Personal Watercraft and Components Thereof (USITC)
Yamaha Motor Corp. v. Bombardier (C.D. Cal.)
Robert Bosch GmbH v. Applied Materials, Inc. (D. Del.)

Trademark / Trade Dress Infringement:

Red Bull GmbH v. Kearney Beverage, Inc. (D.N.J.)
Geneva Laboratories Limited et al v. Broadway Beauty Wholesale Inc. (S.D.N.Y.)
Geneva Laboratories Limited et al v. Nike West African Import And Export Inc. (E.D.N.Y.)
Geneva Laboratories Ltd. v. Beauty New King, Inc. (E.D.N.Y.)
Geneva Laboratories Ltd. v. iOggio Co (D.N.J.)
Frederick Goldman Inc. v. Cosmann GmbH aka Triton Watch Company (D.N.J.)
Annie International, Inc. v. Annie Cosmetics, LLC (D.N.J.)
Scott Kay, Inc. v. Independent Jewelers Organization (D.N.J.)
Delta Air Lines, Inc. v. Fly Tech, LLC et al. (D.N.J.)
MCS Industries, Inc. v. Battuta Inc. (E.D. Pa.)

Tacori Enterprises v. Scott Kay, Inc. (C.D. Cal.)
The Wave Studio, LLC v. General Hotel Management Ltd. (S.D.N.Y.)
Volovaya v. Mellace (D.N.J.)

Technology Dispute:

Gabriels Tech. Solutions, Inc. v. PNJP, LLC t/a Berkshire Hathaway HomeServices New Jersey Properties (S.D.N.Y.)

Patent Portfolio Management & Prosecution

We are proud to be on the cutting edge of new developments in a wide range of technologies and industries. By taking a hands-on, personal approach and working closely with our clients, we get to know their business and understand their technology in order to develop and implement effective national and worldwide patent strategies to meet their business objectives.

We have extensive experience in formulating strategies to protect our clients' technology and business. We are highly skilled in all aspects of patent procurement, including the preparation and prosecution of patent applications before the U.S. Patent and Trademark Office and abroad. We also assist our clients in obtaining patent protection outside the U.S. by filing international PCT patent applications and coordinating the filing and prosecution of national phase patent applications abroad, particularly in Asia and Europe.

Expertise in patent prosecution and a thorough understanding of the underlying technology can be the difference between a sound patent claim that deters infringement and provides a competitive business advantage, and one that is effectively an invitation for future litigation. Our broad patent litigation experience gives us a distinct advantage in preparing and prosecuting our clients' patent applications since we understand and have litigated the issues that often arise in litigation after a patent issues based on what was or was not done during prosecution of the patent.

While we cannot guarantee results (as each patent application is unique and presents different legal and factual issues), we pride ourselves on achieving successful results and obtaining patents for our clients in approximately 70% of the utility patent applications that we file (compared to the USPTO's average allowance rate of approximately 51% for FY2017). Our attorneys' success in obtaining patents on behalf of our clients is particularly noteworthy given that many of the patent applications that our clients retain our services for involve software or computer-implemented inventions. The U.S. Supreme Court's 2014 decision in Alice Corp. v. CLS Bank ("Alice") has dramatically reduced the patentability of computer-implemented inventions, particularly in the finance arts (e.g., banking, insurance, etc.). Our Firm has successfully overcome approximately 47% of the Alice-related patentable subject matter eligibility (Section 101) issues raised by the USPTO in our clients' patent applications covering software and computer-implemented inventions (as compared to, for example, the USPTO's 9.9% allowance rate for FY2017 for patent applications examined in Class 705).

We approach our work in an efficient, cost-effective manner and pride ourselves on providing the highest quality of service to obtain meaningful patent protection for our clients.

Client Counseling & Patent Opinions

We have extensive experience advising our clients regarding issues concerning the scope, infringement, validity, enforceability and ownership of U.S. patents. We also advise our clients concerning the clearance of new product designs and, to the extent necessary, the designing around of existing U.S. patents. Our broad patent litigation experience gives us a distinct advantage since we are able to identify the relevant issues and provide our clients with meaningful advice. We take pride in providing high quality legal opinions that our clients can rely on in today's litigious environment.

We regularly advise our clients concerning the selection and clearance of new trademarks and service marks for their products and services. It is invaluable to identify potential risks up front before our clients adopt new marks and invest in their promotion and use in commerce. We have extensive experience advising our clients and providing high quality legal opinions on the availability of trademarks in the U.S. We also coordinate worldwide trademark availability opinions for clients who are considering adopting new marks in countries outside the U.S.

In addition to advising clients on the availability of new trademarks, we regularly assist our clients in registering their trademarks in the U.S. and abroad. We are highly skilled in all aspects of trademark prosecution in the U.S. Patent and Trademark Office. We have also counseled clients on Internet domain name disputes and have participated in opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.

We have a proven track record of enforcing and/or defending against claims of trademark and trade dress infringement, including preparing cease and desist letters to protect our clients' intellectual property and responding to letters accusing our clients of infringing upon third party rights.

Trademark Prosecution & Counseling Services

IP Licensing & Transactions

We have considerable experience in all forms of licensing involving patents, trademarks, trade secrets, copyrights, software and technical know-how. We have represented individuals and corporations in the licensing of intellectual property.

We have also worked closely with our clients' corporate and business counsel to draft and negotiate agreements involving intellectual property rights on behalf of our clients. These include M&A agreements, joint development agreements, licenses, settlement agreements, assignments, non-disclosure agreements, and employment contracts.

Due Diligence Investigations

As an essential part of any investment, merger or acquisition, we work closely with our clients' corporate and business counsel to conduct properly focused due diligence reviews of the intellectual property assets at issue. This includes conducting audits of the business to identify the relevant intellectual property and evaluating the strength of corporate patent, trademark and copyright portfolios to assist our clients in understanding the value of these IP assets. We also evaluate third party patent, trademark and copyright portfolios to identify any potential risks regarding the operation of the business, its products and services.

Domain Name Disputes

We are experienced in advising our clients in connection with domain name disputes, cybersquatting issues and Internet trademark conflicts. We have successfully represented clients in arbitration proceedings under ICANN's Uniform Domain Name Dispute Resolution Policy ("UDRP") and have assisted our clients in the acquisition and transfer of domain names.

Copyright

We are highly experienced in assisting our clients with registering copyrights, expediting applications, recording documents and performing searches. We have extensive experience representing clients in the jewelry and fashion industry.

We regularly advise our clients and render opinions on issues involving the copyrightability, fair use, infringement, work made for hire and ownership of designs and other works of authorship. We also assist our clients in drafting and negotiating agreements involving copyrighted works, including licensing, development and distribution agreements.

We have a proven track record in enforcing and/or defending against claims of copyright infringement, including preparing cease and desist letters to protect our clients' intellectual property and responding to letters accusing our clients of infringing upon third party rights.