With the largest intellectual property group in the region, MacDonald Illig’s Intellectual Property and Technology Group provides sophisticated counseling and representation to our clients in the region, nationally, and internationally, in a wide range of IP matters, including those pertaining to patent, trademark, copyright, and trade secret laws.
Our IP attorneys are experienced in numerous technical disciplines, providing powerful resources to our clients both domestically and abroad. Our clients hail from a diverse range of industries, including industrial engineering, plastics, chemicals, mechanical engineering, electrical engineering, computer hardware and software, communications systems, biomedical and biological engineering, environmental engineering, financial services, mining, insurance, Internet services, and design. With the enactment of the America Invents Act (AIA) in September 2011 and recent Supreme Court decisions, our attorneys strive to keep their clients in compliance with the ever changing landscape of patent law. We advise these clients in the licensing and transfer of technology and related patents, trademarks, copyrights, and trade secrets. To better assist our clients, MacDonald Illig continues to develop working relationships with IP law firms in other countries, facilitating more efficient protection of IP rights at home and overseas.
The services we provide include the following:
- Patents
- Trademarks
- Copyrights
- Trade secrets
- International intellectual property
- Intellectual property litigation; and
- Standards, licensing, and technology transfer
The attorneys of our Intellectual Property and Technology Group are admitted to practice in Pennsylvania, New York, Ohio, and Washington, D.C. All four of the group’s members are admitted to the United States Patent and Trademark Office (USPTO) Patent Bar.
Given the breadth and depth of our Intellectual Property and Technology Group’s experience and resources, we are confident that you will be pleased with the sophisticated service you receive. We look forward to meeting your IP and technology needs.
Patents
MacDonald Illig’s Intellectual Property and Technology Group represents clients in the preparation and prosecution of patent applications for a variety of technologies at the USPTO, internationally through the Patent Cooperation Treaty (PCT), and directly in other countries through our relationships with foreign IP firms. We also assist clients in the maintenance, enforcement, and licensing of issued patents, as well as patentability, patent validity, and infringement studies. We can also guide you through the process of licensing your intellectual property to third parties.
If you have an issued patent, we can help you address suspected patent infringement. If you are concerned about infringing someone else's patent, we can determine the validity of the patent or help you design around competitive patents. In addition, we can evaluate whether you may be better served by seeking protection from other aspects of intellectual property law such as copyrights, trademarks, or trade secrets.
If need be, our attorneys are able to represent your interests before the USPTO Board of Patent Appeals and Interferences (BPAI) or in litigation in federal courts.
Trademarks
MacDonald Illig’s Intellectual Property and Technology Group advises our clients in the selection, availability for use, and registration of trademarks, service marks, and corporate names. We handle the preparation and prosecution of applications to register trademarks and service marks, and protect and defend those marks which have been selected.
We can guide you through securing federal and/or state registration to protect your trademark. Alternatively, we can advise you on the best course of action to protect your mark if you wish to forego registration. We can also help you determine whether federal registration is a viable option for your mark. If you are expanding your business internationally, our carefully cultivated relationships with IP firms in other countries allow us to seek foreign trademark protection including registration applications filed under the Madrid Protocol.
If you are developing a new mark, we can advise you regarding potential infringement complications or conflicting marks. We can also provide licensing agreements with respect to your trademarks. We have additionally aided our clients in securing protection of their Internet domain names and in many cases, have advised them regarding other avenues of IP law that were available to meet their needs.
Copyrights
In addition to assisting with federal copyright registration, we can help you enforce copyrights, license your copyrighted works, and address copyright infringement. We have advised many clients on issues of fair use, distribution and publication of copyrighted works, copyrighted works on the Internet, and where appropriate, the use of other forms of intellectual property protection.
Our copyright services also include protection of computer software, music, books and publications, Internet content, film and television programming, sculptural works, and other creative products. We have also advised our clients in international protection of copyrighted works available through the Berne Convention.
Trade Secrets
MacDonald Illig’s Intellectual Property and Technology Group assists clients in establishing and protecting trade secrets. We can help you protect your trade secrets by utilizing confidentiality agreements, employee agreements, non-disclosure agreements, corporate information policies, and other safeguards. We can also determine whether continuing trade secret protection is appropriate or warranted, and whether other forms of intellectual property protection may be necessary.
International Intellectual Property
Through our growing network of relationships with IP firms in other countries, we are strategically positioned to assist you in protecting your interests overseas. Our team supervises and directs foreign associates in securing IP rights throughout Canada, China, Europe, Mexico, Australia, Japan, Brazil, India, South Africa, Russia, and other countries.
We have overseen National Stage patent prosecution of patent applications filed through the PCT, as well as patent applications filed directly in other countries through the protections offered under the Paris Convention. We have also filed patent applications in the United States for inventions that were developed overseas.
Our international intellectual property services also include advising our clients in protecting trademarks through international registrations through the Madrid Protocol or otherwise. We also advise clients on international copyright protection through the provisions of the Berne Convention.
Where our clients seek to expand their businesses in other countries, we have assisted them in securing trademark registrations in those countries. We also provide due diligence analysis of foreign patents and other intellectual property in the acquisition of international companies.
Intellectual Property Litigation
MacDonald Illig’s Intellectual Property and Technology Group works closely with our litigation practice groups to determine when litigation is appropriate and timely. We will enforce our clients’ copyright, trademark, trade secret, and patent rights and help protect against unfair competition, misappropriation of intellectual property, and other business torts.
When our clients are the targets of infringement actions, we can analyze the intellectual property in question to ascertain the relative merits of the case and their options moving forward. MacDonald Illig's litigation strength, combined with our corporate and business law practice groups, provides our IP clients with the comprehensive legal oversight necessary in today's global marketplace.
Standards, Licensing and Technology Transfer
If you currently have a patent, copyright, trademark, or trade secret and need assistance in licensing your intellectual property or are interested in selling a business that includes intellectual property assets, we will work closely with our business law practice groups to achieve the desired result.
We also provide advice related to participation in standards-setting organizations, particularly when there are patents and patent applications relating to the standards. Similarly, if you wish to acquire a business that includes IP assets, we will conduct a due diligence review and advise you of the intellectual property’s relative strengths and weaknesses.
To request a schedule of our minimum fees for routine intellectual property tasks, click here.
Please note: Request and/or receipt of this fee schedule does not establish an attorney-client relationship and should not be interpreted as such. No such relationship can be entered into until we have discussed the matter with you, checked for possible conflicts of interest and agreed upon terms of representation, including fees/retainers, etc. It is important that you do not send any confidential information to us until such time that we establish an attorney-client relationship. You will receive a written confirmation if a relationship is established. We look forward to hearing from you. This email will be sent to a general Firm mailbox.
