Intellectual Property
In Brief
Kramer Levin Naftalis & Frankel LLP's Intellectual Property Department represents clients in all aspects of intellectual property law—patents, trademarks, copyrights, trade secrets, technology transactions, unfair competition and false advertising, Internet and e-commerce. Attorneys in the Department provide litigation, prosecution and registration, counseling, and transactional services to their clients to help acquire, value, maintain, protect and exploit all forms of their intellectual property assets. Nearly 50 attorneys within the firm devote most or all of their practice to intellectual property matters, giving Kramer Levin one of the larger intellectual property groups in a general practice firm.
Representative Clients/Transactions
The Intellectual Property Department works with a full range of domestic and foreign clients, varying from well-known Global 1000 companies to smaller emerging growth companies and even individual inventors. Members of the Department provide patent litigation, prosecution, counseling and transactional services to clients in such diverse industries and technologies as automotive products, banking and financial services, biotechnology, carbon nanofibers, catalysts, chemicals, computers and software, diagnostics, electronics, fiber optics, fuel cells, medical devices, mining, mobile telecommunications, motion pictures and television, paper, pharmaceuticals, semiconductors, sensors, sporting goods, and textiles, among others. Similar services involving trademarks, copyrights and unfair competition matters have been performed for clients in a wide variety of industries such as apparel, e-commerce, entertainment, financial services, food and beverages, healthcare, hotels, household goods, pharmaceuticals and toys.
Principal Areas of Focus
Further Areas of Intellectual Property Expertise
Intellectual Property and Antitrust
Over the last 25 years there have been significant changes, as a result of statutory enactment and shifts in judicial interpretation and governmental enforcement, which directly affect the way antitrust laws apply to intellectual property. For example, the rights of a patentee to place restrictions on a licensee have been considerably liberalized. Our attorneys have substantial antitrust expertise and are fully knowledgeable about the current interface between antitrust laws and intellectual property.
Intellectual Property and RICO
The corporate business world has become increasingly familiar with the Racketeer Influenced and Corrupt Organizations Act (“RICO”). The statute, once aimed primarily at organized crime, now often finds its way into standard commercial disputes and will be seen with increasing frequency in intellectual property disputes. We have experience in prosecuting and defending RICO claims.
Intellectual Property and Bankruptcy Law
The increased frequency with which bankruptcy laws are utilized today by financially troubled companies makes it highly important for clients to be properly advised on intellectual property matters in bankruptcy situations. We work with our bankruptcy lawyers in these matters.
Intellectual Property and Security Interests
Obtaining and perfecting security interests in a borrower's intellectual property has become increasingly important to lending institutions and other financing entities. Department members are experienced in this area of practice. In addition, we collaborate with our corporate securities and finance attorneys in obtaining, evaluating and perfecting security interests in intellectual property.
Valuation of Intellectual Property
Department members have provided clients with advice on the relative value of intellectual property, particularly in the context of license negotiations and acquisition of patents and patent applications. Such advice usually involves a study and evaluation of the pertinent prior art, competitive products and market research data in order to provide the client with an integrated picture of the technical and market value of the patent or patent application. Patent valuation is particularly important in the context of mergers and acquisitions where valuation will directly affect the amounts that can be depreciated over the remaining life of patent properties. The valuation of trademarks can likewise have important tax consequences to a business entity, especially in merger and acquisition situations.