Intellectual Property

Why Cooley

Cooley is known for providing comprehensive IP services to clients across a range of industries and at all stages of operation. We represent industry leaders seeking to maintain their market positions, as well as innovative startups looking to bring disruptive technologies to market. As a fully integrated, full-service practice, we provide prosecution and counseling services that allow our clients to gain the most value from their IP and represent our clients in complex infringement suits in which core products and brands are at stake.

Cooley’s IP litigators win cases across the US, UK and Europe in every conceivable forum and manner. We are experienced in all types of IP cases including patent, Section 337 investigations, trademark, trade dress, trade secret, copyright, false advertising, domain name and licensing matters and regularly win cases across all venues including district and appellate courts, the Patent Trial and Appeal Board, the Trademark Trial and Appeal Board, the International Trade Commission, the US Supreme Court and in international arbitration proceedings.

Cooley's IP counseling and prosecution lawyers bring to bear decades of experience drafting, prosecuting, defending and opposing patent, trademark, copyright and related rights in the US, UK and across the European Union. For filings and disputes in commercially significant markets outside of the US, UK and Europe, we partner with a carefully vetted network of foreign counsel located in 100+ key jurisdictions around the world. Through close partnership with local counsel, we help protect our clients’ IP rights across nearly 200 countries and jurisdictions worldwide.

In addition, we have deep experience handling IP transactional matters including licenses, co-development agreements, co-branding and distribution agreements, assignment agreements and consent arrangements. We regularly advise our clients on the acquisition and clearance of rights to third party intellectual property in connection with the development and marketing of content and advertising, including in the area of rights of publicity. We are also regularly called upon to diligence IP assets in connection with high-value financings, mergers, IPOs, licensing and other transactions.

Areas of Practice

Intellectual Property Litigation

• Handle all types of IP cases including patent, trade secret, Section 337 investigations, copyright, trademark, trade dress, false advertising, domain name and licensing matters
• Litigate our clients’ interests across all venues including district and appellate courts, the Patent Trial and Appeal Board, the International Trade Commission, the US Supreme Court, and in international arbitration forums
• Employ post-grant proceedings to challenge the validity of third-party IP rights and defend the validity of our clients’ rights

Patent Office Litigation

• Experience on both sides of Patent Office proceedings: equally skilled in invalidating third-party patents asserted against our clients and in defending patent challenges brought by competitors
• Significant experience employing such proceedings as a key strategy for patent litigation defense; regularly obtain stays of concurrent litigation pending PTAB proceedings

Patent Counseling & Prosecution

• Acting as in-house patent counsel for emerging companies
• FTO and patentability analysis, non-infringement and invalidity opinions
• Conducting IP audits
• Oppositions, appeals and observations (EPO)
• Patent due diligence (investor-side and company-side)
• Patent enforcement strategies and litigation
• Patent in-licensing and out-licensing
• Patent prosecution and procurement
• Portfolio management, analysis and monetization
• Protecting IP during strategic collaborations and transactions
• PTAB proceedings and reexams (USPTO)
• Strategic patent counseling
• Supervising the work of other firms

Trademark, Copyright & Advertising

• Advertising counseling and litigation
• Anti-counterfeiting, customs registration and enforcement
• Conducting IP audits
• Copyright counseling, registration and litigation
• Domain name counseling and litigation
• IP due diligence (investor-side and company-side)
• Internet-related counseling
• Global trademark and copyright portfolio management
• Licensing, co-branding and distribution agreements
• Privacy, promotions and right of publicity
• Trademark counseling, registration and litigation
• Trademark clearance and policing