Intellectual Property

The development, protection, use and licensing of intellectual property assets continue to increase in importance for businesses, financial institutions, health care organizations and individuals. These range from traditional issues, including obtaining and preserving patents, trademarks and copyrights, to licensing and devising strategies to maximize profits from intellectual property assets.  As a starting point, intellectual property is any product of human ingenuity, creativity, artistry, or similar activity that has value deserving protection.  To complicate matters, the scope of intellectual property protection continues to expand, and these rights are constantly being challenged in the courts.  As a result, it is wise to entrust intellectual property matters to legal counsel having special experience in both acquiring protection and enforcing intellectual property rights.

The Intellectual Property Practice Group at Krieg DeVault provides our clients with intellectual property protection through a variety of mechanisms, including patents, copyrights, trademarks, trade secrets, and related agreements.  Due to the intrinsically technical nature of patents, patent lawyers are specially licensed by the U.S. Patent and Trademark Office, which requires a significant amount of university-level science/engineering coursework and passage of an additional bar examination.

The Intellectual Property Practice Group at Krieg DeVault includes licensed patent lawyers having a wide range of technical backgrounds, such as chemistry, chemical engineering, civil engineering, mechanical engineering, electrical engineering, and biotechnology.  Our patent lawyers also have experience in related fields and applications, including medical devices and treatments, applied genetics, construction and industrial equipment, firearms, applied physics and mathematics, software, computer-related process and devices, communications, information security, high molecular weight polymers and polymer coatings, separation systems, oil refining processes, business methods, optical systems, spectroscopy, nuclear power, materials science, polymer and mineral processing, imaging techniques, electromagnetics, electric power generation, internal combustion engines, manufacturing processes, and control systems –  to name a few. 

In addition to this wide range of technical experience particular to patent law, the intellectual property lawyers of Krieg DeVault have ample experience in trademark, copyright, trade secret law to protect brand names, literary and artistic works, and secrets of all kinds, and in licensing and related agreement law.  Some of our patent lawyers have earlier careers in industry, business management experience, and artistic/creative hobbies — factors that support a well-rounded intellectual property capability.

With seemingly increasing frequency, the protection of intellectual property rights becomes adversarial.  Krieg DeVault has the experience and depth to protect intellectual property through litigation and other enforcement procedures.  Our intellectual property attorneys work closely with the Business, Health Care and Litigation Practice Groups to assist our broad base of clients in all facets of intellectual property evaluation, procurement, and enforcement.  Strategies for the development, protection, commercial exploitation and protection of intellectual property assets continue to increase in importance.  Krieg DeVault has all the resources to satisfy these needs and more.

Representative patents, trademark registrations, copyright registrations, and a listing of court cases involving one or more Krieg DeVault attorneys will be provided upon request.

Technology  

Technology provides the life-blood of commerce.  Every commercial entity depends on technology for simple levels of communication and to provide a competitive comparability.  In some cases, a business will find its competitive advantage in its ability to provide a more effective or timely solution from a technological advancement not provided by others.  Krieg DeVault has significant experience in representing technology-oriented and software development companies in both transactional and daily operational matters. We have the skill-base to help our clients address traditional issues such as securing financing and preserving intellectual property rights to evolving areas like internet security, privacy, and the implementation of e-commerce strategies.  Krieg DeVault is also equipped to represent businesses as they face new challenges that arise with the proliferation of new technologies and as they seek protection of their technological developments through patents and trade secret programs.  We have represented purchasers and sellers of software development companies, licensors and licensees of software and other intellectual property, and investors, lenders and issuers in equity and debt financings of software and technology-oriented companies.  The following summaries reflect selected transactions and activities in which the firm has been involved:

Operations

• Developed license structures for a software development company involving direct sales and reseller networks
• Negotiated computer systems and software acquisition agreements for a large healthcare network
• Negotiated numerous software license arrangements for licensees
• Negotiated joint development and teaming arrangements between software development company and Fortune 500 companies
• Represented licensee in breach of contract action against software and system supplier
• Advised financial institutions on Internet banking, including regulatory issues and contractual terms with Internet access provider
• Negotiated teaming arrangement between an internet-based healthcare service provider and a healthcare network
• Represented Web site developer in contract negotiations and license arrangements with customer/licensee

Transactions

• Represented co-developer in joint venture for exploitation of a software based product
• Represented seller in a transfer of assets of a technology-based company through leases, licenses and options to purchase, with an aggregate transaction value of over $2,000,000. Seller was a diversified company, with pricing and return based upon performance of the purchaser.
• Represented purchaser of a software development company in an asset transaction with an aggregate value of approximately $8,000,000 in cash and deferred payments, plus contingent payments based on profit for targeted years. Extensive indemnification provisions were also negotiated.
• Represented survivor group in separation of operating divisions into two independently owned entities

Financing

• Represented software development company in negotiating debt and equity funding with venture capital and mezzanine sources
• Represented diversified company in structuring internal credit facilities to support technology-oriented affiliates
• Represented healthcare service provider in negotiating debt and equity funding with a venture capital investor group

Health Care

• Advised health care systems with regard to the legal, regulatory, accreditation and professional requirements governing the establishment of an electronic patient information system, and the design of a compliance program to monitor the system’s compliance with all such requirements
• Represented health care systems in the negotiation of arrangements whereby third party providers and other business partners may remotely access and use the system’s computerized patient information databases for legitimate health care purposes
• Advised health care systems with regard to the use of clinical pathways and innovative documentation methods to measure the quality and cost of health care services in a managed care environment
• Advised health care systems with regard to the legal, regulatory, accreditation and professional requirements governing the use of telecommunications in the delivery of health care services from one or more remote locations
• Represented early stage company with a technology-based and Internet-based disease management protocol in negotiation of financing, co-developer, distribution and customer agreements.