Jennings Strouss & Salmon has one of the leading technology practices in the Southwest. In fact, Jennings Strouss Ranked #1 in Arizona in the field of Technology Law by The Best Lawyers in America®, 2009, 2010 & 2011. We assist our clients concerning the acquisition, protection, and exploitation of some of their most valuable assets (such as technology, creative works, and their brands) that are often at the core of the client's worth. Our clients include universities, research institutes and private sector companies in the high technology and biotechnology/life sciences industries.
In transactional matters, we have extensive experience representing both private technology sector companies as well as universities/research institutes. Our familiarity with both sides of these transactions enables our attorneys to understand the cultural nuances involved with transactions between private sector companies and universities/ research institutes and, thus, allows us to more efficiently and effectively find the appropriate legal solutions.
We offer multifaceted resources focused on maximizing the value of intellectual property to our client's business and strive for effective productivity by training client personnel to assume responsibility for asset management. Where needed, we can call on the skills of our practitioners in corporate & securities, real estate, finance, employment and tax law to achieve business goals.
Intellectual Property Overview
Our technology services include the domestic and international aspects of the following: (i) the creation and protection of intellectual property rights, including the filing and prosecution of applications for patent protection and registration of trademarks and copyrights; (ii) the development and maintenance of those intellectual property rights; (iii) exploitation of those rights through licensing, joint venture, sponsored research, collaboration, technology transfer and other agreements; and (iv) enforcement and defense of these rights through intellectual property litigation.
Our technology law attorneys routinely conduct intellectual property audits of their clients to assess a client's intellectual property assets, provide counseling on strategically developing and managing its intellectual property portfolio, as well as proactively advising clients on how to help protect themselves from potential third party objections or infringement actions. Further, as a result of our extensive experience handling international intellectual property matters, we have developed a worldwide network of the best trademark, patent, and corporate lawyers in foreign jurisdictions, who regularly assist us in all aspects of intellectual property work, as well as in related corporate matters.
The registered patent attorneys at Jennings Strouss prepare and prosecute U.S. patent applications and their international counterparts across a broad range of technologies. With undergraduate and advanced degrees in electrical, mechanical, chemical and biomedical sciences and direct experience in scientific research, applied science and engineering, members of our group offer sophisticated understanding of client technologies and objectives coupled with extensive experience in the substance and mechanics of the patent system.
Jennings Strouss has a proven track record in handling all forms of intellectual property disputes, both in the U.S. and abroad. Our lawyers have represented clients in a wide range of trademark, copyright and trade secret enforcement and infringement matters, including litigation in state and federal courts, and proceedings before the Trademark Trial and Appeal Board. We have considerable arbitration, mediation and trial experience at Jennings Strouss, which often makes a big difference in the resolution of disputes. We have successfully obtained injunctive relief against parties who have violated the intellectual property rights of our clients, and have also fought off third party attempts to obtain such releif against our clients.
Internet & Domain Name Issues
Our attorneys also provide representation on a variety of legal issues related to domain names, website design, website terms and conditions and privacy considerations.
Jennings Strouss is uniquely positioned to address the special legal, business, and cultural needs that academia and private technology companies encounter when institutions of higher learning and businesses engage in research and other collaborative arrangements.
We represent universities and research institutes as they enter into and negotiate sponsored research agreements, strategic research alliances, and other collaboration arrangements with private sector companies, and with other universities and research institutes. We also counsel private industry clients, in various industry sectors, as they enter into and negotiate collaborative arrangements with academia. Our familiarity with both sides of these transactions uniquely positions us to assist our clients in achieving optimum complex research collaborations, joint ventures, and other strategic alliances. In addition, we are experienced in the financial aspects of these transactions including grant agreements and other public and private funding mechanisms.
Licensing and Technology Transfer
Our attorneys represent academia and private sector companies in intellectual property licensing and technology transfer arrangements. Our experience includes preparing, negotiating and advising on license agreements related to patented inventions, copyrighted works, trademarks, databases and software, and creating reusable templates for clients involved in complex licensing programs involving a large number of licensees.
Our team combines its licensing expertise with its sensitivity to the cultural nuances associated with licensing technology out of the academic environment and into private industry. The experience we have gained from counseling both academia and private sector clients enables us to better understand the needs of both segments and to find the most unique and appropriate legal solution. We also have experience in drafting and advising on university and research institute licensing arrangements that permit royalties and/or equity interest in a corporate licensee.
Standards, Consortia and Other Multi-Party Development Initiatives
We have experience representing companies and non-profit entities in their participation in technology consortia, standards-setting organizations, and similar multi-party development initiatives that develop technology guidelines, databases, protocols, standards, and similar collaborative works.
Our experience with these technology consortia is in many industry sectors, including the software, hardware, semiconductor, internet, telecommunications, medical device and life science industries. We counsel clients regarding the legal issues that arise during the various stages of involvement with these technology standards entities.
University and Research Institute Policies
Universities and research institutes often create research policies and other institution-wide procedures to help preserve the entity’s intellectual property rights. Our attorneys assist our academia clients in the formation of these best practices and other policies related to technology transfer, sponsored research arrangements, other commercialization matters, intellectual property ownership, and employee conflicts of interest. We also have experience working with universities to develop policies that allow them to take equity interest in start-up technology companies.