Key Contacts

  • Co-Practice Group Leader
    Phone 602.262.5768
    Fax 602.734.3786
  • Co-Practice Group Leader
    Phone 702.949.8224
    Fax 702.949.8363

Intellectual Property

Identifying, securing and protecting intellectual property rights -- patents, trademarks, copyrights, trade secrets and publicity rights -- is essential to the well-being of most companies in all industries and sectors. Intellectual properties are valuable assets that add to the health of balance sheets, provide a competitive edge and open new avenues for growth and revenue.

Lewis Roca Rothgerber has worked with individuals, organizations and companies in Arizona, throughout the country and throughout the world to develop and protect rights in intellectual property here and abroad. Lewis Roca Rothgerber offers clients a full range of intellectual property representation. We successfully and cost-effectively guide our clients through the complex issues encountered in this area, enabling them to obtain and keep a competitive advantage.

Lewis Roca Rothgerber's Intellectual Property and Technology Practice Group provides a broad range of services and experience to firm clients, including:

Intellectual Property Audits

  • A due diligence procedure in which Lewis Roca Rothgerber works with company employees in identifying and recommending steps for building and protecting corporate intellectual property assets, including trademarks, service marks, trade dress, copyrightable matter (including software), trade secrets, know-how, patentable inventions, licenses, and related rights. The audit will also identify areas requiring change to develop and protect these rights, including trade secrecy procedures, employment agreements, registration and enforcement.


Trademarks, Service Marks and Advertising

  • Selection, clearance, registration and protection of trademarks and service marks both in the United States and internationally.
  • Negotiation and drafting of trademark and service mark acquisition, clearances and licensing agreements.
  • Commercial transactions involving trademarks and service marks, including obtaining security interests in these properties or levying on such secured interests.
  • Litigation of trademark, service mark and trade dress infringement and anti-counterfeiting actions in state and federal courts, and proceedings before the tribunals of the U.S. Patent and Trademark Office.
  • Domain name disputes under ICANN's uniform dispute resolution policy.
  • Counseling and litigation regarding advertising and marketing practices.


Patents

  • Selection of an overall IP strategy, including choices among patent procurement options.
  • Provisional and utility US applications.
  • International patent protection, including applications under the Patent Cooperation Treaty (PCT).
  • Entry into national phase prosecution in foreign countries.
  • Freedom to operate, infringement and validity opinions.
  • Patent licensing and negotiation.
  • Ownership disputes regarding patent rights.
  • Experience in many technology fields including chemistry, metallurgy, complex mechanical and electro-mechanical devices, biomedical technology and software patents.
  • Assist in litigation avoidance and design-around efforts to avoid patent infringement liability.
  • Litigation of patent infringement suits.


Trade Secrets and Confidential Information

  • Designing systems for the protection of trade secrets, and drafting and enforcing non-complete, and non-disclosure agreements.
  • Advice in assessing the enforceability of restrictive covenants and trade secrets agreements and to assist in the preparation and negotiation of enforceable contracts containing such provisions.
  • Prosecution and defense of trade secret claims including use of computer forensic evidence.


Copyright and Rights of Publicity

  • Securing rights in, and clearing use of copyrightable and copyrighted works, including acquisition, federal registration, clearances, and licensing of copyrightable works.
  • Counseling in the development of fair use guidelines for photocopying, dealing with ASCAP, BMI and other performing rights societies.
  • Counseling and representing clients in response to copyright compliance demands from Software Business Alliance (SBA), Recording Industry Association of America (RIAA), Motion Picture Association of America (MPAA) and other copyright compliance organizations.
  • Identifying and protecting rights of publicity and privacy, as well as clearing rights for use of same.
  • Representing clients in the prosecution and defense of litigation claims in all of these areas, in state and federal court.


Technology/Internet Law

  • Negotiating and drafting a full range of computer technology agreements, including custom software development deals, licensing, acquisition and sale agreements, and outsourcing agreements.
  • Negotiating and drafting employment-related agreements, including full employment agreements, work-for-hires, non-disclosure and assignment of rights agreements, non-competition agreements, and outside consultant agreements.
  • Representation of technology companies in financing transactions and all other corporate legal needs.
  • Multi-media clearance of online content.
  • Negotiating and drafting web hosting, subscription, application service provider and other on-line agreements.
  • Drafting of online privacy and other policies.
  • Securing copyright in computer software.
  • Litigation of technology contract disputes.


Cybersecurity and Cyberliability

  • Conducting computer information systems audits and assessments of threats and vulnerability to unauthorized access (hacking), viruses, data loss or theft.
  • Counseling clients in cost effective approaches to protecting their systems from cybersecurity and cyberliability risks.
  • Counseling clients in compliance of information systems with state and federal laws and regulations (Gramm-Leach-Bliley Act, HIPAA, etc.)
  • Litigation of cybersecurity and cyberliability claims.