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Capabilities / Intellectual Property Counseling

Intellectual Property Counseling

Mapping out IP strategies.

In helping clients protect and manage intellectual property (IP) assets, Husch Blackwell pays close attention to details while never losing sight of the big picture. With client business and technology objectives clearly in mind, we advise on the pros and cons of IP strategies involving patents and trademarks; joint ventures; and transfers and licenses. 

Once a strategy is developed, our team counsels clients on which assets to protect, conducting searches, and advising on registration availability. We develop portfolio maintenance schedules and assist with all necessary filings for patents, trademarks, copyrights, domain names, licenses, and agreements. We prepare and negotiate agreements such as nondisclosure, confidentiality, website hosting, and noncompetes. And we provide watch services for all forms of intellectual property worldwide.

Representative Experience

  • Counseled a manufacturer of form, fill, and seal-type packaging machines with all of its intellectual property matters, including patent prosecution, trademark guidance, licensing, and intellectual property infringement matters.
  • Provided a due diligence analysis of the company’s patents, trademarks, copyrights, and domain names worldwide to military equipment maker Eagle Industries before it was sold. Eagle’s strong patent and trademark portfolio and its ability to retain market share in the key sector of the advanced technology market greatly increased the overall value of the company during its acquisition by ATK, an aerospace and defense corporation.
  • Prepared and obtained utility patents for mutant marigolds developed by a horticultural company for use as coloring agents in food products and as crucial components of dietary supplements.
  • Represented global engineering firm as it sold one of its wholly-owned subsidiaries to a group of employees who were leaving the company to run the wholly-owned subsidiary as a separate and standalone company, including negotiating five intellectual property agreements.
  • Counseled national food manufacturer regarding brand best practices and potential strategies to support manufacturer's nationwide sales to a major warehouse club.
  • Served as intellectual property counsel for an apparel on-demand manufacturer and retailer client, including assisting the client in identifying and documenting inventions, preparing and prosecuting patent applications, brand counseling, trademark filing and prosecution, and advising on complex issues of licensing and ownership of client's intellectual property assets.
  • Managed domestic and international patent portfolio of a leading medical device company and start-up medical device companies. Prepared new patent applications and prosecuted pending patent applications to secure issued patents on medical devices, including medical devices implementing executable computer software.
  • Managed domestic and international patent portfolio of a major infant formula manufacturer. Prepared new patent applications and prosecuted pending patent applications to secure issued patents on formulations and containers.
  • Managed large trademark portfolio of premier manufacturer of bathroom products, including filing strategy, filing new applications for registration, prosecution of pending applications for registration, and maintenance of existing registrations.
  • Advised on, procured, and managed international trademark protection for a leading manufacturer of bathtubs, shower units, and spas. Assisted non-U.S. attorneys and their clients in obtaining U.S. trademark protection.
  • Advised leading food service equipment manufacturer on patentability of new commercial oven technology.
  • Conducted intellectual property due diligence for corporate mergers and acquisitions.
  • Advised media on intellectual property licensing copyright, trademark, and rights of publicity laws.
  • Obtained patents and trademarks to expand the scope of protection and limit competition for various manufacturers. Designed patent portfolios to protect the products clients manufacture, as well as the machinery and methods used to produce those products.
News Releases | July 11, 2022
Tom Miller Joins Husch Blackwell's Intellectual Property Group

Veteran intellectual property lawyer Tom Miller has joined Husch Blackwell as a partner in its Milwaukee office and Technology, Manufacturing & Transportation industry group.

News Releases | April 01, 2022
Husch Blackwell Adds Two Healthcare Partners to Virtual Office

Husch Blackwell is pleased to announce that Lisa T. Thomas and Bryan Stewart have joined the firm’s Healthcare, Life Sciences & Education industry group as partners.

Media Mentions | October 18, 2021
Missouri Lawyers Media: WJA 2021: Kristine L. Kappel

The advice and service that we get from Husch Blackwell are second to none. We work with several other firms for matters outside of intellectual property, and the experience just simply is not the same. Most importantly, the Husch Blackwell team offers the one thing that all clients are ultimately looking for in an attorney: SUCCESS.

Jamie Hawken, President, Utility Concrete Products LLC