Intellectual Property & Technology

Today's fast-paced business environment requires that all business organizations - regardless of size - understand both that their intellectual properties are among their most valuable assets and that the efficient use of technology is a powerful tool in staying competitive in an ever-changing global marketplace.  The successful identification, protection and commercialization of ideas, technologies and information is no easy undertaking and requires highly specialized legal advice.

Our Intellectual Property & Technology group handles a full range of technology and intellectual property matters for our clients, ranging from individual inventors to small businesses to large publicly-held corporations, across a wide spectrum of industries and technologies.  Our IP lawyers work closely with clients to help them identify, protect, expand and leverage their technologies and other IP assets in a number of ways.  Our proven experience and capabilities include:

  • The preparation and prosecution of domestic and foreign patents, trademark and copyright applications and related opinion matters
  • Conducting intellectual property audits to, among other things, identify all relevant intellectual property assets and ensure non-infringement of third parties' intellectual property
  • The design and implementation of intellectual property protection strategies
  • The negotiation of domestic and international technology and content licenses, research and development agreements, technology transfer agreements, strategic alliances, joint ventures and other innovative "partnering" agreements
  • Counsel regarding innovative software license and distribution models, including ASP, "cloud computing," Software as a Service ("SaaS") and Free/Open Source models
  • Counsel regarding a wide range of software, computer and Internet law matters, including web site audits, ecommerce issues, domain names and database protection matters
  • Counsel regarding risks and opportunities specific to social media, including matters involving Facebook, LinkedIn, MySpace, Twitter and YouTube
  • Counsel regarding advertising and promotion law and the rights of privacy and publicity
  • Counsel regarding antitrust, unfair competition and other trade regulation matters

This established substantive experience enables us both to assist businesses in protecting their intellectual property rights and also vigorously defend them from charges of violating the intellectual property or proprietary rights of others.  Our IP litigators have successfully represented clients in federal and state trial and appellate courts, including the United States Court of Appeal for the Federal Circuit, and in proceedings before a wide range of administrative agencies and other forums, including the Trademark Trial and Appeal Board, the Board of Patent Appeals and Interferences, the International Trade Commission and the Internet Corporation for Assigned Names and Numbers (ICANN).

Consistent with our firm's innovative approach to problem solving, our IP lawyers work closely with clients and their other advisers in employing a collaborative "team approach" to addressing a client's intellectual property needs.  Additionally, our technology and intellectual property engagements often relate to larger business projects or transactions being undertaken by clients, enabling us to utilize other knowledge within our firm's complementary practice groups, including our Emerging Business and Venture Finance Group, our Corporate and Securities Group and our Employment Law Group, to address ancillary issues that are a key part of structuring a successful technology enterprise or other emerging business.

  • Best Law Firms
  • Chambers and Partners Designation

Defend Trade Secrets Act (DTSA) Signed into Law, May 11, 2016

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act (DTSA) creating a cause of action under federal law for trade secret misappropriation which previously had been governed by state common law and each state’s adoption of the Uniform Trade Secrets Act.   The law took effect immediately upon signing.

Appeals Court Denies Competitive Injury Claim in Sukumar v. Nautilus, Inc.

The U. S. Court of Appeals for the Federal Circuit recently held that a potential competitor has suffered a “competitive injury” within the meaning of the revised False Marking Statute, 35 U. S.C. § 292, only if it has attempted to enter the relevant market by displaying an intent to enter the market with a reasonable possibility of success and taken action to enter the market.

Uncertainty Looms Over Software Patents

Following last year’s Supreme Court decision in Alice v. CLS Bank, the United States Patent and Trademark Office continues its struggle for clarity and consistency in establishing patent eligibility for software related patents. Meanwhile, the future of technological innovation hangs in limbo, as patents for software related inventions are being deemed ineligible at an excessive rate. 

Good Faith Belief in Invalidity of Patent is Not a Defense to Inducement to Infringe Claim: Commil USA, LLC v. Cisco Systems, Inc.

The Supreme Court’s recent decision in Commil USA LLC v. Cisco Systems Inc. overturned Federal Circuit precedent allowing defendants to avoid liability for inducing third parties to infringe a patent based on a good-faith belief that the asserted patent is invalid. Noting that infringement and validity are separate issues, the Supreme Court held:

CAFC Addresses “Use in Commerce” in Playdom Decision

On March 2, 2015, The U.S. Court of Appeals for the Federal Circuit (“CAFC” or “the Court”) addressed directly for the first time whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act § 45. In deciding that it is not, the Court clarified that a registrant must both (1) offer as well as (2) provide the service at issue. Ultimately the Court affirmed the decision of the Trademark Trial and Appeal Board (“the Board”) that appellant’s registration was void ab initio. 

Claim Construction Deference: The Paradigm Shifts

In a win for Teva Pharmaceuticals, the U.S. Supreme Court abandoned the Federal Circuit's long established rule that the patent claim construction rulings of trial courts are not to be accorded any deference upon appeal.  On January 20, 2015, the Court held in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. that to the extent these decisions are based on factual findings, such findings should only be overruled upon a showing of clear error.  This marks a sizeable shift that should provide a bit more certainty for successful parties on appeal.

The New Virtual Reality: Virtual Patent Marking

The US Patent and Trademark Office submitted a report to Congress outlining the progress and underutilization of virtual patent marking in the three years since it became available under the America Invents Act (AIA). The report was directed at analyzing the effectiveness of “virtual marking” as a viable substitute to the physical marking of articles.

Why What We Call Our Business Is So Critical

A trademark protects a company’s goodwill and reputation.  The owner of a legitimate trademark may prevent others from using a similar mark that is likely to cause confusion among consumers as to the relationship or affiliation of the two entities or their products or services.  A company cannot, however, monopolize a generic term under the auspices of trademark law.  This concept will be tested in a recently filed matter pending in the Southern District of New York.

Trends in Intellectual Property: The Securitization of IP Assets

The current economic market of low interest rates has sparked a revival of securitization of risky assets.  Traditionally, lenders secure loans with tangible assets; however, intellectual property assets are becoming increasingly popular with both lenders and borrowers as a means to close a deal.

3D Printing & Intellectual Property Rights

Many people are pointing to 3D printing as the next big thing. This has led many others to point to intellectual property issues that will almost certainly become hot button questions in the near future.

With the arrival of accessible 3D printing comes the capacity to alter business and effect social change. Yet, it also raises issues regarding the unauthorized reproduction of products protected by intellectual property laws. 

“Alice” and the Ensuing Rabbit Hole for Patents

The United States’ patent system has become a popular target for criticism with some claiming that far too many obvious products and methods are being patented, while others contend that the Patent Office is far too restrictive in issuing patents. The only thing that each side can agree on is that the system appears broken.  However, fixing the problem to the satisfaction of all will not be easy.

How Trademark Owners Can Prevent Their Marks From Becoming .XXX Domain Names

Trademark owners should be aware that the .xxx domain name will soon be available to the general public for registration on December 6, 2011. Although the .xxx domain name is designed specifically for the adult entertainment industry, trademark owners that are not in the industry can prevent their registered marks from being registered as .xxx domain names during the "Sunrise B" period, which ends on October 28, 2011.

Senate Passes House Patent Reform Bill (H.R. 1249) -- What You Need to Know

On September 8, 2011, the U.S. Senate passed the House version of the Leahy Smith America Invents Act (H.R. 1249) by margin of 89 to 9.  The President will sign the bill into law within the next 10 days.  The Leahy Smith America Invents Act is the result of more than ten years of attempts at patent reform and represents the most sweeping change of U.S. Patent laws in over 50 years.  The law makes significant changes to a number of areas of the patent law, and brings the U.S.

Bilski: Supreme Court Maintains Protection for Business Method Patents But Leaves Open Questions

It would seem that rumors of the death of business method patents have been highly exaggerated. Despite cries over the years from across the economic spectrum of the stifling effect that business method patents may have on new innovations in software development, medical diagnostics, and other fields, and that more formulaic clarity is required in determining what should be eligible for patent protection, the Supreme Court refused earlier this week to recognize a flat-out proscription against patents for business processes and other methods.

Client Alert: Recovery Act Reporting Requirements May Harm Recipients

The American Recovery and Reinvestment Act (ARRA) was passed in 2009 with the goal of stimulating the economy. Twenty-eight different agencies were allocated a portion of the Recovery Act funds and they awarded grants and contracts to different entities. Beginning in October, recipients of money from the Act are required to report quarterly on how they spend funds they received. These reports will be made available to the public on the website to "achieve an unprecedented level of transparency into how Federal funds are spent." (See NSF's Recovery Act Recipient Reporting Information, While it is important for the public to know how the Recovery money is being spent, this unparalleled level of transparency may be harmful to some recipients.

Maryland's Anti-Spam Law

On October 1, 2002, Maryland joined a growing number of states that have enacted laws to limit unsolicited e-mail or so-called “spam.” This new law (Md. Commercial Law Code Ann. § 14-3001 - 14-300) applies to any unsolicited e-mail sent from Maryland or to an e-mail address located in Maryland. A brief summary of the law follows.

2002 Maryland Legislative Update, Part 1

Each year the Maryland Legislature enacts a number of laws which impact in various degrees on the personal and business lives of people living in or doing business in the State of Maryland. The General Assembly adjourned on April 8, 2002, and the Session actively concluded when the Governor enacted legislation into State law during four separate signing ceremonies on April 9, April 25, May 6 and May 16.

Chambers Honors Whiteford in 11 Practice Areas

Whiteford, Taylor & Preston is pleased to announce that Chambers and Partners has once again ranked the firm highly in its 2019 list of leading firms and business lawyers.

U.S. News Awards Top-Tier Rankings to 46 Whiteford Practices, Including 18 Nationally

Whiteford, Taylor & Preston is pleased to announce that U.S. News and World Report - Best Lawyers ® “Best Law Firms” has awarded the firm exemplary rankings for 2019.  Eighteen of the firm’s practices are ranked at the national level, including two practices with national Tier 1 rankings:  Litigation and Bankruptcy.  At the state level, an additional forty-six practices have been ranked in Maryland, Washington, D.C., and VA.

Whiteford, Taylor & Preston and 29 Lawyers Honored by Chambers and Partners

Whiteford, Taylor & Preston is pleased to announce that Chambers and Partners has once again ranked the firm highly in its 2017 list of leading firms and business lawyers. This year’s recognition includes a record 29 attorneys in 4 states, the District of Columbia and Afghanistan. 

Whiteford, Taylor & Preston Recognized as National Tier 1 by U.S. News and World Report

The 2017 edition of U.S. News and World Report - Best Lawyers ® “Best Law Firms” has awarded Whiteford, Taylor & Preston LLP exemplary ratings in its seventh annual rankings of law firms.

Twenty of the firm’s practices were ranked at the national level, as well as thirty-seven in Maryland, ten in Washington, D.C., and two in Roanoke, VA.

Whiteford, Taylor & Preston and Six Partners Named as "IP Stars" by Managing Intellectual Property

Whiteford, Taylor & Preston is pleased to announce that Managing Intellectual Property has given the firm’s Maryland Intellectual Property practice its highest rating and has singled out six partners for individual recognition in Maryland. 

In their commentary, the editors noted that the firm is “highly respected” and that the IP lawyers in the group “handle a split of contentious and non-contentious matters crossing over patent trademark and copyright matters.”

New Book On Intellectual Property Authored By Whiteford Lawyers

Whiteford, Taylor & Preston lawyers have written a new book titled Intellectual Property for Nonprofit Organizations and Associations, which is now the definitive publication in the field. 

Jeff Glassie, Eileen Morgan Johnson, and Dana Lynch, partners with WTP, are co-editors of the new book, published by the American Society of Association Executives and released at the ASAE convention in Dallas, August 11-15, 2012.  

Karen Syrylo to Present at Whiteford, Taylor & Preston and Watkins, Meegan, Drury's Computer Services Tax Event on March 11, 2008

The Maryland Chamber of Commerce's State Taxation Consultant Karen T. Syrylo will join the list of presenters for Whiteford, Taylor & Preston LLP and Watkins, Meegan, Drury & Company LLC's Computer Services Tax Event on Tuesday, March 11, 2008. Held on the eve of Maryland's hearings on measures to revise, limit or repeal the Computer Services Tax from 3:30 to 6:00 p.m. at WTP's offices (7 Saint Paul Street, Baltimore, MD 21202), the event will be moderated by Heather A.

Whiteford, Taylor & Preston Among Legal 500

In its four-volume edition evaluating U.S. lawyers, the highly respected European publisher LegalEase has ranked Whiteford, Taylor & Preston’s (WTP) Technology and Intellectual Property section as one of the leading IT practices in the United States.  WTP is one of only 18 firms chosen nationwide.