ADD+G is a comprehensive intellectual property law firm and our team includes registered patent attorneys as well as attorneys that are certified in intellectual property law by the Florida Bar. In addition to representing clients before the U.S. Patent and Trademark Office, U.S. Copyright Office, and state and federal courts, we also assist clients with all numerous types of transactional matters that involve intellectual property assets.
There are many business scenarios that involve intellectual property rights. “IP transaction” generally refers to the assignment, license, or use of intellectual property assets for security interests, as well as the associated legal agreements or documents.
IP assignments often occur during mergers/acquisitions, as can also occur during bankruptcies. IP assets may also be used in security agreements for commercial loans, for example.
In a license agreement, the IP rights holder licenses patents, trademarks, know-how (trade secrets) or copyrights to others. Licenses can be specific to a particular party, or generic for a large user base (e.g., software “shrink-wrap” licenses).
Other IP transactions include non-disclosure agreements, which help protect proprietary information against misappropriation of trade secrets. Still another is joint ventures, where there is not only proprietary information to protect but also jointly-created IP assets for which ownership and usage rights need to be defined. IP provisions are also a key component of employment agreements as well.
Allen, Dyer, Doppelt + Gilchrist attorneys routinely assist clients with all areas of intellectual property transactions, from agreement preparation to assignment recordation. Plus, because of our breadth of IP litigation experience, we are aware of the pitfalls of poorly crafted IP agreements and constantly on the lookout to help our clients avoid these pitfalls.
If you’re ready to speak with an attorney at ADD+G, schedule an appointment virtually or visit a physical office location in Orlando, Jacksonville, Winter Springs or Miami, Florida.
From preparing and reviewing agreements, to recording assignments or security interests with the U.S. Patent and Trademark Office, our team provides full-service IP transaction assistance. Experience and attention to detail are not just critical in securing IP rights, but also for protecting them during IP transactions. Intellectual property assets are often the most valuable assets a corporation has, and we’ll gladly help with transactions in addition to our other legal services.
There are many issues to consider when licensing patent or trademark rights to another party to use. Exclusive vs. non-exclusive license rights. Geographical and market restrictions. Misuse by a licensee. The list goes on. That is why a skilled IP transaction attorney can review the transaction at hand, and help identify all of the potential issues and pitfalls that should be addressed in a license agreement to avoid problems down the road. Our team has experience with numerous types of license agreements, in addition to enforcement of such agreements in court to obtain temporary restraining orders and preliminary injunctions or other injunctive relief where necessary, and are ready to assist with yours.
Non-disclosure agreements (NDAs) are intended to allow two parties to exchange proprietary information for evaluating a potential mutual business arrangement. While many understand the importance of NDAs, they also think it is OK to just use a “standard” NDA form. Maybe, maybe not. Does the agreement address the creation of IP assets under the collaboration, and who owns them? Can one party file patent or trademark applications without informing the other? Aside from such questions involving the IP assets directly, NDAs often include time-based restrictions on employee solicitation, types of services the parties can provide, and other “surprises”. Our attorneys are well-versed in NDA agreements and how to navigate these issues, and are here to help when you need us.
When companies merge or sell their assets, it is important that the transfer of IP assets be clearly shown, and that the ownership history of these assets is complete and in proper order. Our attorneys can help clients not only identify IP assets and prepare the appropriate agreements for transferring these assets, but also perfect the chain of title to such assets with the filing of assignments in the U.S. Patent and Trademark Office. Plus, there may be other restrictions or requirements when it comes to IP asset transfers, which we can help identify and navigate during the course of IP sale agreements.
A franchise is a special type of trademark license arrangement where one party (the Franchisor) licenses a trade name to another (Franchisee) who operates a business under the licensed name. To protect franchisees, there are numerous federal and state laws and regulations governing franchise disclosure and agreement requirements. As a result, typical franchise disclosure documents number in the hundreds or thousands of pages and can be extremely complex and difficult to navigate for prospective franchisees. ADD+G is experienced in representing clients who are considering the purchase of a franchise opportunity, helping them navigate these complex offering documents, and providing advice on the legal advantages and disadvantages of the franchise.
Our team includes skilled intellectual property attorneys, many with decades of IP transaction experience. Because we are a full-service intellectual property law firm covering all areas of IP, we have the experience and perspective to make sure IP assets are not only secured properly, but also properly protected when it comes time to license or assign these valuable business assets. Contact us today to schedule an appointment with an IP attorney in Orlando, Jacksonville, Winter Springs or Miami, FL today!
Below are answers to some questions we commonly hear about intellectual property transactions. If you have questions, please contact us – we are just a call or click away.
An IP transaction is where the ownership or usage rights of an intellectual property asset are conveyed to another. This can be an outright assignment, where ownership of the IP asset is transferred to another, or a license, where the owner of the IP asset grants some right of usage of the asset to another.
IP transaction attorneys can perform a number of critical functions, depending on the type of IP transaction. One is to help identify all of the potential intellectual assets a company or business entity owns. Some of these are well known, such as patent/trademark/copyright registrations. But others may be more subtle, such as confidential information or proprietary information, trade secrets, and non-registered copyright works, for example. Another function is to help negotiate and prepare the IP transaction agreement. Further, IP transaction attorneys can make sure that IP asset assignments and security interests are appropriately recorded, such as with the U.S. Patent and Trademark office in the case of registered patents and trademarks.
Many issues can arise in the context of an IP transaction. In the case of NDAs and joint ventures, one key issue is what happens with jointly-developed IP assets? Further, do such agreements have time-based restrictions on hiring or services that a party performs? Another issue that arises in the sale or transfer of IP assets is whether the chain of title is complete for these assets. If it is not, then a proper assignment cannot be made to the buyer. The list goes on. However, you can trust the experienced IP transaction attorneys at ADD+G to help you navigate these pitfalls and ensure the success of your IP transactions.
Depending on the product, either a design patent or utility patent may be appropriate, and in some cases both.
During our due diligence phase, we discuss your invention in detail to identify the novel and commercially valuable aspects. We then carefully craft the design or utility patent application to cover these key aspects, and work closely with you to make sure everything is technically accurate and complete. We then submit the patent application to the USPTO, and from there work with the patent examiner assigned to your application once an initial examination is completed. After we reach an agreement with the patent examiner on allowable subject matter, a notice of allowance will be issued and the patent will be formally granted by the USPTO.
The term of a design patent extends 15 years from the issue date. Utility and plant patents have a term of 20 years from the filing date of the underlying application, although in some cases the length of the term can be extended as a result of delays that occur during prosecution at the USPTO.