IP Development

IP Maintenance Programs

McHale | Slavin’s Critical Dates department is dedicated exclusively to monitoring patent and trademark renewal dates. The United States charges a maintenance fee at the 3½, 7½ and 11½ year from the date of patent issuance that must be paid in order to maintain a U.S. patent in force for its full term. In addition, most foreign countries charge a yearly annuity which must be paid while an application is pending and after patent issuance in order to maintain the patent in force for its full term. The United States requires that trademarks be renewed at the 6-year and 10-year anniversary dates, and most foreign countries have 10-year and 20-year trademark renewal dates. All such fees must be paid during a “payment window” in order to meet the government requirements; prepayment is not possible.

Multinational companies with an IP portfolio that includes multiple patents and trademarks require a firm capable of providing timely reminders and the secure transfer of monies in a manner that is most convenient to the company. Our firm also provides watch services for monitoring of improvement and/or infringing patent and trademark applications or registrations. Contact us for additional information or to schedule a consultation.


 

 

Due Diligence

The importance of a Due Diligence analysis cannot be over emphasized when entering into a relationship that requires the buying, selling, licensing or franchising of intellectual property. McHale | Slavin provides valuable assistance in matters involving technology-intensive companies entering into acquisitions, joint ventures, or investment arrangements by third-party entities by conducting a Due Diligence investigation of the intellectual property assets and liabilities of the target company. These results can be very useful in determining the propriety of the transaction, and can often point toward issues that may require further analysis. Performance of a thorough Due Diligence analysis is of benefit to all parties involved and often assists in the formation of optimal business relationships.

 A Due Diligence investigation during merger/acquisition discussions, when buying or selling IP, or in conjunction with negotiating a license or franchise agreement should stress the following:

  • Defining the ultimate goals of the transaction;
  • Clarifying what is being acquired or sold, and what are the obligations of the parties;
  • Performing a complete search on IP ownership, and determination ensure that rights remain in force;
  • Determining the presence of cross licenses or conditions which might affect or restrict the usage of the IP rights contemplated for purchase/sale;
  • Requesting details of any improvement patents that might exist;
  • Ascertaining whether the IP is the subject of any litigation or infringement suits;
  • Requesting details regarding any significant third parties;
  • Ensuring that the seller has the right to sell the IP.

Each transaction will have its own characteristics and requirements. In our experience, this is best accomplished by working with a law firm that has a broad base of expertise and experience with the full array of businesses ranging from small start-ups to large corporations. Some intellectual property assets may require closer evaluation than others due to factors such as complexity, competition and foreign registration. Rights may range from ownership to licenses, and may include agreements regarding contingent rights in intellectual property to be developed in the future. A viable evaluation also includes analyzing any prior grants that may impact or dilute the value of the assets and also assessing potential intellectual property infringement claims.

 Our firm understands the necessity of providing the right legal team to conduct IP Due Diligence. Our understanding of the industries, business environments and client objectives allows us to focus on the assets and the relative importance to the client. We are experienced with drafting due diligence requests and undertaking further investigative activities as necessary including: searches; opinions; review of agreements; and other appropriate efforts. Many transactions are increasingly cross-border and will involve an understanding of complex IP treaties and conventions as well as an understanding of U.S. laws and regulations. In addition to our experienced attorneys and registered patent agents, our firm has a network of foreign affiliates who can assist us with such transactions. We understand the scope and nature of due diligence will vary according to the type of asset. Our understanding of intellectual property law, the industries, and technologies position us to assist clients with analyzing IP assets and arriving at equitable terms. Contact us for additional information or to schedule a consultation.


 

 

IP Strategy

McHale & Slavin’s IP Strategy & Risk Management Practice assists clients in developing strategies for both defensive and offensive intellectual property risk management.

To gain and maintain a competitive edge in the world of manufacturing, IP development, R&D and IP protection, we guide our clients through changes in United States intellectual property law, and help them address the challenges of the global marketplace. Given the current level of interest in IP law in both the U.S. Supreme Court and Congress, this requires a depth of experience in both the technological and legal aspects of IP management to properly navigate the best courses of action.

McHale | Slavin focuses on freedom-to-operate studies and opinions; infringement and noninfringement evaluations; patent scope and enforceability issues; and analyzing licensing agreements in order to counsel clients on effective strategies for IP development and both offensive and defensive risk assessment. Contact us for additional information or to schedule a consultation.


 

 

Strategic Counseling

At McHale & Slavin, we appreciate our clients’ business goals and provide counsel not only on your specific IP protection needs, but also with your strategic business planning. We often assist clients in reviewing their portfolios and bringing our technical expertise as well as legal skill to the table.

We work with IP-driven companies by counseling their legal, technical and business personnel in order to facilitate the creation of IP portfolios that act in concert with their business objectives. Whether the client is an innovative start-up or a multinational corporation, our professionals provide valuable guidance when considering their IP options. Our legal and technical experience enables us to provide programs targeted to the specific needs of our clients. We understand the regulatory environment and are particularly facile in providing strategic counseling in areas such as biotechnology and pharmaceuticals. Our staff monitors legal, regulatory and administrative developments in order to identify opportunities for our clients to benefit from opportunities to capitalize on their IP portfolios. We coordinate existing and developing portfolios to avoid infringement and ensure that both the products being protected and the business plans promulgated upon them are based upon a strong IP foundation. Our professionals assist clients in prioritization of assets and offer advice on technology licensing, retention of marginal assets, and identification of acquisitions designed to enhance or expand upon their IP positions. Contact us for additional information or to schedule a consultation.


 

 

Venture Intellectual Property

McHale & Slavin’s venture intellectual property group has extensive experience in evaluating and analyzing intellectual property portfolios, and offers investors intellectual property due diligence to assist them in:

  • arriving at cogent assessments regarding the technology’s freedom to operate;
  • determining the realistic strength and position of the technology in the marketplace; and
  • illuminating perceived risks involved with acquisition of rights to the technology.

Our counseling assists investors in minimizing risks involved with intellectual property investments, determining deal valuation, and identifying areas of the portfolio that require further development. Counseling further assists investors in determining invention topic generation, licensing and development and implementation of an Intellectual Property Portfolio.

We have experience in many aspects of municipal and industrial water treatment, power plants, turbine and engine design, medical devices, pharmaceuticals, biotechnology and chemistry.

Subsequent to investment, the group will collaborate with the investor’s intellectual property counsel, or if desired, McHale | Slavin’s patent preparation and prosecution team to improve the inventor’s intellectual property position. Contact us for additional information or to schedule a consultation.