Intellectual Property Law

Jennings, Strouss & Salmon has one of the leading intellectual property practices in Arizona. We offer clients the full spectrum of intellectual property services, including the acquisition, enforcement, and defense of patents, copyrights, trademarks, and trade secrets, as well as related licensing, joint technology development arrangements, and litigation. We also assist clients with their core assets, such as technology, brand, and strategic relationships, and help them navigate their unique competitive landscape. Our clients range from large international corporations to emerging businesses. We also represent universities, industry associations, and research institutions. This broad base of clients enables our attorneys to understand and develop individualized services for each client, creating effective and efficient legal solutions.

Jennings, Strouss & Salmon’s intellectual property services encompass the domestic and international aspects of:

  • patent, trademark, copyright, and industrial design prosecution
  • exploitation and enforcement of the foregoing rights through licensing, joint venture, sponsored research, collaboration, technology transfer, and other agreements
  • defense against the assertion of these rights through traditional and non-traditional forms of litigation

Our attorneys routinely conduct intellectual property audits to assess our client’s intellectual property assets, provide counseling on strategically developing and managing intellectual property portfolios, and proactively advising on how to help protect themselves from potential third party threats. In addition, as a result of our extensive experience handling international intellectual property matters, the firm has developed a world-wide network of the best trademark, patent, and corporate lawyers in foreign jurisdictions, who are available to assist with intellectual property and related corporate matters.

We offer multifaceted resources focused on maximizing the value of intellectual property to our clients’ businesses, and strive for effective productivity by training client personnel to assume responsibility for asset management. When needed, we call on the skills of our practitioners in corporate, securities, real estate, finance, employment, and tax law to optimize underlying business objective.

Intellectual Property Services

Patents

Our attorneys are skilled in a wide-range of technologies, including encryption; cybersecurity; advanced weapons systems; optics and holography; software architecture; data cache and database systems; microprocessors; semiconductor processing and wafer fabrication technologies; cloud computing; medical devices and medical imaging; supersonic aircraft design; automotive systems; business methods; avionics; credit and financial services; mobile devices; smart phone applications; and consumer electronics. They are adept at generating reliable non-infringement, invalidity, and freedom to practice analyses and opinions, particularly on short notice. Our attorneys are also equipped to manage diverse international patent portfolios, as well as strategically significant individual patents and patent families.

Trademarks

Jennings, Strouss & Salmon attorneys are experienced in the selection, adoption and protection of trademarks and corporate names, and in the management of United States and international trademark portfolios. Our attorneys file and prosecute domestic and treaty-based trademark applications, and work with foreign counsel to prosecute national applications and maintain registrations in over one hundred countries around the world. In addition, our attorneys also have considerable expertise in the areas of trademark licensing and merchandising, as well as the legal issues involved with advertising, branding, and marketing.

Copyrights

Our attorneys manage the filing of copyright registration applications across the entire spectrum of copyrightable works. They also assist with the procurement, transfer, and license of copyrighted works, and guide clients through ownership issues that arise when employees, independent contractors, and joint venturers contribute to the creation of copyrighted works.

When necessary, our attorneys are prepared to litigate claims of copyright infringement in federal courts, including claims related to the unauthorized use of software, internet content, music, news articles, sculptural works, and other media. We also help our clients determine the permissible quantity and quality of material that may be used without the permission of the copyright owner under the "fair use" doctrine.

Internet & Domain Name Issues

Conducting business on the internet puts new light on familiar legal issues and raises a series of new legal challenges that can change as fast as the technology itself. Our attorneys have experience in website development agreements; click-wrap and co-branding agreements; computer hardware and software development and licensing agreements; copyright notices under the Digital Millennium Copyright Act; domain name selection, registration and disputes; electronic document retention and litigation hold policies; online sweepstakes, promotions and advertising; outsourcing agreements; and website terms of use, privacy policies, and message board rules and regulations.

Cybersecurity

Jennings, Strouss & Salmon attorneys work with companies to ensure they have the necessary policies, procedures and safeguards in place to minimize the risk of and effectively respond to cyber threats and breaches. Our clients represent a wide-range of industries, including aerospace defense, e-commerce, education, financial services, government, healthcare, retail, technology, telecommunications, and utilities.

Intellectual Property Litigation

Jennings, Strouss & Salmon attorneys have a proven track record in handling all forms of intellectual property disputes, both in the United States and abroad. We have represented clients in a wide range of patent, trademark, copyright and trade secret enforcement and infringement matters, including litigation in state and federal courts, and appellate proceedings in the U.S. Patent and Trademark Office. We have successfully obtained injunctive relief against parties who have violated the intellectual property rights of our clients, and have also fought off attempts to obtain such relief against our clients.

In addition to our extensive trial experience, our attorneys are also well versed in alternative dispute resolution, such as arbitration and mediation, which often facilitates the resolution of disputes in a cost-effective and timely manner.

We also represent clients in international intellectual property disputes, including managing multi-country litigation. Litigation in the United States is handled directly, while international cases are coordinated through a network of foreign counsel, of our selection, which we oversee and direct in various administrative proceedings and litigation.

Representative Experience

Jennings, Strouss & Salmon has an exceptionally well balanced and experienced intellectual property practice, with both senior attorney who perform higher level work while supervising younger lawyers, and talented associates with the background and experience to assist with intellectual property matters. Our attorneys have assisted clients with the following select representative engagements:

  • Representation of plaintiffs and defendants in federal district and regional appellate courts in numerous patent infringement and preliminary injunction matters.
  • Representation of many leading Arizona companies in international trademark and copyright matters, including multi-country litigation.
  • Trademark protection of well known and recognizable financial and business marks.
  • Trademark protection of high-profile entertainment properties. Representation includes responsibility for the licensing agreements and other legal issues pertaining to the merchandising of most of the marks.
  • Numerous representations of clients needing to respond to and negotiate with various copyright rights organizations, such as the Business Software Alliance, ASCAP and BMI, among others, that alleged our clients had infringed upon the intellectual property rights of members in those organizations.
  • Representation of numerous clients before the Trademark Trial and Appeal Board in opposition and cancellation proceedings.
  • Acquisition of injunctive relief against trademark and copyright infringers in federal court in numerous cases, and often defend against third- party attempts to obtain such relief.
  • Representation of major commercial and residential developers and architectural firms in various copyright and trademark infringement matters.
  • Defense of a well-known commercial real estate developer in a trademark infringement action involving its principal mark.