Venable LLP

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Intellectual Property
* Copyrights
* Domain names
* ITC
* Opinions
* Patents
* Licensing
* Litigation
* Trade secrets
* Trademarks / trade dress
* Unfair competition

Increasing the value of your IP portfolio depends on a comprehensive and clearly thought-out strategy executed by attorneys with the broad experience and skills required to maximize opportunities and defeat challenges. We offer depth you won’t find in many general practice firms and breadth you won’t find at most IP boutiques. At Venable, you get the best of both worlds—a balance of aggressive and efficient litigation with strategic counseling savvy in all areas of IP that is the choice of leading companies here and abroad.

EXTENSIVE EXPERIENCE AT EVERY STEP: FROM CONCEPT TO COMMERCIALIZATION

Patents by the tens of thousands, portfolios valued in the tens of millions.

Led by former patent examiners and reinforced by attorney-scientists from a variety of technical disciplines, we have prepared and prosecuted tens of thousands of patents for U.S. and international clients.

We advise clients whose portfolios total in the tens of millions. In IP audits, we uncover hidden assets, evaluate new technologies, survey the competition for possible infringements and assess the patents of potential acquisitions.

Your choice of an IP litigator—important for a million reasons.

Because that’s what could be at stake in revenue and profits. That’s how we think of it, at least. We start by knowing your business—your customers, your markets, distribution channels and competitors. With a sure grasp of the facts and context, we develop compelling arguments for hearings and trials and influence the direction of appeals and settlements.

We represent clients in patent, trademark, copyright, unfair competition, trade dress and domain name litigation in federal and state courts throughout the United States, as well as before the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court.
An excellent case in point is where we successfully argued before the U.S. Supreme Court Wal Mart v. Samara Brothers, named the most important trade dress case litigated since 1998 (Legal Times, October 2002).

Litigation at the International Trade Commission (ITC), where we appear often.

The ITC has become a preferred forum for patent holders seeking quick and broad injunctive relief. Venable attorneys have extensive experience managing complex patent cases before the ITC, representing both complainants and respondents. Our understanding of the nuances of the ITC allows us to effectively and efficiently litigate cases to successful resolution for large and small clients. We have represented clients in litigation involving a full range of complex technologies, including chemicals, pharmaceuticals, electrical and mechanical devices, as well as computer software.

Along with co-counsel, Venable represents several Taiwanese semiconductor clients in an investigation involving patents relating to certain small format Ball Grid Array (“BGA”) packages that incorporate Dynamic Random Access Memory (“DRAM”) chips. The Complainant, a patent-holding company, is claiming infringement of a number of patents relating to a type of enclosure for semiconductor chips.

We also represented a telecommunications company in a patent suit involving routers, switches and hubs used in telecommunications equipment, and represented an agricultural vehicle manufacturer in an investigation involving alleged trademark infringement by certain agricultural vehicles.

Distinguished trademark and domain name attorneys.

Venable is a leader in trademark filings. We consistently rank among the top 20 trademark firms in the country. Over the past five years, Venable has filed more than 5,000 U.S. trademarks and an equal number of applications in other countries around the world. We are among the top 15 trademark law firms in the country for U.S. registrations obtained in 2007, according to Intellectual Property Today. During that period, we filed more than 600 U.S. trademarks. Outside the United States, we work with an extensive network of trademark lawyers on disputes and transactions as well as the prosecution of trademark applications.

In addition, our attorneys litigate our clients’ trademark and trade dress rights, as well as other rights under the Lanham Act. We successfully argued a case in the Supreme Court of the United States that set the precedent for product configuration trade dress; litigated a case involving the shape of a famous guitar; and handled a precedent setting case over the use of a famous mark as a title. Our attorneys also have tried numerous jury and nonjury cases in federal and state courts on matters involving advertising and marketing, direct to consumer marketing and e-commerce. Venable attorneys have successfully brought and defended against dozens of preliminary injunction motions and requests for temporary restraining orders in trademark, trade dress and advertising disputes.

When it comes to domain names, we help clients combat false search-engine placement and enforce URLs. Our attorneys recover names across all domains through administrative dispute resolution procedures. We also counsel clients on threats to their brands, including issues such as “phishing” and “typosquatting.”

A creative and aggressive approach to copyright protection.

Venable attorneys have litigated seminal copyright disputes in courts throughout the country. We represent leading entertainment, video game and software companies, industry associations and technology companies at the intersection of content creation and protection with technology. We assist clients in protecting their content against infringement and piracy, in licensing and exploiting their valuable works and in providing counsel on various issues, including work-for-hire and ownership disputes. Our attorneys have litigated some of the most important copyright disputes in recent times, including the ground breaking Napster and Grokster “file-sharing” cases, and have argued before the Supreme Court of the United States in a landmark case involving the work-for-hire doctrine.

A practical approach to technology licensing and transactions.

Our licensing team comprises not only traditional IP licensing attorneys, but also attorneys in critical areas such as advertising/marketing, import/export, bankruptcy, unfair trade, franchising, offshore transactions, tax and related regulatory areas. Many have been engineers, software developers, bench scientists and consultants for technology businesses. Their hands-on experience is invaluable in negotiating technology licenses, technology transfer agreements, joint ventures and research contracts.

When it comes to any aspect of intellectual property, we have the know-how. Many of us are former patent examiners and attorneys with industry experience and technical degrees. We know the United States Patent and Trademark Office (USPTO). And we understand the forces driving the value of IP rights in many industries. Our prosecution work is led by patent strategists skilled at advising clients on maximizing the value of their intellectual property portfolios.

Venable LLP
750 E Pratt St #900
Baltimore MD 21202
Tel: 410 244-7400
Fax: 410 244-7742