Overview

Inventions, tools, compositions, manufactured articles, assemblies, machines, brand names, domain names, production processes, systems, customer lists, user manuals and web sites all have one item in common . . . they are your intellectual property.  Taking steps to protect your intellectual property is paramount to keeping your business running smoothly.  

Assisting clients through the challenges encountered in identifying, protecting, defending and monetizing valuable intellectual property assets is the foundation of Eastman & Smith’s intellectual property practice.  During these efforts, we form a close partnership with our intellectual property clients, allowing us to:  

  • Provide specific, timely, focused and the highest quality legal advice. Our clients deserve nothing less.
  • Be proud to be a law practice that does not compromise on values.
  • Provide legal services that are tailored to the unique needs of each of our clients.
  • Provide our clients with the highest value for their legal services. This commitment ensures that each client receives legal services in a timely and cost-effective basis.

We strive to find innovative solutions to the challenging and complex issues faced by our clients and keep them fully informed about important legal matters.  Our clients enjoy an open approach to client communications and our desire is for a close relationship.     

Our practice advises on all aspects of clearance, use, registration, issuance and enforcement of our clients’ intellectual property rights, including:

  • Preparation, prosecution and issuance of U.S. and international patent applications
  • Preliminary patentability searches and opinions
  • Patent infringement searches, analyses and opinions
  • Patent validity studies and opinions
  • Maintenance of U.S. and international patents
  • Licensing
  • Client counseling

  • Preparation and prosecution of U.S. and international trademark applications
  • International and U.S. trademark portfolio management
  • International and U.S. trademark clearance
  • Multi-jurisdictional dispute management
  • Trademark Trial and Appeal Board opposition and cancellation proceedings
  • Licensing
  • Client counseling

  • Copyright registration
  • Copyright infringement searches and opinions
  • Recordal of assignments and name changes
  • Licensing
  • Client counseling

  • Investigation of intellectual property theft
  • Trade secret protection audits
  • Confidentiality policies and agreements
  • Non-competes and other post-employment restrictive covenants
  • Computer forensic analysis
  • Work-for-hire and employment issues
  • Halting fraud and deceptive trade practices
  • Trade-secrets and non-compete litigation
  • Temporary restraining orders and permanent injunctions
  • Court imposed royalties and head-start damages
  • Criminal investigations and prosecution support.

  • License negotiations
  • Preparation of U.S. and international patent licenses, assignments and technology transfer agreements.
  • Preparation of U.S. and international trademark licenses and assignments
  • Preparation of copyright licenses and assignments

  • Procurement of patent, trademark, copyright and/or trade secret assets, including
    • Due diligence to identify intellectual property assets worldwide
    • Perfection of security interest for intellectual property
    • Preparation and recordal of US intellectual property assignments
    • Managing international counsel further to preparing and recording intellectual property assignment worldwide.

  • Sale and/or dispossession of patent, trademark, copyright and/or trade secret assets

  • Review and development of programs for identifying and protecting intellectual property
  • Consultation with management on day-to-day intellectual property matters
  • Intellectual property audits
  • Review and preparation of intellectual property status reports
  • Review of competitors' patents, trademarks and copyrights
  • New product clearance reviews
  • Development and maintenance of databases related to specific technologies
  • Review and payment of U.S. and international patent and trademark maintenance fees
  • Assistance in the preparation of intellectual property budgets
  • Review and preparation of employee agreements
  • Review and preparation of non-disclosure and joint development agreements

  • Investigation and evaluation of potential claims
  • Consultation with clients on liability exposure and strategic risk mitigation
  • Protecting intellectual property when responding to subpoenas
  • Negotiation of settlements pre-suit
  • Technical expertise and oversight during litigation
  • Assistance in establishing a litigation budget and priorities
  • Trial support
  • Trademark Trial and Appeal Board opposition and cancellation action

  • Client counseling relating to intellectual property
  • Due diligence review and opinions relating to intellectual property
  • Domain name disputes

We focus on maximizing the return from intellectual property assets for the benefit of our clients. 

The protection of intellectual property often requires creative solutions. Our technical background, and professional and legal experience allows us to provide services tailored to the unique needs of each of our clients.  Eastman & Smith’s practice spans a wide spectrum of technologies and even a wider spectrum of applications within those technologies. 

Our Firm’s practice extends beyond the procurement of patents, trademarks and copyrights as we effectively serve as in-house intellectual property counsel for several of our major clients.  We provide day-to-day counseling on a variety of issues ranging from routine patent and trademark issues to potential litigation matters.  Eastman & Smith also handles related areas of intellectual property law, including trade secrets, unfair competition, domain name disputes, licensing and contract negotiation.  Our clients encompass individuals, business start-ups, small companies, major corporations and non-profits in the United States and throughout the world.  They include: 

  • Classic Specs
  • Lens.com
  • Owens Corning
  • Owens-Illinois Inc.

Eastman & Smith’s intellectual property practice is global to meet our clients' needs in state, national and international matters.  We have relationships with intellectual property law firms around the world and have extensive experience in filing patent and trademark applications worldwide.  Our attorneys are admitted to practice before the U.S. Patent and Trademark Office, in a number of federal courts including the Court of Appeals for the Federal Circuit, and in many state courts. 

Should you have any questions regarding intellectual property law, please contact one of our intellectual property attorneys for assistance.